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USPTO Left Hand Doesn’t Know What the Right is Doing: An Unexpected Consequence of Recording Combined Declaration/Assignments

The America Invents Act (AIA) introduced several changes to inventor oath/declaration practice that took effect in 2012.  One such change is the ability to incorporate an inventor’s required declaration statements into an assignment document, thereby reducing the number of documents that must be executed by an inventor in connection with filing a patent application.  If an applicant elects to go this route, a single combined declaration and assignment document can be recorded at the United States Patent and Trademark Office (USPTO) and a copy will be automatically placed in the application’s file wrapper.  It appears to be the case, however, that this automatic copying by the USPTO of the combined declaration and assignment into the file wrapper for an application triggers a Notice of Incomplete Reply if there is an outstanding Notice to File Missing Parts or Notice to File Corrected Application Papers that identifies a deficiency in addition to the lack of an oath/declaration—despite the fact that the applicant has not made any reply to such a notice.

This scenario has now been encountered several times in practice and appears to track the following exemplary timeline: An application is filed that does not include an inventor’s oath/declaration and also has some other deficiency that prompts the USPTO to issue a Notice to File Corrected Application Papers or a Notice to File Missing Parts.  Examples of deficiencies that prompt such a notice can include an omission of required fees, submission of non-conforming drawings, etc.  The notice sets out a period for reply to address the identified deficiencies.  In accord with the post-AIA inventor oath/declaration rules, the notice also indicates that there are missing oaths/declarations, but states that there is no set period for submission of these documents.  Rather, an applicant need only ensure that any oaths/declarations or substitute statements are submitted before the application proceeds to issue.

Upon receipt of such a notice, an applicant begins the process of remedying the identified deficiencies.  This might include ordering formal drawings prepared by a draftsperson, drafting a preliminary amendment, etc.  In addition, an applicant might receive an executed combined declaration and assignment from an inventor.  Having received such a document, an applicant might proceed to record the combined declaration and assignment promptly, even before other parts of a response to a Notice to File Corrected Application Papers or Notice to File Missing Parts are ready for submission (e.g., before formal drawings are received from a draftsperson or before claim amendments are finalized, etc.).

Upon recordation of a combined declaration and assignment, the USPTO automatically places a copy of the document in the Image File Wrapper of the application.  While this action is performed automatically by the USPTO, the insertion of the document into the Image File Wrapper is interpreted elsewhere at the USPTO as an attempted response to the pending Notice to File Corrected Application Papers or Notice to File Missing Parts.  Because the combined declaration and assignment does not address the other identified deficiencies of the application, a Notice of Incomplete Reply is issued, citing the applicant’s “reply” on the date the combined declaration and assignment was recorded and setting out a new period of reply to avoid abandonment.

This peculiarity is ultimately harmless, as an applicant can remedy whatever other deficiencies were originally noted in the Notice to File Corrected Application Papers or Notice to File Missing Parts in a response to the Notice of Incomplete Reply.  Regardless though, no one wants to receive a Notice of Incomplete Reply.  To avoid this kind of unexpected consequence (at least until the USPTO gets its left and right hands talking to one another), applicants should consider refraining from recording any combination declaration and assignment documents prior to submitting a response on the merits to a pending Notice to File Corrected Application Papers or Notice to File Missing Parts.

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