USPTO gets it wrong on petitions to revive

We’ve had reason to review half a dozen cases in the past year in which, so far as we can see, the USPTO was completely wrong to dismiss a Petition to Revive.  In some cases the USPTO bounced the petition on the grounds that the statement that the delay was unintentional was not signed by the applicant, and in one case the USPTO bounced the petition on the grounds that the statement that the delay was unintentional was not signed by all of the applicants.  As I say, it appears the USPTO was completely wrong in its handling of the petitions to revive.

The revival petitions that we were reviewing all had to do with PCT applicants in foreign countries that for one reason or another missed the 30-month date for entry into the US national phase.  In each case our direct contact was a non-US patent firm, and the non-US patent firm communicated in turn with its client.   In each case, our firm’s first involvement in the matter came after the 30-month date had come and gone.  So we at our firm had no personal knowledge of the facts surrounding the delay in entry into the US national phase.

Our firm’s practice has always been that where a petition to revive is concerned, the statement that the delay was unintentional has to be signed by someone with personal knowledge of the facts.  Thus for example if the screwup happened at the foreign client’s location, the statement would be signed by someone at the foreign client’s location.  If on the other hand if the screwup happened at the non-US patent firm (and not at the foreign client’s location) then the statement would be signed by someone at the non-US patent firm.

But time and time again we have run into people at the USPTO who seem to think that instead of having the statement signed by someone with personal knowledge of the facts, they want the statement signed by either (a) the US patent practitioner, or (b) the applicant (or all of the applicants).

On two occasions we have encountered a petitions examiner in PCT Legal Administration who, when reached by telephone, put forth the view that such statements must be signed by the registered practitioner.  During each call we tried to ask whether this is a bad idea if the practitioner lacks personal knowledge of facts.  During each call we tried to ask whether it wouldn’t be better all around if the signer of the statement were a person with personal knowledge of the facts.  In each case the petitions examiner seemed a bit baffled by our questions.

This requirement that the statement by signed by “all of the applicants” seems particularly wrongheaded in the case where the filing date is before September 16, 2012.  In such a case the “all the applicants” are perhaps half a dozen people located outside of the US whose connection is only that they are named inventors, but who otherwise probably have no knowledge whatsoever about delays happening elsewhere (for example in the non-US patent firm or in the company’s in-house patent department).

But even if the filing date is on or after September 16, 2012, it sometimes happens that no non-inventor applicant has been identified in the application, in which case once again the “all the applicants” are just a bunch of inventors who again, probably have no knowledge at all of the facts surrounding the delay.

If you read the Rule, you see only a requirement that there be “a statement that the entire delay was unintentional”.  The Rule nowhere says that the statement must be signed by the applicant, and nowhere says that the statement must (or should) be signed by the US practitioner.

The USPTO patent rules and the MPEP are filled with requirements that statements like this be signed by someone with “personal knowledge” of the facts.  See for example:

  • 37 CFR 1.6(f) — statement to deal with a fax that USPTO says it did not receive — to be signed by someone with “personal knowledge” of the facts about the fax.
  • 37 CFR 1.6(g) — statement to deal with an EFS-Web submission of a national-phase entry that USPTO says it did not receive — to be signed by someone with “personal knowledge” of the facts about the e-filing.
  • 37 CFR 5.25 — statement seeking retroactive foreign filing license must be signed by a person “having personal knowledge” of the facts surrounding the failure to obtain the FFL timely.
  • MPEP 409.03(d) — petition under old Rule 47 for unavailable inventor requires statement by a person “having firsthand knowledge of the facts”.

Perhaps the chief source of this wrongheaded treatment of revival petitions is a poorly drafted and poorly designed Form PTO/SB/64/PCT or Form PTO/SB/64.  The wording of this form assumes (in many cases quite incorrectly) that the signer is either the practitioner or all of the applicants.  This assumption, together with the fact that often the “all of the applicants” is merely “all of the inventors”, virtually guarantees that no one with personal knowledge of the facts would ever be the signer of the form.

A well designed form would provide two sections, each with its own signature field.  One section (the “Statement”) would recite the unintentionality of the delay in a single sentence.  The rest of the document (which recounts a variety of things that only the US practitioner would be likely to know, such as whether a terminal disclaimer is or is not needed, and what constitutes a “proper reply”) could then be signed by the US practitioner.

Between now and such time as USPTO retrains its petition examiners about what the rule really says, or such time as USPTO redesigns its poorly designed forms, it seems to me that the Best Practice is to avoid using the official USPTO forms.  The Best Practice is to construct two documents in one’s word processor as set forth above.  One document, to be signed by whoever has personal knowledge that the delay was unintentional, would be just a sentence long:

The entire delay in filing the required reply from the due date for the required reply until the filing of a grantable petition under 37 CFR 1.137(b) was unintentional.

The other document, signable by the US practitioner, would recount the payment of the petition fee and the filing of the proper reply, and would draw the reader’s attention to the attached statement as to unintentionality.

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