[Patentpractice] Best Practice for Declarations with "The Attached Application" Checked

Thu Apr 11 19:30:20 UTC 2024

I’ve never had a problem with a declaration filed with the “attached” checkbox checked as long as a copy of the application was somewhere in the filing. The only time I’ve ever actually attached the application to the declaration itself was when I’d sent the declaration to the inventors to be signed before the application was filed with that box checked, but they didn’t sign it until after the filing date. In that case, I’ve made the application part of the file with the declaration.

But as a way to deal with DOCX, I don’t know. Let’s say I submit a DOCX application along with a declaration that has a PDF copy attached. I’d worry that the PTO would detach the PDF copy, declare that to be the submitted application, charge the non-DOCX penalty fee, and do the usual stripping of text and OCRing the text back from the PDF copy, rather than using the DOCX file. If they don’t, I suspect they will refuse to consider it the auxiliary PDF, because it wasn’t filed in the special way they require the auxiliary PDF to be filed. And I don’t know that I can incorporate by reference anything from the copy of the application attached to the declaration.

I’m not sure what the PTO will do, but if there’s a way to do something wrong, they seem to be inclined to do it.

Best regards,
Richard A. Schafer | Schafer IP Law
P.O. Box 230081 | Houston, TX 77223
M: 832.283.6564 | richard at schafer-ip.com<mailto:richard at schafer-ip.com>

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Suzannah K. Sundby via Patentpractice
Sent: Thursday, April 11, 2024 1:55 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Suzannah K. Sundby <suzannah at canadylortz.com>
Subject: Re: [Patentpractice] Best Practice for Declarations with "The Attached Application" Checked

Hmm.

I’ve never filed a declaration that doesn’t indicate either the PCT number or the US application number… BUT

I wonder if this is a way to deal with the DOCX bullsh*t… That is, file oath/decs stating and providing the “attached application” and therefore essentially having a PDF version as a backup which one might be able to use and point to separately to fix conversion errors that are uncovered years later, etc…

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
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Washington, DC 20007
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Roger Browdy via Patentpractice
Sent: Thursday, April 11, 2024 2:38 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Roger Browdy <RLBrowdy at browdyneimark.com<mailto:RLBrowdy at browdyneimark.com>>
Subject: Re: [Patentpractice] Best Practice for Declarations with "The Attached Application" Checked

What is the best practice for filing a declaration received for filing with a new case that has the box “This declaration is directed to |X| The attached application” checked.  It seems to me that the declaration is not complete without an application attached thereto.  So I file the declaration with attached copy of the application as one document designated as “Oath or Declaration” (even if it is 122 pages long).

The problem with doing this is that the helpful people at the PTO always seem to unbundle it and call the first page a declaration and the rest as another copy of the specification and claims.

Does anyone think it is permissible to file such a declaration as a 1 page document only without attaching the “attached application” referred to in the document?

Roger

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Bob Barber via Patentpractice
Sent: Thursday, April 11, 2024 10:10 AM
To: For Patent Practitioners. This Is Not for Laypersons To Seek Legal Advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Bob Barber <bobbarber1970 at yahoo.com<mailto:bobbarber1970 at yahoo.com>>
Subject: Re: [Patentpractice] automatically granted petitions available in patent center?

Thanks, I'm so used to going to the mis-named "existing submissions" drop-down menu that I didn't even notice the "petitions" drop-down menu next to it.  And then I found they're available below, on the PC page itself:

[Inline image]

On Thursday, April 11, 2024 at 03:56:31 PM GMT+3, Melanie Murdock <mmurdock at texaspatents.com<mailto:mmurdock at texaspatents.com>> wrote:

Hi Bob,

If you’re asking about the ePetitions, they are available in Patent Center for preparation/submission by a registered practitioner only.  Sponsored support staff are not allowed to do these, although our attorney usually logs in and does a screenshare with the paralegal to make sure nothing gets overlooked.  Below is a screenshot I made for our attorneys awhile back.

[A screenshot of a computer  Description automatically generated]

I hope this helps.

Melanie

Melanie Murdock

Sr. Paralegal/Administrator

[A close-up of a logo  Description automatically generated with medium confidence]

The information contained in this communication is confidential, may be attorney-client privileged and/or patent agent-client privileged, may constitute inside information, and is intended only for the use of the addressee.   Unauthorized use, disclosure or copying of this communication or any part thereof is strictly prohibited and may be unlawful.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Bob Barber via Patentpractice
Sent: Thursday, April 11, 2024 7:47 AM
To: For Patent Practitioners. This Is Not for Laypersons To Seek Legal Advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Bob Barber <bobbarber1970 at yahoo.com<mailto:bobbarber1970 at yahoo.com>>
Subject: [Patentpractice] automatically granted petitions available in patent center?

I apologize in advance if I missed a discussion on this, but were any of the automatically granted petitions that used to be available in EFS carried forward into EFS, and if so, how does one file them? I haven't found them in PC - it appears that all petitions are now decided by people.
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