[Patentpractice] National phase under 371 -- what's required?

Thu Aug 1 00:18:58 UTC 2024

Hi, Suzannah

Yes, you should always file a copy of the PCT application (or at least the first page like you do) in case you type the wrong PCT number into Patent Center when you are filing the application.

What our anonymous friend Patent Lawyer apparently did is file a copy of the PCT publication and split it up into a multi-part document coded as Specification, Claims, Abstract, and Drawings, but it appears the USPTO changed the coding to "Documents submitted with 371 (National Stage) Applications" and didn't a copy of the Specification, Claims, Abstract, and Drawings into the image file wrapper.  At least that's my best guess.

From: Suzannah K. Sundby <suzannah at canadylortz.com>
Sent: Wednesday, July 31, 2024 8:13 PM
To: Randall Svihla <rsvihla at nsiplaw.com>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Subject: RE: [Patentpractice] National phase under 371 -- what's required?

No.  The USPTO automatically gets the files from WIPO.  I file only the first page of the PCT publication bc that info once saved me big time when I was filing multiple related 371 entries on the same day and I accidentally mixed up some of the papers.  I file an interim priority doc, the IB304, and IB308(second) forms to force myself to double check the availability of the PCT such that a copy is not needed and check thay all is well w the priority doc.

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
T: 202.486.8020
F: 202.540.8020
suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
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From: Randall Svihla <rsvihla at nsiplaw.com>
Sent: Wednesday, July 31, 2024 8:01 PM
To: Suzannah K. Sundby <suzannah at canadylortz.com>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Subject: RE: [Patentpractice] National phase under 371 -- what's required?

But when you do that, is there a Specification, Claims, Abstract, and Drawings in the image file wrapper?

From: Suzannah K. Sundby <suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>>
Sent: Wednesday, July 31, 2024 7:59 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: Randall Svihla <rsvihla at nsiplaw.com<mailto:rsvihla at nsiplaw.com>>
Subject: RE: [Patentpractice] National phase under 371 -- what's required?

If the PCT is in English, I don't file a copy when entering the US national phase.  Never had an Examiner asking for a copy of the specification to be filed...

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
T: 202.486.8020
F: 202.540.8020
suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
Confidentiality Notice:  This message is being sent by or on behalf of a lawyer.  It is intended exclusively for the individual or entity to which it is addressed.  This communication may contain information that is proprietary, privileged or confidential, or otherwise legally exempt from disclosure.  If you are not the named addressee, you may not read, print, retain, copy, or disseminate this message or any part.  If you have received this message in error, please notify the sender immediately by e-mail and delete all copies of the message.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Randall Svihla via Patentpractice
Sent: Wednesday, July 31, 2024 7:21 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: Randall Svihla <rsvihla at nsiplaw.com<mailto:rsvihla at nsiplaw.com>>
Subject: Re: [Patentpractice] National phase under 371 -- what's required?

Yes, that's the way the USPTO lists a PCT publication filed with a National Stage application.

But does image file wrapper contain documents coded as Specification, Claims, Abstract, and Drawings?  If not, you need to call the PCT Help Desk and ask them about this because this is not normal.  It appears that the USPTO changed the coding on the PCT publication you uploaded.  It seems to me you should not have split it up and coded it as you did.  The PCT people did not process this properly.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Patent Lawyer via Patentpractice
Sent: Wednesday, July 31, 2024 7:07 PM
To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Patent Lawyer <patentlawyer995 at gmail.com<mailto:patentlawyer995 at gmail.com>>
Subject: Re: [Patentpractice] National phase under 371 -- what's required?

What I failed to mention is that the PCT publication is listed in the IFW as:

"Documents submitted with 371 (National Stage) Applications"

But when I filed the application, I listed the Abstract, Specification, drawings, and claims by page ranges, and this is correctly reflected on the PTO's acknowledgement receipt.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Reply-To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Date: Wednesday, July 31, 2024 at 6:59 PM
To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Patent Lawyer <patentlawyer995 at gmail.com<mailto:patentlawyer995 at gmail.com>>
Subject: [Patentpractice] National phase under 371 -- what's required?

I filed a national phase application in the USPTO under 35 USC 371.

The International Bureau (IB) had already provided a copy of the application to the USPTO, but with the original filing I provided a copy of the published application anyway.

The patent examiner now requires a copy of the specification. He has examined the application using the PCT publication. I informed him that under the rules, I was not required to file a copy of the specification if the IB had already communicated it to the USPTO, which they had. However, I had already provided a copy. He mentioned that he always receives them, to which I responded that I don't always file them if it's not required.

What he seems to want is a copy of the specification that is not the PCT publication.

When I asked the examiner why he needed it, the reason he came up with is that it makes it easier for the publication team to make corrections.

He did not request a DOCX file. I do have the original Word file, but I don't see any reason to file it, especially since I amended the specification upon entry to include a reference in the first paragraph to the PCT application.

He agreed that I could defer this filing.   I don't want to do the work of filing a substitute specification.

The examiner's office action on the merits is thorough and detailed, and he has a good understanding of the art, the invention, and, of course BRI.  My only issue is this requirement to file the specification in some other form than the office already has.

Under 37 CFR 1.495, the requirements for entering the national phase include:
(1) A copy of the international application, unless it has been previously communicated by the International Bureau or unless it was originally filed in the United States Patent and Trademark Office; and
(2) The basic national fee (see § 1.492(a)).

Am I correct in my understanding and citing the correct rule?

Any suggestions for response.
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