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Inventor’s Declaration Necessary to File RCE in 371 Applications - Intellectual Property News

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Intellectual Property News


Posted on: May 4, 2015

By Marcelo S. Copat and William S. Meyers, Faegre Baker Daniels LLP

The United States Patent and Trademark Office (“Office”) is revising the rules of practice to implement Title I of the Patent Law Treaties Implementation Act of 2012 (‘‘PLTIA’’). Before the Leahy-Smith America Invents Act (“AIA”) the inventor’s oath or declaration had to be filed within a shortened statutory period after filing the patent application. The AIA eased the timing requirement by permitting filing of the oath or declaration anytime up to the date of receipt of a Notice of Allowance. While not advisable to wait, circumstances sometimes make it difficult to obtain the signed declarations quickly, and the eased timing requirements were welcomed by many. Under the new rules, a request for continued examination (“RCE”) could be filed before the inventor’s oath or declaration.

In Final Rules published on April 2, 2015, the Office revised 37 CFR 1.114(e), which lists scenarios wherein an RCE may not be filed. The revised rule now includes “(3) … an international application that does not comply with 35 U.S.C. 371.” See 80 FR 17930 (April 2, 2015)  One of the requirements of 35 U.S.C. 371 is filing an executed inventor oath or declaration. See 35 U.S.C. 371(b)(4). Thus, although a 371 national stage application may be filed without an executed declaration, an executed declaration must be filed before filing an RCE.

The revision of 37 CFR 1.114(e) becomes effective May 13, 2015.

This post was written by Marcelo S. Copat and William S. Meyers of Faegre Baker Daniels LLP. If you would like to submit content or write an article for the Intellectual Property Section page, please email Rachel Beachy at rbeachy@indybar.org.

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