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

Fri Apr 12 06:14:21 UTC 2024

On 4/11/2024 3:14 PM, Randall Svihla via Patentpractice wrote:
>
> 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.
>
I have taken the view, based upon 35 USC § 363, that the two application 
numbers are legal equivalents of each other.

    An international application designating the United States shall
    have the effect, from its international filing date under article 11
    of the treaty, of a national application for patent regularly filed
    in the Patent and Trademark Office.

> What if you file a bypass continuation of the PCT application rather 
> than a 371 National Stage application?
>
Many assignments contain language encompassing "continuations thereof" 
in which case taking 35 USC § 363 into account, the assignment with the 
PCT number ought to cover the bypass continuation.

But let's suppose the assignment fails to contain such language.  It 
probably still recites "the invention disclosed therein" in which case 
that still ought to cover divisionals and continuations.

> 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.
>
> ------------------------------------------------------------------------
>
> *From:*Patentpractice <patentpractice-bounces at oppedahl-lists.com> on 
> behalf of Suzannah K. Sundby via Patentpractice 
> <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>
> *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 + lortzLLP <http://www.canadylortz.com/>
>
> 1050 30th Street, NW
>
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>
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>
> suzannah at canadylortz.com <mailto:suzannah at canadylortz.com>
>
> www.canadylortz.com <http://www.canadylortz.com/>
>
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> *From:*Patentpractice <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>
> *Cc:* Roger Browdy <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> *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>
> *Cc:* Bob Barber <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> 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 
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> communication or any part thereof is strictly prohibited and may be 
> unlawful.
>
> *From:*Patentpractice <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>
> *Cc:* Bob Barber <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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