[Patentpractice] National phase under 371 -- what's required?
Carl Oppedahl
carl at oppedahl.com
Thu Aug 1 12:39:18 UTC 2024
what she said
On 8/1/2024 6:17 AM, Suzannah K. Sundby via Patentpractice wrote:
>
> Of course, file the translation as the spec, claims, abstract and
> drawings… but no need to file a copy of the PCT publication (or even
> the PCT application as filed)… the USPTO automatically obtains those
> directly from WIPO _so long as the US indicated on the IB308(second)
> form_:
>
> 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
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>
> *From:*Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Randall Svihla via Patentpractice
> *Sent:* Thursday, August 1, 2024 8:12 AM
> *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?
>
> Almost all of U.S. National Stage applications we file require an
> English translation because the PCT application was filed in a foreign
> language.
>
> Best regards,
>
> Randall S. Svihla
>
> NSIP Law
>
> Washington, D.C.
>
> *From:*Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Carl Oppedahl via Patentpractice
> *Sent:* Thursday, August 1, 2024 6:45 AM
> *To:* For patent practitioners. This is not for laypersons to seek
> legal advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Carl Oppedahl <carl at oppedahl.com>
> *Subject:* Re: [Patentpractice] National phase under 371 -- what's
> required?
>
> 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
>
> _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>
> *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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