USPTO doing a very customer-friendly thing (relating to walking corpses)

The executive summary here is that there are patent owners out there who are actually in possession of “walking corpses” instead of granted US patents … and the USPTO is doing a very customer-friendly thing and letting them know about the problem so that they can try to fix it prior to litigation time.   The USPTO is to be commended on this.  If you would like to more fully appreciate how very nice this is on USPTO’s part, read on.

Maybe you are in possession of such a “walking corpse” patent, and you don’t know it, and maybe the USPTO has not yet gotten around to letting you know it in your case. Maybe you should be trying to revive your own “walking corpse” patent. If so, then this blog article is for you.

If you are a member of the PCT listserv then you already know the story that I am about to tell.  A member of that community posted this report:

A national phase application received a notice of abandonment from the USPTO on July 2020 because an RCE filed in June 2017 was submitted before the inventor oaths or declarations.

The notice of abandonment states:

The Office acknowledges the filing of the Request for Continued Examination (RCE) on June XX, 2017.  However, the RCE provisions of 37 CFR § 1.114 do not apply to an international application that does not comply with 35 USC § 371. See 37 CFR § 1.114(e)(3). An inventor’s oath or declaration for each named inventor is required for an international application to comply with 35 USC § 371, notwithstanding the changes permitting applicants to postpone filing the inventor’s oath or declaration until the date on which the issue fee is paid. See 37 CFR § 1.495(c)(3)(ii). See also Changes To Implement the Hague Agreement Concerning International Registration of Industrial Designs, Final Rule, 80 Fed. Reg. 17918, 17930 (April 2, 2015). The present application, which is a national stage entry of an international application, has not met the requirement of 35 USC § 371(c)(4) in that a compliant inventor’s oath or declaration has not been filed for each named inventor. Accordingly, as a proper reply to the Office action mailed December XX, 2016 has not been timely filed, the application is abandoned.

I understand why the RCE was not accepted. I’m glad I was not involved with this application until 2020.

However, I don’t understand the delay in issuing the notice of abandonment particularly after the Office issued a non-final Office Action in September 2019 and a final Office Action in May 2020. As an additional issue, the application went abandoned for failure to respond in April 2019 and […] a petition to revive was granted in November 2019!

Does anyone on the list have thoughts for how to respond to this notice of abandonment?

As for the particular question that this listserv member posted, the answer of course is to file a Petition to Revive now in July 2020, asking for forgiveness for having failed to provide a signed inventor declaration chronologically prior to filing that (defective) RCE back in June of 2017.  Which of course requires rounding up that signature of that inventor on that inventor declaration.

As a preliminary matter, the reader may wish to re-read my blog article of May 14, 2015 about this.

There are so many things that can be said about this.

First thing.  The original poster did not say what is going on now, but maybe what we are talking about is a granted patent.

Second thing.  What we realize is that the applicant screwed up on June XX, 2017 when the applicant apparently had not read my blog article of May 14, 2015.  On June XX, 2017 the applicant ought to have scrambled around and gotten the danged inventor declaration signed and filed chronologically prior to filing the RCE.  Or the applicant could have filed a continuation instead.  But yes the applicant screwed up.

Second thing.  It means the USPTO screwed up shortly after June XX, 2017 when it mistakenly “granted” the defective RCE.  Somebody at the USPTO who was handling the RCE likewise had apparently not read my blog article of May 14, 2015.  That person should have mailed out a notice of abandonment due to the fact of the RCE being defective.  But failed to do so.  Maybe later the USPTO mailed out a Notice of Allowance and maybe later the applicant paid the Issue Fee and maybe later the USPTO mailed out a physical granted patent.  In which case that patent is actually not a patent even though it looks like a patent.  It is a “walking corpse”.

Third thing.  It is alert listserv member Suzannah Sundby who answered the question posted by that poster on the PCT listserv, and who drew my attention to this listserv exchange, and who pointed out that what we are looking at here is that the USPTO did an extremely customer-friendly thing and in 2020 went back to look at old RCEs like this one.  And the USPTO noticed its mistake and maybe noticed that it has mailed out a physical patent that is not actually a patent even though it looks like one.  The USPTO is to be commended for this extremely customer-friendly thing.

Fourth thing.  Call me old-fashioned, but I will stick my neck out and hazard a guess that the would-be patent owner in this case that was discussed on the listserv probably went through this whole process because it had a goal of obtaining an actual US patent.  If so, then I am guessing it counts as bad news that the physical patent that the patent owner received is not actually a patent at all.  If so, then the normal next step would be for the patent owner to file a petition to revive.  The patent owner needs to not dawdle, given that somebody is going to have to state under penalty of perjury that the entire period of delay was unintentional.  If it takes another week to get the petition filed, then the statement under penalty of perjury also directs itself to what the excuse is for sitting around doing nothing during that additional week.  We may assume that TYFNIL the signer of that statement will be grilled for many hours in deposition.

Oh and of course it’s not enough merely to file the petition to revive.  The patent owner is going to have to scramble around now in 2020 and try to find that inventor and get that inventor declaration signed, as part of the revival process.  But as experienced practitioners well know, although 99.9% of the time this is super easy, there are those 0.1% of the time cases where the passage of some years has led to the circumstance of the inventor having disappeared leaving no forwarding address, or having become uncooperative, or having gotten run over by a truck.  Okay, I’ll admit it, I painted too optimistic a picture on this one, the experienced practitioner will actually evaluate this chance at about 0.2%.  But anyway, the risk is nonzero.  The inventor will need to be found, and the inventor’s signature obtained.  (Or, if the timeline and other facts permit, maybe a Substitute Statement could be employed in lieu of the signed inventor declaration.)

Fifth thing.  Again assuming it was the patent owner’s wish to be in possession of an actual patent, then just imagine how disappointing it would be TYFNIL when the patent owner runs down to the court house and sues somebody, and then the accused infringer turns out to be someone who had read my blog article of May 14, 2015.  And with a couple of mouse clicks in Public PAIR, the accused infringer notices that the supposed patent is actually a walking corpse.  Do they point it out right away to the plaintiff?  Maybe they allow the plaintiff to burn a few hundred thousand dollars of litigation money first, and then they mention that oh by the way that supposed patent is a walking corpse.  At which point, yes, the patent owner can still file a petition to revive.  Assuming that even then someone can state under penalty of perjury that the entire period of delay was unintentional.  (And assuming the inventor has not disappeared by then, or become uncooperative, or gotten run over by a truck.)  We may assume that the signer of that statement will be grilled for many hours in deposition.

Sixth thing.  The section of 35 USC that provides for this petition to revive has no statute of limitations.  You can file the petition to revive TYFNIL if you wish.  One can imagine filing such a petition for a walking corpse patent during its term or even during the six-year patent-damages statute of limitations period that follows the patent term.

Seventh thing.  The USPTO will grant the petition as a matter of routine, so long as (1) the required statement about the entire period of delay being unintentional has been made, and (2) the check for $2000 did not bounce.  (Well, and so long as the signed inventor declaration has belatedly been provided.)  For this kind of petition the USPTO does not conduct any independent inquiry as to whether the entire period of delay really was unintentional.  The USPTO takes the declarant at his or her word on this.  But of course the accused infringer will not merely take the declarant at his or her word on this.  The declarant will be grilled for many hours in deposition, for example why that last week of delay happened prior to the petition being filed.

Eighth thing.  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!  And thank you to Suzannah Sundby for drawing my attention to this most recent nice action by the USPTO in the case discussed recently in the PCT listserv.

For the practitioner who wishes to keep on top of these things, what are the action steps?  The action steps include:

  • When you are getting ready to file an RCE, check to see whether your case is a 371 case.  If it is, check to see that you have already handed in your signed inventor declaration.
  • Better yet, don’t leave yourself vulnerable to this kind of screwup.  When you file a 371 case, don’t foot-drag on handing in your signed inventor declaration.  Just hand it in at the beginning and then if there comes a time to file an RCE, you won’t risk screwing this up.  And anyway, handing it in at the beginning saves you from having to pay that pesky $140 fee for handing in the signed inventor declaration late.
  • Better yet, don’t even leave yourself vulnerable to the risk of not handing in the signed inventor declaration at 371 time.  Obtain the inventor’s signature on PCT Declaration Number 4 back when you file your PCT application in the first place, and get it on file at the IB within the super-important 4-and-16 time period.  This then counts as your inventor declaration for 371 purposes and you don’t even need Form AIA/01.
  • Go back and review every case in which you ever filed an RCE, and check to see which ones were 371 cases.  For each such case, check to see whether the signed inventor declaration was missing at the time of filing the RCE.  For each such case, now in 2020 without further delay round up the signed inventor declaration and prepare and file the Petition to Revive and get it granted, so that your “walking corpse” patent can be instantly converted into a real patent.
  • Join the PCT listserv.
  • Yes, probably go back and read all of the archived articles on this listserv.
  • Write thank-you notes to Mercedes Meyer and to Suzannah Sundby for being so alert about these things.
  • Oh, and if only there were some way to know who the nice people at the USPTO are that got the idea of digging through USPTO’s old files to identify these “walking corpses”, and to write letters like this so that the patent owners could revive the corpses prior to litigation time.  The action step would be to write thank-you notes to those people as well.  (Actually I suspect I know who some of those nice people are.  Thank you MN and BM.)

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