On December 10, 2019 I provided training material to the USPTO (blog article, training material) about PCT Declaration Number 4. The idea is that a patent firm located outside the US might be trendy, modern, and up-to-date and might provide a signed inventor declaration (for later US purposes) at the time of filing a PCT application. The idea is that perhaps 1½ or 2½ years later, when the US national phase is entered, the signed declaration of inventorship for US purposes would already be in the file! The idea is that the formalities examiner in the DO/EO/US would take a look in the file and would pay attention to the presence of the signed PCT Declaration Number 4.
Unfortunately, all too often in recent months, we have had cases at the DO/EO/US where the formalities examiner at the USPTO fails to pay attention to the presence of the signed PCT Declaration Number 4 in our national-phase entry application file. Just today, for example, in one of our national-phase entry applications, the formalities examiner at the USPTO mailed out an official Filing Receipt along with Form PCT/DO/EO/903 (371 Acceptance Notice) dated July 17, 2023 falsely stating that we had failed to provide a “properly executed inventor’s oath or declaration” for our inventor.
It is hoped that the USPTO will once again in 2023 provide the training materials to its DO/EO/US formalities examiners, so that they can avoid making this mistake in the future for other US national-phase applicants.
A question that arose at our firm only last week:
Is PCT Declaration Number 4 useful if entry into the US will be via a bypass Continuation rather than a National Phase?
For example, perhaps this declaration completely suffices for a bypass Continuation. Or, perhaps more likely, is it at least usable in a bypass Continuation – e.g. by the attorney actively filing it in the bypass Continuation in the same way as is often done in typical Continuation practice (i.e. filing, in the Continuation, a copy of the Inventor Declaration from the parent case).
Yes it is a very good question. The way to figure out the answer is to print out PCT Declaration Number 4 and Form PTO/AIA/01 on paper and place them side by side on a table in a well-lit room. Have two people cooperate in a close comparison of the two forms. By this I mean that a first person reads all of the magic words of Form PTO/AIA/01 out loud while the second person follows along on PCT Declaration Number 4. If all of the magic words are indeed present on the PCT Declaration then the the answer is “yes”. If not, then the answer is “no”.
I welcome a report from some interested reader as to the results of this comparison.
(You mean Form PTO/AIA/01, correct?)
It seems to me (as a non-US practitioner) that the “magic words” on Form PTO/AIA/01 are:
“As the below named inventor, I hereby declare that:
This declaration is directed to… …United States application or PCT international application number __ filed on __.
The above-identified application was made or authorized to be made by me.
I believe that I am the original inventor or an original joint inventor of a claimed invention in the application.
I hereby acknowledge that any willful false statement made in this declaration is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both.”
The wording in PCT Declaration Number 4 appear to be identical to these except for the single leading “I hereby declare” being separated into one per clause.
Now this is no surprise – the entire purpose of PCT Declaration Number 4 is to obviate the need for dealing with an Inventor Declaration at a later date. But I see the PCT as having been designed for National Phase; to me, as a non-US practitioner, bypass Continuations seem more like a nice side-effect (or dare I say a “hack”) identified by US practitioners. I therefore felt it important to be sure that US law/practice does not have any hidden quirk that might affect the utility of PCT Declaration Number 4 for a subsequent bypass Continuation. Based on your earlier reply and the matching “magic words”, am I to conclude that no such quirk exists, and that PCT Declaration Number 4 is useful even if entry into the US will be via a bypass Continuation?