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

Thu Aug 1 10:44:35 UTC 2024

And what Suzannah describes (the filer having the self-control to avoid 
handing in a copy of spec-claims-abst-drawings when entering US national 
phase) is actually a Best Practice.  It is a Best Practice to have this 
self-control because it avoids the possible mistake of handing in /*the 
wrong spec-claims-abst-drawings.*/

The sole exception being that if (a) the US national-phase entry is 
being done so early that the PCT publication has not yet happened, and 
(b) the US was not the RO, then yes you do have to file a copy.

On 7/31/2024 5:59 PM, Suzannah K. Sundby via Patentpractice wrote:
>
> 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
>
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> *From:*Patentpractice <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>
> *Cc:* Randall Svihla <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> *On 
> Behalf Of *Patent Lawyer via Patentpractice
> *Sent:* Wednesday, July 31, 2024 7:07 PM
> *To:* Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
> *Cc:* Patent Lawyer <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> on 
> behalf of Patentpractice Patentpractice 
> <patentpractice at oppedahl-lists.com>
> *Reply-To: *Patentpractice Patentpractice 
> <patentpractice at oppedahl-lists.com>
> *Date: *Wednesday, July 31, 2024 at 6:59 PM
> *To: *Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
> *Cc: *Patent Lawyer <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.
>
> -- Patentpractice mailing list Patentpractice at oppedahl-lists.com 
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com 
>
>
>
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