Automatic Abandonment: Filing RCEs in U.S. National Stage Applications without Inventor Declarations

Each inventor named on a U.S. patent application must execute an oath or declaration (or, in appropriate cases, a substitute statement must be provided for them). Generally, an applicant needs to submit the declarations, or substitute statements, no later than the payment of the issue fee. 35 U.S.C. § 115(f). This seems easy enough… except, 35 U.S.C. § 115(f) is not being applied equally to all U.S. patent applications.

This inequity has led to applicants receiving Notices of Abandonment after filing Requests for Continued Examination (RCE’s) in U.S. national stage applications where inventor declarations have not been submitted. Why?

A seemingly innocuous provision buried in the Federal Register clarified RCE procedure under 37 C.F.R. § 1.114(e)(3). See, 80 Fed. Reg. 17,930 (Apr. 2, 2015). Section 1.114(e)(3) indicates that RCE practice does not apply to “an international application that does not comply with 35 U.S.C. 371.” According to the clarification, a U.S. national stage application does not comply with the requirements of 35 U.S.C. § 371 until an inventor declaration is filed. See, 80 Fed. Reg. 17,930 (Apr. 2, 2015). Therefore, a U.S. national stage application is ineligible for RCE practice until the inventor declaration is filed.

In June 2020, the U.S. Patent & Trademark Office’s (USPTO) Manual of Patent Examining Procedure (MPEP) was updated to reflect this change. See, § 706.07(h): “[f]or an effective request for continued examination (RCE) to be filed in a 35 U.S.C. 371 national stage application, all required inventor’s oaths or declarations (or substitute statements) must be submitted in the application prior to or with the RCE.”

While 35 U.S.C. § 115 and 37 C.F.R. § 1.114(e)(3) now stand in direct conflict with one another, if inventor declarations have not been submitted prior to filing a RCE in a U.S. national stage application, the application is automatically abandoned.

With the June 2020 revision to the MPEP, it seems the USPTO is growing eager to enforce the new rule.

Moving Forward:

• Applicants should endeavor to submit inventor declarations as soon as possible in U.S. national stage applications to avoid noncompliance.
• If an Applicant has already received a Notice of Abandonment for filing a RCE without first submitting inventor declarations, the Applicant should consider: (1) filing a Petition to Revive the application, (2) paying the associated fee, and (3) submitting the inventor declarations.

If you have questions, or would like more information, we would be happy to speak with you.