The new oath/declaration exception for continuing applications is probably not available to you under the AIA.

The words of 35 U.S.C. 115(g) and 37 C.F.R. 1.63(d)(1) look like an exception is provided. But only for an oath/declaration that complies with 1.63(a). In other words, a copy of your oath/declaration from your pre-AIA patent application can only be used in a continuing application if the oath/declaration satisfies the new AIA requirements for oaths/declaration.

For anyone filing copies of an oath/declaration based on the exception of 35 U.S.C. §115(g), you must have had a crystal ball. The new §115 requires an inventor’s oath/declaration to include two statements that are identified in §115(b). An expected exception for applications claiming benefit under §120, §121, or §365(c) is provided by §115(g). The exception seems to be available as long as the oath/declaration from the pre-AIA, earlier-filed patent application satisfied §115(a). A simple reading of §115(a) seems to indicate that the requirement is merely that the original oath/declaration have been executed. The simple reading assumes that (a) and (b) are separate subsections.

 However, (a) seems to effectively include (b) based on the heading of (g). The heading of §115(g) is “EARLIER-FILED APPLICATION CONTAINING REQUIRED STATEMENTS OR SUBSTITUTE STATEMENT.” In other words, the exception is available for pre-AIA, earlier-filed patent applications that satisfy the statement requirements of AIA §115(b). The statement that is probably missing from the oath/declaration for the pre-AIA patent application is §115(b)(1) – “the application was made or was authorized to be made by the affiant or declarant.”

 You will find similar language in 37 C.F.R. 1.63(d)(1). The new rule 37 C.F.R. 1.63(d)(1) reads,

“A newly executed oath or declaration under § 1.63, or substitute statement under § 1.64, is not required under § 1.51(b)(2) and § 1.53(f) or § 1.497 for an inventor in a continuing application that claims the benefit under 35 U.S.C. 120, 121, or 365(c) in compliance with § 1.78 of an earlier filed application, provided that an oath or declaration in compliance with this section, or substitute statement under § 1.64, was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such oath, declaration, or substitute statement showing the signature or an indication thereon that it was executed, is submitted in the continuing application.”

The requirement to comply with “this section” includes 1.64(a), which requires the §115(b) statements. In other words, you are not required to file a new oath/declaration in a continuing application as long as your oath/declaration includes statements required in a new AIA-compliant oath/declaration.

 Practitioners who carefully read the USPTO comments in the Federal Register, will have realized that the exception was not really an exception. The USPTO states in the Federal Register Vol. 77, No. 157 at page 48802 in a response to Comment 18, the following:

“With respect to continuing applications, 35 U.S.C. 115(g)(1)(A) provides an exception to a newly executed oath or declaration only where the oath or declaration in the earlier filed application meets the requirements of amended 35 U.S.C. 115(a) which must include the required statements in 35 U.S.C. 115(b). Accordingly, a copy of an oath or declaration from a prior application filed before September 16, 2012, must meet the requirements of 35 U.S.C. 115 as amended by the AIA.”

 But the USPTO further states,

“[n]evertheless, in view of the changes to permit applicants to postpone the submission of the inventor’s oath or declaration until the application is otherwise in condition for allowance, the Office will no longer review an oath or declaration in an application under 35 U.S.C. 111(a) for compliance with § 1.63 (or a substitute statement for compliance with § 1.64) during the examination process.”

 So, you have some time to file a correct oath/declaration.