USPTO needs to accept “due care” restoration requests

The USPTO needs to be willing to consider requests for the restoration of the right of priority based upon the “due care” standard.  This will help US filers who missed the 12-month priority period, and whose foreign-filing plans include the European Patent Office or any of twenty-eight other patent offices that apply the “due care” standard.

US practitioners (including yours truly) have been asking USPTO to make this change for several years now.  in January of 2015, AIPLA asked USPTO make this change.  It is now October of 2016 and USPTO has still not made this change.  It is hoped that this blog article will serve as a reminder to the USPTO that this change is needed.  I will explain.

First a bit of background.

Old-timers like me will recall that years ago, US patent applicants who had screwed up by allowing a patent application to go abandoned could get the application revived by either of two kinds of petition:

  • a petition to revive based upon a representation that the abandonment was “unintentional”, or
  • a petition to revive based upon a detailed showing that the abandonment was “unavoidable”.

The unintentional petition required a large fee (around $1800) and the unavoidable petition required only a small fee (around $400).  The idea, I guess, was that if you had a good excuse for screwing up, you only had to pay a small fee, and that if you did not have a good excuse for screwing up, you had to pay a large fee.  A moment’s reflection will prompt an appreciation that the amount of the fee actually correlated inversely with the amount of work that had to be carried out by the USPTO petition examiner.  The unintentional petition only required two fairly simple steps:

  • see if the magic words “it was unintentional” may be found in the petition, and
  • see if the requisite $1800 fee was paid.

By doing essentially no work, USPTO was able to earn a quick $1800.

In contrast, the unavoidable petition required weighing and sifting lots of evidence — affidavits and documents for example — and arriving at a difficult judgment call as to whether the petitioner had or had not made a sufficient showing of the supposed unavoidability of the screwup.  And for all of this work, the USPTO only collected a mere $400 or so.

When the time came to do rulemaking for the America Invents Act, the USPTO seized upon this rulemaking as an opportunity to do away with the “unavoidable” petition entirely.  It is easy to imagine that the petition examiners were pretty tired of having to weigh and sift such evidence, especially when the fee collected did not come anywhere close to covering the value of the time of the petition examiner.  Nothing in the AIA itself required that the unavoidable petitions be done away with.  It’s just that USPTO people had to do rulemaking anyway because of AIA, and I guess the USPTO people figured this was as good a time as any to do away with the “unavoidable” petitions while everyone’s attention was directed elsewhere.

The USPTO decisionmakers probably figured that doing away with “unavoidable” petitions was nearly victimless.  Yes a patent practitioner who screwed up and allowed a patent application to go abandoned might regret that the inexpensive petition was no longer available.  But it was just a matter of having to cut a check for a larger fee.  And anyway the practitioner could skip the tedious business of providing all that evidence in support of the view that the screwup was not only unintentional but was also unavoidable.  That would take most of the sting out of having to cut an $1800 check instead of a $400 check.

With this background in mind, we turn to the present topic, which is the topic of Requests for Restoration of the Right of Priority (“ROP”) for PCT applications.  The sad fact pattern that prompts the patent practitioner to think of ROP is when the practitioner realizes that somehow the 12-month due date for foreign priority was missed.  A US patent application was filed (say) 12½ months ago.  Of course the PCT application should have been filed two weeks ago.  But the due date somehow got missed.

Fortunately ROP is available for such a PCT filing.  (It has been available for PCT filings for about two years now.)  The idea is this.  So long as you discover this screwup before 14 months has passed, you can file your PCT application along with an ROP request.  The ROP request, if granted, will restore the right of priority for those foreign patent offices that honor such restorations.

The designers of the ROP system provided for two kinds of ROP requests:

  • an ROP request in which the filer represents that the screwup was unintentional;  and
  • an ROP request in which the filer makes a detailed showing that the screwup occurred despite the exercise of due care.

The designers of the ROP system further provided that each patent office could decide for itself whether it would permit the restoration of the right of priority.  In particular, each patent office could make two decisions for itself:

  • whether that particular patent office, in its role as a PCT Receiving Office, would be willing to consider (and possibly grant) either or both kinds of ROP request; and
  • whether that particular patent office, in its role as a PCT Designated/Elected Office, would be willing to restore the right of priority in the event of a grant of either or both kinds of ROP request.

WIPO has an extremely helpful table detailing the decisions that have been made by various patent offices.  For purposes of today’s blog article, a first important thing that can be seen from this very helpful table is that there are twenty-nine patent offices which, in their role as a Designated/Elected Office, will restore the right of priority only if the granted ROP request is a “due care” request.  The twenty-nine patent offices are:

Armenia, Bahrain, Botswana, Switzerland, Costa Rica, Denmark, Estonia, Egypt, European Patent Office, Spain, Finland, France, Croatia, Hungary, Israel, Iceland, Japan, Lithuania, Montenegro, Macedonia, Panama, Peru, Poland, Portugal, Serbia, Russia, Sweden, Slovakia, Thailand.

Of these twenty-nine patent offices, perhaps the one receiving the most filings from US applicants is EPO (the European Patent Office).

For purposes of today’s blog article, a second important thing that can be seen from this very helpful table is that the USPTO, in its role as Receiving Office, decided two years ago that it was only willing to consider (and possibly grant) an ROP request if it is based upon the lesser “unintentional” standard.  USPTO, in its role as Receiving Office, made a decision two years ago not to be willing to consider ROP requests based upon the “due care” standard.

Why did USPTO make this decision not to consider ROP requests based upon the “due care” standard?  I’d guess that two factors may have helped to explain this decision.  First, USPTO may not have fully appreciated that at the time it was making its decision about what types of ROP requests to consider, some twenty-nine patent offices around the world might decide only to follow the stricter “due care” standard.  Second, USPTO decisionmakers were, I’d guess, busy congratulating themselves on having figured out a way to get rid of the pesky “unavoidable” revival petitions without many people noticing, namely as part of the AIA rulemaking.

But right now in 2016 the situation is grim for the unlucky US-based patent applicant that discovers that it has missed the 12-month due date for filing a PCT applicant.  (The US-based patent applicant that discovers it has missed the 12-month due date will hopefully have discovered this screwup before 14 months has passed.)  The US-based patent applicant very likely wishes that it could accomplish a restoration of the right of priority in as many patent offices around the world as possible (including EPO).  This US-based patent applicant will then discover that there are some twenty-nine patent offices around the world that have decided that the only ROP request that is good enough for restoration of the right of priority is a “due care” request.  Then the US-based patent applicant will learn the super-unhappy news that the RO/US (the Receiving Office of the USPTO) is unwilling to consider a “due care” ROP request.

This is why the USPTO should, in its role as an RO, henceforth consider ROP requests based upon the “due care” standard.  Such a change would be very applicant-friendly for the hapless US patent applicant that needs to be able to accomplish restoration of the right of priority.

As I mentioned above, the AIPLA specifically asked the USPTO to make this change.  On January 28, 2015, AIPLA formally adopted this resolution:

RESOLVED, that AIPLA favors the USPTO in its role as PCT Receiving Office considering requests for restoration of priority based upon the “due care” standard in addition to the “unintentional” standard.

I will mention that for such a hapless US patent applicant, there is a workaround for USPTO’s decision two years ago to decline to consider “due care” ROP requests.  The workaround for the US patent applicant is to file the PCT application in RO/IB and to present the “due care” ROP request to RO/IB.  But this workaround has drawbacks.

A first drawback to the use of RO/IB for the hapless US patent applicant is that there may be an invention export risk.  Consider that the invention may have been made in the US.  If so, then the filer needs to worry about whether or not there is a FFL (foreign filing license) already in place that covers all of the subject matter of the to-be-filed PCT application.  Yes, there may be an FFL already in place in the US priority application.  But the PCT application may contain subject matter that was not disclosed in the US priority application, thus putting into question whether the FFL granted on the US priority application does or does not cover the entirety of the subject matter disclosed in the to-be-filed PCT application.

Yes, the filer might then choose to apply for (and hopefully promptly receive) a faxed FFL from the USPTO.  But this takes time and the filer may already be dangerously close to the end of the 14-month period.  What’s more, the USPTO might simply not grant the request for a faxed FFL.  The subject matter might be such that it could take USPTO some time to decide whether or not to grant the FFL.  This might run out the clock past the end of the 14-month period.

A second drawback to the use of RO/IB for the hapless US patent applicant is that while the filer probably knows how to file a PCT application in RO/US (namely through EFS-Web), very likely the filer has no clue how to file a PCT application in RO/IB.  The filer probably has never filed any PCT application in RO/IB in the past, and may never have made use of either of the e-filing systems (PCT-SAFE and ePCT) that might be employed for such a PCT filing in RO/IB.

A third drawback to the use of RO/IB for the hapless US patent applicant is that midnight may already have come and gone in Switzerland on the day that the filer wishes to file.  The time zones work against such a filer.  Typically the arrival of midnight in RO/IB comes six hours sooner than the arrival of midnight in RO/US.

From the perspective of USPTO, what would be the consequences of choosing now to be willing, henceforth, to consider ROP requests based upon the “due care” standard?  Would USPTO be forced to revert to the old circumstance of being paid only a small fee to consider an evidence-intensive and difficult-to-decide petition (as had been the case with the old “unavoidable” revival petitions)?  No!  For “due care” ROP requests, USPTO could pick a fee that would cover the amount of work required to decide that evidence-intensive and difficult-to-decide request.

The alert reader might wonder whether the proposed change (USPTO henceforth considering “due care” requests in addition to its past practice of considering “unintentional” requests) would impose an undue burden upon the USPTO.  For example, would USPTO be force to develop and craft its own guidelines or rules for figuring out which “due care” requests should be granted and which should be denied?

The answer is that the International Bureau has already gone to quite some lengths to develop and to publish guidelines and criteria which a Receiving Office might use in deciding whether to grant or deny a “due care” ROP request.  You can see the guidelines here.

The change requested of the USPTO, namely that the USPTO henceforth consider not only “unintentional” ROP requests but also “due care” ROP requests, should not be burdensome for the USPTO, and should not be a money-losing proposition.  First, such requests should (one hopes) be relatively rare.  The number of times that a US filer screws up and misses the 12-month period for filing a PCT application should (one hopes) only be a few times per year.   Some fraction of those screwups will anyway be screwups in which the “due care” criterion will not be possible to satisfy, in which case the legacy practice (filing only an “unintentional” ROP request) will be followed.  But for those handful of filers who find that they need to be able to file a “due care” ROP request at the RO/US, it will make a really big difference if USPTO is willing to receive such requests.

Second, USPTO should not need to lose money on such requests.  USPTO can surely price the fee for a “due care” ROP request at a level that covers USPTO’s cost of sifting and weighing the evidence and documents submitted, and arriving at a decision whether or not to grant such a request.

Of course one hopes that one will never actually need to file an ROP request.  One hopes that one will not miss the 12-month period for the filing of a PCT application.  But if the need were ever to arise, it would be a welcome development if USPTO were to be willing to consider both kinds of ROP request.

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