At Taft, when we are auditing a patent portfolio transferred from another firm, the story often begins like this…

On a day like any other — suddenly, the USPTO sends a notice stating that a patent application had been abandoned. “Jeepers Creepers!”

Files and dockets are frantically searched through to see if any deadlines were missed, but nothing appears amiss. In fact, an allowance appeared imminent in the case.

What happened? It turns out that the patent application is a 371 U.S. national phase application that entered the U.S. without an inventor declaration. However, the fatal act occurred when a Request for Continued Examination (RCE) was filed before the inventor declaration was submitted. Now, the patent application is effectively abandoned.

Even if the examiner and the attorney are unaware, once the USPTO realizes the error, a notice of abandonment soon follows.

What should be done? As soon as the Notice of Abandonment and instructions from the applicant are received, the signed inventor declarations can be obtained and a petition filed to revive the abandoned patent application along with the required fee — addressing all outstanding deficiencies that caused the abandonment. The applicant or representative must also make a statement that the entire delay in filing the required reply from the due date for the required reply until the filing of a grantable petition under 37 CFR 1.137(a) was unintentional. Accordingly, the applicant should promptly address the issue upon notice.

How to avoid this scenario:

• Always confirm or file an inventor declaration before submitting an RCE in a 371 U.S. patent application.
• Consider docketing this submission within the first three months of filing.
• Audit the current docket to catch any 371 U.S. patent applications that are missing inventor declarations.
• Finally, during the docket audit, identify any zombie applications or patents that may be hiding among the living enforceable and pending matters and promptly remedy the issue with the USPTO by addressing the deficiency.