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

Thu Apr 11 21:14:50 UTC 2024

Hi, Sharon

Do you record the assignment with the PCT number against the U.S. application number? But then the assignment doesn't list the U.S. application number as required by the rules.

What if you file a bypass continuation of the PCT application rather than a 371 National Stage application?

Best regards,

Randall S. Svihla
NSIP Law

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Sharon Rubin via Patentpractice
Sent: Thursday, April 11, 2024 5:04 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Sharon Rubin <Sharon at gjip.com>
Subject: Re: [Patentpractice] Best Practice for Declarations with "The Attached Application" Checked

We've always done this too.

If the client returns the signed declaration after we've filed the application, we resend an unsigned declaration with the application on it  for them to sign.  Which can mean another long wait for its return.

For a 371 declaration (if none was filed with the PCT) , we use the PCT # on the declaration form, whether filing concurrently with the 371 application, or after it has been filed and has received a US application #.

Sharon

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of pbrisky--- via Patentpractice
Sent: Thursday, April 11, 2024 3:15 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: pbrisky at fujitsu.com
Subject: Re: [Patentpractice] Best Practice for Declarations with "The Attached Application" Checked

We do this all the time.  We consider the "attached application" to be anything listed on the E-filing acknowledgement. Any declaration filed after that has the app number on it.

Pamela Brisky
Senior Patent Paralegal
FUJITSU INTELLECTUAL PROPERTY CENTER
Fujitsu North America, Inc.
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Suzannah K. Sundby via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Sent: Thursday, April 11, 2024 2:54:52 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: Suzannah K. Sundby <suzannah at canadylortz.com<mailto: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
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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]

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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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