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

[Carl Oppedahl]

What he said.

The practitioner who is entering the US national phase is not required 
to hand in specification, claims, abstract or drawings. (The sole 
exception being a national phase entry that is so early that the PCT 
publication has not yet occurred, in a case where the US was not the 
RO.  In that exceptional case, yes, you are required to hand in 
spec-claims-abst-drawings plus the Request.)

In the case being discussed here, we learn from the Original Poster that 
the OP did hand in spec-claims-abst-drawings.  The OP was not required 
to do so, and doing so runs the risk of accidentally handing in /*the 
wrong spec-claims-abst-drawings*/. But what's done is done and it sounds 
as though the OP avoided the problem of accidentally handing in the 
wrong spec-claims-abst-drawings which is good news.

 From the point of view of minimizing future professional liability 
claims against the practitioner, it is of course wonderful news that the 
practitioner is not required to hand in a DOCX version of the 
spec-claims-abst and will not be charged the non-DOCX penalty.

Yes of course if the PCT pub was in some non-English tongue, the 
practitioner will be required to hand in a translation into English, but 
that is not at all the same thing as what we are talking about here.

But no, the Examiner is flat wrong to hold the view that the Examiner 
can require the practitioner to hand in the spec-claims-abst in some 
other format than what is already in the application file.

On 7/31/2024 5:09 PM, Randall Svihla via Patentpractice wrote:
>
> Yeah, you don't have to file this.We always file a copy of the 
> application and a copy of the PCT publication.The USPTO splits up a 
> copy of the PCT publication into specification, claims, abstract, and 
> drawings and puts them in the image file wrapper.
>
> The Examiner's reason that the non-PCT publication version of the 
> application makes it easier for the publication team to make 
> corrections is complete and total made-up b.s. How would he know what 
> the publication team does?
>
> *From:*Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On 
> Behalf Of *Patent Lawyer via Patentpractice
> *Sent:* Wednesday, July 31, 2024 6:49 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.
>
>
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