Can You File an RCE in That U.S. National Stage Application?

Since the implementation of the America Invents Act on September 16, 2012, and the Technical Corrections Act on January 14, 2013, Applicants have been able to delay submission of an executed inventors’ oath/declaration in a U.S. patent application until payment of the issue fee. Although U.S. national stage applications could not immediately benefit from this rule change because the September 16, 2012 effective date was based on international filing date, U.S. national stage applications filed since March 16, 2015 should be encompassed by its provisions. However, another rule published April 2, 2015 makes it risky to delay filing an executed inventors’ oath/declaration in a U.S. national stage application.

The New Request for Continued Examination (RCE) Rule

The Federal Register Notice published April 2, 2015, primarily was directed to final rules implementing the Hague Agreement Concerning the International Registration of Industrial Designs. However, it also included a change to 37 CFR 1.114 that applies to U.S. national stage applications. That change clarifies that a Request for Continued Examination (RCE) cannot be filed in such an application unless the requirements of 35 USC § 371–including the requirement for an executed inventors’ oath/declaration (or substitute statement)–have been satisfied.

1.114    REQUEST FOR CONTINUED EXAMINATION.
(a) If prosecution in an application is closed, an applicant may request continued examination of the application by filing a submission and the fee set forth in § 1.17(e) ….
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(e) The provisions of this section do not apply to:
(1) A provisional application
(2) An application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995;
(3) An international application filed under 35 U.S.C. 363 before June 8, 1995 or an international application that does not comply with 35 U.S.C. 371;
(4) An application for a design patent;
(5) An international design application; or
(6) A patent under reexamination.

(35 USC § 371 is the national stage commencement statute that requires submission of an executed inventors’ oath/declaration or substitute statement, among other formalities.)

The USPTO explains that this rule change was necessary because the legislation that created RCEs (the American Inventors Protection Act of 1999 or AIPA) made the provisions of the RCE statute (35 USC § 132(b)) applicable to U.S. national stage applications “complying with section 371 of title 35, United States Code, that resulted from international applications filed on or after June 8, 1995.’’

Thus, the Office is revising § 1.114(e)(3) to clarify that the request for continued examination practice set forth in § 1.114 … does not apply to an international application until the international application complies with 35 U.S.C. 371 (which requires the filing of the inventor’s oath or declaration in the international application, as well as, for example, the basic national fee and an English language translation of the international application if filed in another language).

While the Federal Register Notice states that its rule changes are effective May 13, 2015, because the changes to 37 CFR § 114(e)(3) appear to conform to statutory requirements, it is possible that non-compliant RCEs filed before that date are defective.

Trap for the Unaware

One concern I have about this rule is that Applicants may not come face-to-face with its requirements until it is too late. RCEs often are filed at or near final deadlines, after Applicants have exhausted efforts to negotiate allowance after a “final” rejection. If an Applicant files an RCE in a U.S. national stage application in which an executed inventors’ oath/declaration (or substitute statement) has not been filed, the RCE will be improper and the application may be deemed abandoned. For this and other reasons, Applicants should endeavor to submit executed inventors’ oath/declaration documents as early as possible.