{2:20 minutes to read} Since the implementation of the America Invents Act in 2012, applicants have technically been able to delay the submission of an executed inventor’s declaration in a U.S. patent application until payment of the issue fee. However, a rule published on April 2, 2015, makes it now risky to delay the filing of the executed inventor’s declaration in a U.S. national stage application.

The Federal Register Notice that was published on April 2, 2015, included a change to 37 CFR 1.114, which applies to U.S. national stage applications. The change states that a Request for Continued Examination (RCE) cannot be filed in such national stage applications unless the requirements of 35 USC § 371 (which include the submission of an executed inventor’s declaration) have already been satisfied.

Therefore, the United States Patent and Trademark Office (USPTO) is now revising the requirement of Rule 114 to clarify that the RCE practice that was added in the America Invents Act does not apply to international applications until the requirements of 35 USC § 371 are fully complied with (a 35 USC § 371 requires the filing of an executed inventor’s declaration in the international application, as well as the payment of the basic national fee and the translation in English, if the application is filed in another language).

That is: until the executed inventor’s declaration is filed, an RCE filing might not actually continue the examination, and the application might be considered abandoned.

It is unclear how the USPTO will treat an application in which an RCE was filed, without first having satisfied all of 35 USC § 371’s requirements. Given this uncertainty, it is advisable to submit the executed inventor’s declaration as early as possible to avoid having to face these issues.

Silvia Salvadori, PhD.
www.salvadorilaw.com
www.salvadorilaw.com/blog
silvia@salvadorilaw.com
(212) 897-1938