United States: Beware Change To RCE Practice Hidden In USPTO's Final Rules For Hague Agreement Implementation

Summary: Effective May 13, 2015, a US national stage application for which an inventor's oath or declaration (or substitute statement, as applicable) has not been filed is not eligible for an RCE filing.

On April 2, 2015, the US Patent and Trademark Office (USPTO) published its final rules for implementation of the Hague Agreement Concerning International Designs (Final Rules). These rules finalize the framework for the United States' participation in this international design registration treaty. US companies will be able to file international design applications beginning May 13, 2015.

As was widely announced after the publication of the earlier Notice of Proposed Rulemaking (NPRM) on November 29, 2013, the implementation of the Hague Agreement will permit applicants to (1) file a single international design application with the USPTO as the "office of indirect filing," (2) designate multiple Hague Agreement member countries and pay filing fees for each designated country, and (3) benefit from the resulting registration becoming effective and enforceable in each of the designated countries. This new system offers potential benefits and cost savings over the traditional process of filing separate design applications in each country where protection is sought, often within a relatively tight six-month priority window measured from the filing of an earliest priority application.

Nestled in the Final Rules setting out the guidelines for international design patents is a provision that will have an impact on US utility patent practice. While the 2013 NPRM version of the rules clarifies that filing a request for continued examination (RCE) under 37 C.F.R § 1.114 is not applicable in international design applications, the Final Rules go a step further to exclude US national stage Patent Cooperation Treaty (PCT) applications that do not comply with 35 U.S.C. 371. In its summary within the Final Rules (p. 17930), the USPTO explained that this particular change to Section 1.114 was made to "clarify that the request for continued examination practice set forth in § 1.114 added in section 4403 of the AIPA 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)." 

Thus, effective May 13, 2015, a US national stage application for which an inventor's oath or declaration (or substitute statement, as applicable) has not been filed is not eligible for an RCE filing. Preliminary informal discussions with a representative of the USPTO's International Patent Legal Administration indicate that the USPTO plans to accept an RCE in such situations if it is filed concurrently with the submission of the inventor's oath or declaration, and that errors made in bona fide attempts to concurrently submit the inventor's oath or declaration with an RCE would result in a Notice of Noncompliant RCE rather than abandonment. However, it remains to be seen how the USPTO will formally apply the rule in practice. 

While recent rule changes now permit applicants to delay submission of the inventor's oath or declaration until the application is allowed,1 practitioners can avoid a last minute rush to obtain inventor signatures before RCE filing by submitting these documents with or shortly after application filing. In addition, applicants may still file an RCE in US utility applications directly filed in the USPTO (under 35 U.S.C. 111 or 120), regardless of whether the inventor's oath or declaration has been filed. By filing the utility patent as a Section 120 continuation application of the PCT application, a practice referred to as a "pass through" or "bypass" continuation, the need to submit the oath or declaration before RCE filing can be avoided.

Footnotes

1 See "Changes to Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith America Invents Act," 77 FR 48776 (Aug. 14, 2012) (final rule).

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