Since the implementation of the America Invents Act, the United States Patent and Trademark Office (USPTO) has allowed applicants in utility patent applications to postpone the filing of an inventor's oath or declaration until the application is otherwise in condition for allowance. The USPTO has recently eliminated this benefit for applications filed under 35 USC §371.1
Effective as of May 13, 2015, the USPTO implemented rules regarding the upcoming entrance of the United States into the Hague Agreement Concerning the International Registration of Industrial Designs. Although the final rules are mainly focused on design patent applications, the final rules contain an obscure provision amending 37 CFR 1.114 that may have an impact on US national stage utility patent applications filed under 35 USC §371 based on Patent Cooperation Treaty patent applications.
Before the amendment, Rule 1.114 stated that if prosecution in a patent application is closed, then an applicant may submit a request for continued examination (RCE) of the application along with a fee. Upon submission of the RCE, the USPTO will withdraw the finality of any Office Action and reconsider the application. Rule 1.114 also stated that filing an RCE does not apply to (a) an international application filed under 35 USC §363 before June 8, 1995, (b) an application for a design patent, or (c) a patent under reexamination.
The amended Rule 1.114 states that filing an RCE does not apply to "an international application filed under 35 USC §363 before June 8, 1995, or an international application that does not comply with 35 USC §371." The international application must comply with the requirements of 35 USC §371, including an oath or declaration of the inventor pursuant to 35 USC §115. Therefore, any utility patent application filed in accordance with 35 USC §371 in which a properly executed oath or declaration has not been filed is not eligible for an RCE filing.
As a result of such amendments to Rule 1.114, if a utility patent application filed in accordance with 35 U.S.C. §371 does not comply with the requirements of 35 USC §371, including filing of the inventor's oath or declaration with the USPTO or another requirement under 35 USC §371, then the US national stage application is not eligible for an RCE filing.2 If such a deficiency exists in the application, then an RCE filing may not actually continue the examination, and the application may be considered abandoned. It is unclear how the USPTO will treat applications in which an RCE was filed without first satisfying the requirements of 35 USC §371.
As a matter of caution, oaths or declarations should be submitted early in the US national phase filings to avoid these issues.
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).
2. Note that this situation does not arise if a utility patent application is a bypass application, where a priority claim to a PCT application is made in accordance with 35 USC §120.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.