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Back on April 2, 2015, the U.S. Patent and Trademark Office (USPTO) published final rules for implementing the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs July 2, 1999 (Final Rules).  Implementation of the Hague Agreement was significant because it allowed Applicants to (1) file a single international design application with the USPTO as the “office of indirect filing”; (2) designate multiple Hague Agreement member countries and pay filing fees for each designated country; and (3) benefit from the resulting registration becoming effective and enforceable in each of the designed countries. 

Also included in the Final Rules, however, was a change that impacted U.S. utility patent practice, specifically, the filing of a Request for Continued Examination (RCE).  Most importantly, the Final Rules clarified that the filing of an RCE under 37 CFR. § 1.114 was not applicable in international design applications and excluded U.S. National Stage Patent Cooperation Treaty (PCT) applications that did not comply with 35 U.S.C. § 371.  On page 17930 of its summary of the Final Rules, the USPTO explained that this change to Section § 1.114 was made to “clarify that the request for continued examination practice set forth in § 1.114 added in section 4403 of the AIPA [American Inventors Protection Act of 1999] does not apply to an international application until the international application complies with 35 U.S.C. § 371 (which requires the filing of an inventor’s oath or declaration (or substitute statement) in the international application, as well, as for example, the basic national fee and an English language translation of the international application if filed in another language)”.  As a result, the USPTO amended § 1.114 by revising paragraphs (e)(3)-(5) and adding paragraph (e)(6) to currently read as shown below:

(a) If prosecution in an application is closed, an applicant may request continued examination of the application by filing a submission and the fee set forth in § 1.17(e) ….
(e) The provisions of this section do not apply to:
(1) A provisional application
(2) An application for a utility or plant patent filed under 35 U.S.C. § 111(a) before June 8, 1995;
(3) An international application filed under 35 U.S.C. 363 before June 8, 1995 or an international application that does not comply with 35 U.S.C. § 371;
(4) An application for a design patent;
(5) An international design application; or
(6) A patent under reexamination.

The Final Rules became effective on May 13, 2015.  Thus, beginning on this date, a U.S. National Stage PCT application for which an inventor’s oath or declaration (or substitute statement) had not been filed was not eligible for an RCE filing.

Last week, Applicants who filed an RCE in a U.S. National Stage PCT application in which an inventor oath or declaration had not been filed began receiving Notices of Abandonment which stated:

“The Office acknowledges the filing off the Request for Continued Examination (RCE) on January 1, XXXX.  However, the RCE provisions of 37 CFR 1.114 do not apply to an international application that does not comply with 35 U.S.C. 371.  See 37 CFR 1.114(e)(3).  An inventor’s oath or declaration for each named inventor is required for an international application to comply with 35 U.S.C. 371, notwithstanding the changes permitting applicants to postpone filing the inventor’s oath or declaration until the date on which the issue fee is paid.  See 37 CFR 1.495(c)(3)(ii).  See also Changes To Implement the Hague Agreement Concerning International Registration of Industrial Designs, Final Rule, 80 Fed. Reg. 17918, 17930 (April 2, 2015).  The present application, which is a national stage entry of an international application, has not met the requirement of 35 U.S.C. 371(c)(4) in that a compliant inventor’s oath or declaration has not been filed for each named inventor.  Accordingly, as a proper reply to the Office Action mailed on June 1, XXXX, has not been timely filed, the application is abandoned.”

The receipt of these Notices of Abandonment came as a complete surprise to many Applicants and has led to the question as to “What do you do if you find yourself in this predicament?” 

For abandoned applications:

  1.  Obtain executed inventor oaths or declarations or substitute statements as quickly as possible;
  2. File an RCE form along with the executed inventor oaths or declarations or substitute statements; and
  3. File a Petition for Revival of an Application for Patent Abandoned Unintentionally under 37 CFR § 1.137(a) and the petition fee as soon as possible.

For pending U.S. National Stage PCT applications:

  1. Conduct an audit of your currently pending application and obtain executed inventor oaths or declarations or substitute statements and file them in the USPTO as soon as possible; or
  2. If the application is under final rejection and executed inventor oaths or declarations cannot be readily obtained or the conditions for filing a substitute statement have not been met, file a continuation application.

Patents issued from U.S. National Stage PCT applications in which an RCE was filed without an inventor oath or declaration:

Consider filing an RCE form with the executed inventor oaths or declarations or substitute statements and a Petition for Revival of an Application for Patent Abandoned Unintentionally under 37 CFR § 1.137(a) (Petition to Revive) and petition fee as soon as possible. 

Although it may appear odd to be filing a Petition to Revive on an issued patent, the USPTO has previously granted such petitions.  For example, a Petition to Revive was granted in U.S. Patent No. 6,872,198 (the ‘198 patent).  U.S. Application No. 10/231,748 (Application), which issued as the ‘198 patent, was filed with a nonpublication request under 35 U.S.C. § 122(b)(2)(B)(i).  A PCT application was later filed claiming priority to the Application.  During litigation, it was alleged that the Application should have been abandoned under 35 U.S.C. § 122(b)(2)(B)(iii) for failure to notify the U.S. Patent Office of the PCT filing.  The Patent Owner filed a Rescission of Previous Nonpublication Request and a Petition to Revive on March 23, 2006.  The USPTO granted the petition on August 17, 2006.  In its Decision Granting Petition Under 37 CFR § 1.137(b) (Decision), the USPTO noted that “[T]his application matured into Patent No. 6,872,198 on March 29, 2005.  Therefore, no further action being required, this patented file is being referred to Files Repository.”  Copies of the Petition to Revive and Decision are provided here:  

The ‘198 patent was the subject of litigation in Arrow Intern. v. Spire Biomedical, Inc., 443 F.Supp.2d 182 (D. Mass. 2006) and Arrow Intern. v. Spire Biomedical, Inc., 635 F.Supp.2d 46 (D. Mass. 2009).

Additionally from a policy perspective, perhaps a technical correction to the statute should be considered that (1) would be retroactive; and (2) would make RCEs in these applications proper provided that all the requirements under 35 U.S.C. § 371 were satisfied by the time the issue fee is paid.  Such a revision of the statute would be consistent with 35 U.S.C. 115(f), which requires the oath or declaration to be filed no later than the date on which the issue fee for the patent is paid.

Considerations for future U.S. National Stage PCT Application filings

One option when filing a U.S. National Stage PCT application is to file the application as a 35 U.S.C. § 120 continuation application, which is also known as a “pass through” or “bypass” continuation.  Filing a bypass continuation avoids the need to submit an oath or declaration before the filing of an RCE.    Another option is to include inventor signatures as part of the PCT Request (Form PCT/RO/101) by utilizing Box VIII(iv).  Alternatively, signatures of the inventors can be included on Form PTO/AIA/01 using the PCT international application number to identify the application to which the declaration is directed and submit the form upon entering the national phase.

We will continue to monitor this situation and provide further updates as they become available.

This post was written by Lisa Mueller and Jeff Childers.

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