A new category of walking-corpse US patents?

(Update:  USPTO is doing a very customer-friendly thing about this, as I report here.)

One of the scariest things for a US patent practitioner is the thought of being held responsible for a patent that turns out to have been a “walking corpse”. A patent that everybody thought was a normal patent and it turns out that there is some defect that means it was never actually a patent at all.

My favorite category of “walking-corpse” patent had, until now, been the patent that was granted on a patent application in which the applicant made a non-publication request, and then did foreign filing, and failed to timely rescind the non-publication request. The rules say that such a patent application is deemed abandoned some 46 days after the foreign filing happened. But probably nobody involved at the time knew that the status of the application was “abandoned”. Not the Examiner, not the USPTO employee who cheerfully collected the Issue Fee and mailed out the ribbon copy of the granted patent. Least of all the practitioner who forgot about rescinding the non-pub request and who triumphantly handed the ribbon copy of the patent to the client. Likely as not, the first time this defect would get noticed is at litigation time.

Anyway until now that was my favorite example of a “walking corpse” US patent. But it looks like maybe there’s now a new category of walking-corpse US patents. 

This new category of walking-corpse patents works like this.  An applicant entered the US national phase from a PCT application.  (This is called a “371 application”.)  Taking advantage of the rules change on September 16, 2012 (AIA) that permits handing in the inventor declaration late, the applicant made plans to hand in the inventor declaration shortly before paying the Issue Fee.  Meanwhile at some point during pendency, the applicant filed an RCE (request for continued examination).

It turns out that there’s been a sort of “gotcha” floating around for many years now, that says that if you are going to file an RCE in a case that is the US national phase of a PCT application, you need to have handed in the inventor declaration chronologically prior to the day that you file the RCE.  (This requirement is tucked away in 35 USC § 132(b) and is sort of hinted at in 80 FR 17918 (April 2, 2015) at pages 17930 and 17963.)

Or saying this differently, if you did not hand in the inventor’s declaration until after you filed the RCE, you arguably have an RCE application that is a walking corpse.  And a patent granted on that RCE application is arguably not a patent at all.

USPTO apparently stumbled upon this problem only recently, and so USPTO apparently only recently decided to start checking for this when an RCE gets filed in a national-phase case.  Starting only recently, if you were to file an RCE in a US national-phase case in which the inventor declaration had not yet been filed, apparently the USPTO will mail out some kind of deficiency notice inviting the applicant to hand in the inventor declaration Real Soon Now.

But meanwhile what about all of those issued US patents in which this fact pattern has already been played out?  US patents in which an RCE was filed at a time when the inventor declaration had not yet been filed, and in which the application was an entry into the US national phase from a PCT application?  It may be that all of those US patents are not patents at all, but merely look like patents.

If you happen to be a practitioner who handled such an RCE, and only handed in the inventor declaration after the filing of the RCE, what can be done now to attempt to clean up the problem?  I am unaware of any actual answer to this question.

We can notice that this problem does not present itself if the US patent was granted on a “bypass continuation” application.  In a bypass continuation, it does not matter whether the handing-in of the inventor’s declaration came chronologically before or after the filing of an RCE.

The practice tip going forward is, of course, to make very sure that if you are filing an RCE in an application that is the US national phase of a PCT application, you should hand in the inventor declaration chronologically prior to the filing of the RCE.

Having said this, the real practice tip is to hand in the inventor declaration as early as possible, rather than foot-dragging this step in reliance upon the September 16, 2012 rules change.  Even before this particular walking corpse problem came to light, there were plenty of reasons to get the inventor declaration signed and handed in as early as possible.  The applicant who foot-drags this step risks all sorts of things such as the inventor disappearing or becoming uncooperative or getting run over by a truck.

Indeed the PCT process provides a mechanism for getting the US inventor declaration into the PCT application at the time of filing of the PCT application.  The non-US or US practitioner can round up the inventor’s signature on this Box VIII(iv) form and include it with the PCT application on filing day.  This is a Best Practice for the non-US or US practitioner who is filing a PCT application.  Alternatively the non-US or US practitioner can round up the inventor’s signature on Form AIA/01, using the PCT application number to identify the application to which the declaration is directed.  The point being that this signature should get rounded up as early as possible in the PCT process.  There is no good reason to foot-drag the signature process until the time of US national-phase entry, and there is absolutely no good reason to foot-drag the signature process until months or years later when the need might arise to file an RCE.

I wish I could say that I am the person who figured out that this was an important question to think about, but it’s not so.  The person who tipped me off to think about this question is Mercedes Meyer, an experienced patent practitioner in Washington DC.  Thank you Mercedes!

11 Replies to “A new category of walking-corpse US patents?”

  1. Perhaps a technical correction of the statute is needed to make RCEs in 371’s proper as long as all the requirements for 371 are satisfied by the time the issue fee is paid (and make this correction retroactive). It puts the cart before the horse a little because you couldn’t confirm that the RCE was proper until the issue fee was paid – but it’s a simple amendment and I think it solves the problem. If the issue fee is never paid then it doesn’t matter whether all the 371 requirements were satisfied.

  2. Do you still need to file a PTO Form 1390 if you are not requesting expedited examination? I have method and system claims and I want to avoid a restriction on a continuation bypass application. Thanks

    1. Sounds like you are asking at least two distinct questions here.

      A first question is, if you want the “unity of invention” restriction standard, then you need to use national phase rather than “bypass continuation” as your way of pursuing US patent protection. You are quite right about that.

      Then I guess your section question is, if you have picked “national phase” as your way of proceeding, are you required to file PTO Form 1390? And the answer is “no”. So long as you file the things that you need to file (base national fee, declaration, translation into English, etc.) it is not required that you file Form 1390. Yes, if you are filing the national-phase papers prior to the end of the 30 months, it is smart to ask for “immediate” national phase processing. Which you could do with Box 1 of Form 1390 if you wish. (We do it with a separate one-sentence document from our word processor.)

  3. Respecting the failure to rescind nonpublication: The statute says “….REGARDED as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the notice was unintentional.” Does this provide an avenue for post-grant relief? Do you know any cases testing this aspect?

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