(Update: three years later it seems the DO/EO/US people need to be reminded about PCT Declaration Number 4. See blog article.)
I am providing some training material free of charge to the USPTO. The training material, which relates to PCT Declaration Number 4 under PCT Rule 4.17, is prompted by a mistake that a nameless person at the USPTO made in one of our cases today.
Our case is one in which a German patent firm filed a PCT patent application on March 6, 2018. The German firm, being a power user of the PCT, of course arranged for the inventors to sign PCT Declaration Number 4 under PCT Rule 4.17. This Declaration Number 4 is a PCT form containing the exact Magic Words required to completely satisfy US rules for a declaration of inventorship.
(I am reminded from time to time that most US patent practitioners are ignorant of the various PCT Declarations under Rule 4.17, including PCT Declaration Number 4. And today’s blog is prompted by the fact that a nameless person at the USPTO today proved himself or herself to be ignorant of PCT Declaration Number 4.)
The German firm, being a power user of the PCT, of course also made use of Chapter II of the PCT, and secured a fully favorable International Preliminary Report on Patentability under Chapter II of the PCT (“IPRP-II”). This IPRP-II came from the EPO, which of course “drinks its own champagne“.
(I am reminded from time to time that most US patent practitioners never make use of Chapter II of the PCT, that is to say, never file a Demand or an Amendment under Article 34.)
The German firm then entrusted to our firm the task of entering the US national phase, which we did on July 17, 2019. Given the fully favorable IPRP-II, we asked the USPTO to put the case on the Patent Prosecution Highway. The Office of Patent Petitions granted the request on October 1, 2019 and the case was docketed to an Examiner on October 10, 2019. Fourteen days later we were delighted to see that our Transaction History listed “Reasons for Allowance”. The client, eager to move things along, authorized us to pay the Issue Fee upon receipt of the Notice of Allowance from the USPTO.
Today was the big day! The Notice of Allowance arrived. But we found that we did not dare to pay the Issue Fee. We saw to our horror that if we were to pay the Issue Fee, this would guarantee that the case would go abandoned!
How could it be that paying an Issue Fee would cause a case to go abandoned, you may ask?
The answer lies in the actions of a nameless person at the USPTO who caused Form PTOL-2306 to be included in today’s Notice of Allowance. You can see the offending Form PTOL-2306 here. The form is entitled Notice Requiring Inventor’s Oath or Declaration. The Notice states that:
A properly executed inventor’s oath to [sic] declaration has not been received …
This statement is false (and it says “to” when I think the writer means “or”). The Notice further states that:
The text of the inventor’s … declaration submitted … on behalf of the … inventors is in a language other than English and is not … in accordance with PCT Rule 4.17(iv) …
This statement is also false. Yes the inventor’s declaration is in a language other than English (it is in German), but the writer fails to pay attention to the possibility that the declaration might be in accordance with PCT Rule 4.17(iv).
The Notice goes on to say that a new oath or declaration must be filed “no later than the date on which the issue fee is paid”, the penalty for failure being that:
Failure to comply will result in ABANDONMENT of this application.
(Emphasis in original.) In other words, if we were to make the mistake of actually paying the Issue Fee, the result would be the case going abandoned.
The problem apparently is that the nameless person who mailed out this Form PTOL-2306 has no clue how to recognize an inventor’s declaration that is “in accordance with PCT Rule 4.17(iv)”. The person who mailed out this Form PTOL-2306 is perhaps ignorant of such declarations.
For the benefit of this nameless person at the USPTO I have assembled in one place all nine of the official PCT Declarations Number 4 which this nameless person might encounter. They may be seen here. The declarations are in French, German, Spanish, Russian, Chinese, Portuguese, Korean, Arabic, and Japanese. These are the official fillable PDF forms. It may also happen that a power user of the PCT may use ePCT to generate a PCT Declaration Number 4, in which case it will contain the same words as the PDF form but will be formatted differently.
In our particular case what is going to be needed of course is for the USPTO to mail a corrected Notice of Allowance that omits the offending Form PTOL-2306, hopefully with a statement that the USPTO regrets the mistake.
But one hopes that this nameless person can keep the collection of PCT Declarations Number 4 close at hand for future reference so that he or she can recognize in future when an inventor’s declaration is “in accordance with PCT Rule 4.17(iv)”.
More importantly, hopefully this nameless person can review the other cases in the past in which he or she inserted Form PTOL-2306 into a Notice of Allowance, and take corrective action in those cases where the declaration was in fact “in accordance with PCT Rule 4.17(iv)”. One shudders to imagine if this person has caused one or more cases wrongly to be deemed abandoned, in which case the corrective action will be a sua sponte withdrawal of the holding of abandonment.