USPTO wrongly bouncing inventor declarations

Over on the EFS-Web listserv (the email discussion group for patent filers at the USPTO) there was an interesting discussion recently.  A number of USPTO customers (frequent patent filers at the USPTO) were talking about USPTO’s bad habit of bouncing inventor declarations that have nothing wrong with them.

It would not be so bad if USPTO were to do its bouncing promptly after the inventor declaration is filed.  In that case, if indeed there were actually something wrong with the inventor declaration, it would be a realistic goal to round up a fresh signature from the inventor.

Instead, the USPTO waits until allowance to mail the “Notice Requiring Inventor’s Oath or Declaration” (Form PTOL-2306).  The Notice states that there is some real or imagined defect in the inventor declaration that was filed back when the patent application was filed in the first place.  In a very large percentage of cases, there is not actually anything wrong with the inventor declaration.

One listserv member reports receiving over 130 of these Notices along with a Notice of Allowance since January of 2015.  She reports that in 95% of cases the Notice was wrong.  That is, in 95% of cases there was nothing wrong with the inventor declaration.

In quite a few of the cases, the Form PTOL-2306 has a box checked stating that the imagined defect is that the signed inventor declaration fails to “state that the above-identified application was made or authorized to be made by the person executing the oath or declaration.”  And in nearly all of these cases, the inventor declaration was USPTO’s own standard form (either Form PTO/SB/01A or Form PTO/AIA/01).  Standard USPTO form PTO/SB/01A says ” The above-identified application was made or authorized to be made by me/us.”  Standard USPTO form PTO/AIA/01 says “The above-identified application was made or authorized to be made by me.”  Nearly all inventor declarations filed at the USPTO are one form or the other, and so it’s just nuts for a USPTO employee to mail out Form PTOL-2306 with that box checked.

My best guess is that the real problem comes from this:

  • The “magic words” that need to be in an inventor declaration are different depending on whether the Filing Date is before September 16, 2012 or not, and
  • some USPTO employees are tasked with catching it if the filer used the wrong USPTO form, thereby failing to provide some of the “magic words”, and
  • some USPTO employees do not understand how to know what is the Filing Date for an application that is a national phase entry from a PCT.

The USPTO employee who gets ready to mail out the Notice of Allowance is probably trained to pounce on filers who used the wrong inventor declaration form.  A filer might screw up by using Form PTO/AIA/01 in an application having a filing date before September 16, 2012.  Or a filer might screw up by using Form PTO/SB/01A in an application having a filing date on or after September 16, 2012.  In either case the USPTO employee gets to say “gotcha” and gets to mail out Form PTOL-2306.  One imagines the annual performance review in which the manager leans back in his or her chair and says with a big smile “wow you mailed out a thousand of those Forms PTOL-2306, you are really doing your job!”

So the USPTO employee is motivated to mail out as many of these Forms PTOL-2306 as possible.  How can it be that the employee screws it up 95% of the time?

It will be recalled that the Filing Date for a US national phase application is not the date that the papers were filed to enter the US national phase.  The Filing Date for a US national phase application is the same as the PCT filing date.  A USPTO person who looks in PAIR (or looks at a Filing Receipt) will see a “filing or 371 date” field.  In a US national phase case, the USPTO person who completes this field in PAIR will insert into PAIR not the true filing date (the PCT filing date) but instead the date that the national-phase papers were filed.

It turns out that in many cases in which a USPTO person wrongly mails a PTOL-2306, the explanation is that the USPTO person fails to understand the difference between (a) the date listed in PAIR as the “filing or 371 date” and (b) the actual US filing date.  So for example suppose the actual US filing date (the PCT filing date) was before September 16, 2012.  And suppose the date that the national phase papers were filed is on or after September 16, 2012.  In such a case, the correct form to use is Form PTO/SB/01A.  But the USPTO person might look in PAIR and see the “filing or 371 date” that is on or after September 16, 2012, and might (wrongly) conclude that the correct form to have used was Form PTO/AIA/01.  Gotcha!  Out goes Form PTOL-2306 and the USPTO employee is one step closer to a favorable annual performance review.

But the problem is, there was nothing wrong with the inventor declaration.  There was something wrong with the USPTO employee who failed to pay attention to the fact that the case was a US national phase application in which case the true filing date was months or years earlier than the date that appears in PAIR (the date that the employee used in the “gotcha” activity).  Here’s what happens about 95% of the time:

The remaining 5% of the time, the USPTO employee was correct in the “gotcha”. The filer picked the wrong form. For example maybe it was the filer (and not the USPTO employee) who was wrong about what the true filing date is for a PCT application. Maybe the filer picked Form PTO/AIA/01, wrongly thinking that the relevant date was the date listed in PAIR (a date on or after September 16, 2012).  The filer should have picked Form PTO/SB/01A since the true filing date was not the PAIR date but was the PCT filing date.  Even in this case that comes up 5% of the time, the USPTO’s handling of the problem is just plain wrong. If the USPTO is going to do a “gotcha”, saying that the filer picked the wrong form, the USPTO ought to speak up about this shortly after the filing of the form at the USPTO. The USPTO ought not to save up the “gotcha” and spring it on the filer only at the time of the Notice of Allowance.

The problem with the USPTO saving up the “gotcha” and only springing it on the filer at the time of the Notice of Allowance is that by that time (maybe three or four years after the application was filed), almost certainly one of the following will have happened:

  • the inventor has disappeared, or
  • the inventor has been run over by a truck, or
  • the inventor has been let go and has vowed on his or her mother’s grave never to do anything to help the former employer ever again.

USPTO ought to treat its customers better, not saving up such a “gotcha” for years.  USPTO ought to speak up promptly after the inventor declaration is filed, if the USPTO finds some real or imagined flaw in the inventor declaration.

Clearly another customer-friendly thing that the USPTO could do is, for national-phase cases, to list the true Filing Date in PAIR as the “filing date”.  This would greatly reduce mistakes like this by overzealous or undertrained USPTO employees.

2 thoughts on “USPTO wrongly bouncing inventor declarations

  1. What happens if the USPTO fails to identify that the Declaration was defective at the Notice of Allowance and the applicant proceeds to pay the issue fee? For example, a declaration from a parent application filed before September 2012 is used in an application filed in 2014. At the Notice of Allowance, no requirement to supply a declaration is issued by the USPTO (e.g. PTOL-2306 is not sent with the Issue Fee Form) and then the Applicant pays the Issue Fee. Clearly, in this case, the declaration does not have the proper updated language. Is the case abandoned for failure to supply the proper declaration?

    • Why stop there? What happens if the USPTO fails to notice that a word in a claim is misspelled? What happens if the USPTO fails to notice that a mistake got made when USPTO hand-keyed information from an ADS into Palm? What happens if … and so on and so on. Is the consequence that the party who thought they were a patent owner is actually not the owner of a patent?

      What is the situation in which the lapse is being scrutinized? Litigation in federal district court? A post-grant proceeding before the PTAB?

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