I am delighted to report a favorable experience today with a DO/EO/US person. By this I mean a USPTO person handling entry into the US national phase from a PCT patent application.
First a bit of background.
It is recalled that there are two ways to try to get a US patent from a PCT application — national phase entry and the filing of a so-called “bypass” continuation. If you choose the bypass route, and if something goes wrong (for example the arrival of a Notice of Missing Parts or “NMP” from the Office of Patent Application Processing or “OPAP”) then you will be phoning up the (arguably misnamed) Application Assistance Unit. Callers to the Application Assistance Unit (“AAU”) are accustomed to the experience of never being able to actually speak with the OPAP person who made the decision to mail the NMP. Instead one is only able to reach an AAU person, who will then the caller in a guessing game, trying to guess what might or might not have prompted the OPAP person to do what they did. But it is only a guess. So far as our experience at OPLF extends, with many dozens of NMPs over the years that presented a problem, we have never even once been able to get through to the person who actually made the decision to mail the NMP. It is also quite a challenge even to arrive at a guess as to the identity of the OPAP person. Often there are only a couple of initials in the putative “signature” line at the bottom of the NMP. It is often a big challenge to deal with an NMP, and it often requires half a dozen interactions with the USPTO before we succeed in getting an erroneous NMP to be withdrawn.
On the other hand if you choose the national-phase-entry route, and if something goes wrong (for example the arrival of a Notification of Missing Requirements or “NMR” from the DO/EO/US office) then at the very least you will be able to learn who made the decision to mail the NMR. The NMR person’s actual first and last name will appear at the signature line on the NMR, and not only that, the NMR person’s actual direct telephone number will be listed.
This availability of the name and telephone number of the NMR person sounds more exciting than it actually is. We have received many dozens of NMRs over the years that presented a problem, and until today we had never even once been able to actually reach the NMR person by dialing the telephone number. Calls would invariably go to voice mail. Telephone messages would invariably not get returned.
But the apparent impossibility of reaching the NMR person has never been a serious problem, for the simple reason that it has always been possible to dial up the PCT Help Desk at the USPTO to get help. Our universal experience (and, I think the experience for nearly all practitioners) is that the people at the PCT Help Desk try very hard to be helpful. Not only that, the people at the PCT Help Desk do not merely guess randomly why an NMR person might or might not have decided to mail out an NMR. Instead the people at the PCT Help Desk are skilled and trained at a level that permits them to work out, from a look at the file, a very high confidence sense of what prompted the mailing of the NMR. Going hand in hand with this is that as a general matter, the wording of an NMR very often actually makes quite clear what the (real or imagined) problem is. In contrast, the wording of an NMP is often extremely oblique and provides almost no hint as to what the actual (real or imagined) problem is.
But it is not only that the PCT Help Desk person is skilled and trained at a very high level and can probably guess correctly what prompted an NMR. It is also that the PCT Help Desk person will actually “go to bat for you” and will actually get in touch with the NMR person. This permits working out exactly what prompted the mailing of the NMR, and this permits working out exactly what will be required to fix the problem.
My main point being that if I were to face the ability to pick whether the office to call with a formal-review problem were the AAU or the PCT Help Desk, I would pick the PCT Help Desk every time. This is a reason to pick US national phase entry, rather than a bypass continuation, as one’s path for trying to get a US patent from a PCT application.
But now we get back to the delightful experience I had today with an NMR person.
Again, what triggered this blog article is that I received the NMR. The NMR identified two problems with the application:
- when I entered the US national phase, supposedly I had failed to provide a signed inventor declaration, and
- when I entered the US national phase, supposedly I had failed to pay some $2760 in excess-claims fees.
I had personally e-filed this national phase entry just a few weeks ago, and I knew that I had not screwed up either of these things.
As for the inventor declaration, indeed I had e-filed not one but two signed inventor declarations:
- the PCT declaration of inventorship under PCT Rule 4.17(iv), and
- the domestic declaration of inventorship (Form PTO/AIA/01).
I will digress momentarily about the PCT Rule 4.17(iv) declaration, since some readers of this blog might possibly not be familiar with such this particular type of declaration.
The Rule 4.17(iv) declaration (you can see it here in ten different languages) represents a Best Practice. The practitioner who is preparing and filing a PCT application can obtain the inventor signature on this Rule 4.17(iv) declaration, and can include it when filing the PCT application. This declaration will then count as the signed inventor declaration for purposes of the United States national phase entry which might happen some thirty months later. When you click on that link, you can see that this form is available in ten different languages, namely English, French, German, Spanish, Russian, Chinese, Portuguese, Korean, Arabic, and Japanese. No matter which language the PCT filer selects, thirty months later the DO/EO/US person is not allowed to say “no” to the document.
In this case the foreign agent that entrusted to me the task of entry into the US national phase followed a “belt and suspenders” approach. Even though the signed Rule 4.17(iv) declaration was already in the file, the foreign agent took the further step of obtaining the inventor’s signature on Form PTO/AIA/01. So when I entered the US national phase, I provided both signed inventor declarations.
This then raises the question, how can it be that when I provided not one but two signed inventor declarations, the NMR person would incorrectly state that I had not provided any signed inventor declaration? My guess is that the NMR person had hastily looked at the IFW, found a first document that had been indexed (by me) as “Oath or Declaration filed” and clicked on it, and saw a document starting with these words:
What this says (in Chinese) is “Declaration of inventorship (Rule 4.17(iv) and 51bis.1(a)(iv)) (for US designation)”. But of course it does not say it in English. The rest of the document is in fact a fully compliant inventor declaration containing all of the “magic words” needed to satisfy all US rules for inventor declarations. But of course the magic words are not in English.
When a DO/EO/US person encounters such a non-English document, the DO/EO/US person is supposed to recall his or her training, namely that the signed inventor declaration might be in any of ten languages and that the DO/EO/US person is not allowed to say “no” to the declaration even if it is in one of the nine non-English languages. But I suspect the NMR person in my case forgot that training, and assumed that this was not an inventor declaration at all, and assumed I had mis-indexed some non-declaration document as “Oath or declaration filed”, and jumped to an incorrect conclusion that I had failed to provide a signed inventor declaration.
Then I guess what happened is that the NMR person in my case, having clicked on one document that was indexed as “Oath or declaration filed”, did not even scroll up in IFW to see that in fact I had provided two declarations, the other of which was Form PTO/AIA/01.
The next problem was the supposed deficiency in claims fees. The PCT application as filed contained five independent claims and (depending on how you might count the multiple dependent claims) somewhere in the range of 33 to 50 total claims.
I had filed a Preliminary Amendment (“PA”) eliminating multiple dependency and canceling two of the independent claims.
When I first saw that the NMR person had dinged me for (supposedly) failing to pay $2760 in excess-claims fees, my first hasty assumption was that she must have overlooked the PA. This does sometimes happen — a DO/EO/US person sometimes does overlook a PA and then counts up the (supposedly) deficient claims fees based upon the PCT application as filed.
But that’s not what went wrong here. There is a claim fee calculation worksheet in the IFW, and what I can see is that what went wrong here is that the NMR person incorrectly identified six of the dependent claims as independent, thus incorrectly arriving at a count of independent claims as “nine” when the correct answer was really “three”. So I got dinged for six more independent claims.
As it turns out, the NMR person made one more mistake. If we assume for sake of discussion that I had failed to provide a signed inventor declaration, then the NMR person should also have dinged me for the $140 fee for providing the inventor declaration late. But she missed that.
So anyway the normal next step in a case like this would be to phone up the nice helpful people PCT Help Desk. But I figured I might as well make the usual futile effort to reach the NMR person by telephone.
And the point of this blog article is that the NMR person actually answered the telephone! (I could hear some sounds in the background that suggest that the NMR person was working from home.)
I explained why I was calling and I supplied the application number. The NMR person tapped a few keys on her keyboard, reviewed the file, and said “I will withdraw the Notice of Missing Requirements for you”.
This is astonishing news! Astonishing in a good way, but astonishing news!
If you had filed an ordinary US patent application (or a bypass continuation) and if you had received a Notice of Missing Parts, what do you think are the chances that you could phone up the NMP person, actually reach the person, and secure a promise to withdraw the NMP? I submit that the chances are zero or perhaps less than zero.
But in this case, because it was a national phase entry, I was able to phone up an NMR person, reach the person, and secure a promise to withdraw the NMR.
This illustrates the very striking difference at the USPTO between the USPTO’s workflow for formalities review of PCT national-phase entries on the one hand and the USPTO’s workflow for formalities review of domestic patent applications (including bypass continuations) on the other hand. A night-and-day difference.
Kudos to the DO/EO/US person who actually answered her telephone and offered to withdraw a Notification of Missing Requirements.