Patent applicants and practitioners need to be extremely vigilant for the possibility that the USPTO might mail out a new patent Filing Receipt after a Notice of Allowance. Failure to pay close attention to such a new Filing Receipt, and failure to take prompt action when called for, could lead to a granted patent with different information on the front page than was intended.
Maybe the easiest way to describe this trap for the unwary is with an actual example from an actual patent application. But before I describe the actual example, a bit of review might be in order.
It will be recalled that before the America Invents Act (AIA) happened, the only permitted applicant in a US patent application was the inventor (or inventors). Before the AIA, it was not possible for anyone other than the inventor to be an applicant, except in very rare cases such as a deceased inventor represented by an administrator or executor of the inventor’s estate.
The AIA changed all this. As of September 16, 2012, a filer could identify a so-called “non-inventor applicant”. In such an application, the applicant might for example be the employer of the inventors, a legal entity such as a corporation. It took many years for practitioners to break old habits and form new habits, but by now in 2016 well over half of all newly filed US patent applications are filed with an applicant that is not the same as the inventor or inventors.
One example of a very frequently made mistake in 2012 and 2013 arose from the entry into the US national phase from a PCT application. The PCT application might have been filed before September 16, 2012 and the US national phase might have been entered on or after September 16, 2012. Legally, of course, the filing date of such a US national phase application is before September 16, 2012 (see 35 USC § 363) because it is, by definition, the same as the PCT filing date. But some practitioners don’t know this, and mistakenly think that the filing date of such a US national phase application is on or after September 16, 2012 (mistakenly thinking that the date of US national phase entry is somehow relevant to the filing date of the application). This mistaken impression is, unfortunately, reinforced by the USPTO’s practice of listing the US national phase entry date on the filing receipt and in PAIR in the exact same box where the filing date would appear for a non-national-phase case. (The USPTO ought to use two separate boxes to list these two dates that are not at all the same thing.)
It’s not only the practitioners who sometimes got this wrong about how you know what the filing date is for a US national phase application. USPTO’s own employees often got this completely wrong in 2012 and 2013. By about 2014, most USPTO employees seemed to have learned the difference.
The practical consequence is that in 2012 and 2013, many practitioners filled out their Application Data Sheets incorrectly for US national phase cases, and many USPTO people failed to catch the mistakes of the practitioners. There came to be quite a few pending US applications in which a non-inventor applicant was listed, even though this should not have been possible due to the fact that the true filing date of the application was prior to September 16, 2012.
Which leads to one category of cases in which a Filing Receipt shows up after a Notice of Allowance. When an Examiner mails a Notice of Allowance, the case reaches the workflow of the “Final Data Capture” (FDC) branch of the USPTO. I feel compelled to observe that the FDC people seem to be very alert. The FDC people, for example, are the ones that catch it if an Examiner overlooked an IDS. They bounce the case back to the Examiner to consider the overlooked IDS. Last month I blogged about this very user-friendly activity of the FDC branch.
As another example the FDC people seem to think it is their job to clean up sloppy IDSs filed by sloppy practitioners. So for example if the practitioner cites a US patent publication in an IDS, listing the non-inventor applicant name rather than the inventor name, the FDC people will manually correct the IDS to list the inventor name.
Anyway what we have seen in quite a few cases recently is that the FDC people seem to know what counts as the filing date of a US national phase application. They look carefully to see if that date precedes September 16, 2012. If it does, they look to see if somehow a non-inventor applicant got listed on a Filing Receipt. And if the answer is “yes”, they force the applicant list to revert to the inventor list. And in an automatic way, a new Filing Receipt gets mailed.
Now in this particular kind of case, probably no particular action is required on the part of the practitioner. What we need to think about is TYFNIL (ten years from now in litigation) where the adversary would try to poke holes in the granted patent. If the patent had been granted (improperly) in the name of someone who was not the inventors, then the adversary would argue that the patent is invalid or should never have been granted. The FDC people who force the applicant to revert to the inventor list are actually doing a favor for the patent owner.
Now a slightly different fact pattern. The patent application got filed on or after September 16, 2012. And the practitioner screwed up and used the wrong ADS (a pre-AIA ADS). Or the practitioner used the correct (post-AIA) ADS but completed the form incorrectly, listing the assignee as the mere non-applicant assignee rather than listing the assignee as the non-inventor applicant. In either case, the correct answer to the question “who is the applicant?” should have been the inventor list. But the OPAP people or DO/EO/US people did not notice the mistake made by the practitioner. And incorrectly mailed a Filing Receipt, back in 2012 or 2013, listing someone other than the inventors as the applicant. And the practitioner, back in 2012 or 2013, when proofreading the Filing Receipt, did not notice the problem.
So what happens now in 2015 or 2016? What happens is a Notice of Allowance gets mailed. And the FDC branch notices that the very specific rules that define how a non-inventor applicant gets named were not, strictly speaking, satisfied. So the FDC branch forces the applicant to revert to the inventor list. And in an automatic way, a new Filing Receipt gets mailed.
And here is the place where the practitioner needs to be vigilant. Here is the trap for the unwary. The practitioner who snoozes through this new Filing Receipt, and merely pays the Issue Fee, will end up with a granted patent that fails to list the applicant that the client wanted to list. The granted patent will say that the applicant is the inventor list.
So the moment that this bad-news Filing Receipt shows up, the practitioner needs to carefully study it. On close scrutiny the practitioner sees that the applicant is now the inventor list when previously it was the assignee. What should the practitioner do?
First, I suggest, the practitioner needs to have the self-control not to pay the Issue Fee. The practitioner needs to wait and pay the Issue Fee only after the applicant name is restored to be the assignee.
The usual next step is to prepare the needed papers to straighten out the “who’s the applicant?” question. This will require at a minimum a 3.73 statement (such as Form 96) and another ADS.
By far the Best Practice is to use the CWBADS system (see blog article). But unfortunately the CWBADS system is (for no good reason that I can see) not usable with a case that is a national phase from a PCT. So in a national-phase case you will be stuck doing an ADS as described in this blog article.
Anyway, the practitioner needs to straighten this out right away. After filing the CWBADS (or legacy ADS) and 3.73 statement, the practitioner needs to docket to check for yet another Filing Receipt, this time a Filing Receipt that once again lists the desired non-inventor applicant. If USPTO fails to respond, what would be needed next is an express request for a corrected Filing Receipt.
Once the USPTO has again acknowledged the non-inventor applicant by a new Filing Receipt, then the practitioner can safely pay the Issue Fee.