[Patentpractice] National phase under 371 -- what's required?
Carl Oppedahl
carl at oppedahl.com
Thu Aug 1 15:59:57 UTC 2024
The listserv member is, I think, making a sly reference to ePCT. When
you enter, say, a priority application number into ePCT, it
automatically runs off to DAS and cross-checks the digits that you
entered against the (hopefully) identical digits that are already in the
DAS system. If they match, you get a smiley face from ePCT. If they
fail to match, you get a frowny face from ePCT. The alert filer who gets
a frowny face from ePCT can then look to see whether (for example) a
couple of digits got transposed. The validation goes so far as to
cross-check the application number and the (purported) filing date and
the two-letter code for the office where the filer says the priority
application was filed.
Used to be that the public face of PCT at the USPTO was Mike Neas.
Later he got promoted to some other part of the USPTO and now he does
not do PCT any more. But shortly before his promotion, he said that he
had been urging the IT people to add a feature to EFS-Web so that when
the filer enters the PCT number into the first screen of EFS-Web, it
would ... wait for it .... automatically run off to Patentscope and
cross-check the digits that you entered against the (hopefully)
identical digits that are already in Patentscope. If they match, you
get a smiley face from EFS-Web. If they fail to match, you get a frowny
face from EFS-Web. Not only that, what he was asking the IT people
included ... wait for it ... would they please display the invention
title and applicant name and first inventor name. So the filer could
get tipped off if the filer had entered an incorrect PCT number.
On 8/1/2024 9:47 AM, Orvis wrote:
> If only there was a way for software filing systems to do error
> checking when application numbers and other data are entered online.
>
> Aug 1, 2024 11:16:24 AM Carl Oppedahl via Patentpractice
> <patentpractice at oppedahl-lists.com>:
>
> Normally the USPTO's PCT Help Desk is right about just about
> everything. But many listserv members are well aware, from
> painful personal experience, that if the wrong PCT number was
> entered into EFS Web, it is impossible to fix this for free. It
> does not matter now many times the not-wrong PCT number appeared
> somewhere else in the filing package. If the wrong PCT number was
> entered into that first EFS-Web screen, then the only way to get
> it corrected is to pay lots of money to the USPTO.
>
> Let me say this another way. If the wrong PCT number was entered
> into that first EFS-Web (now Patent Center) screen, and if you
> later feel you should be able to get the mistake corrected without
> having to pay money to the USPTO, you will not succeed. It does
> not matter whether you can point to one other place, or even a
> dozen other places, where the not-wrong PCT number appeared. Not
> in a copy of the first page of the PCT pub. Not in an ADS. Not
> in a cover letter. No. If the place where you made the mistake
> was in that first screen of EFS-Web (now Patent Center), then it
> is too bad, so sad, you have to pay money to the USPTO to get them
> to fix your mistake.
>
> I suppose maybe what the USPTO PCT Help Desk might have been
> getting at is, if the attempt at a US national-phase entry were to
> turn out to be a total and complete failure, then you might find
> that your only path forward is the "petition to revive". And yes
> the government fee for the petition to revive is more dollars than
> the government fee for "please correct my mistake that I made on
> the first screen of EFS-Web". But even so, the mere presence of
> the not-wrong PCT number in, say, the ADS will be more than
> sufficient to do the job.
>
>
> On 8/1/2024 6:56 AM, Randall Svihla via Patentpractice wrote:
>>
>> The PCT Help Desk recommended that we file a copy of the PCT
>> publication in case the wrong PCT number was entered into EFS Web
>> (now Patent Center) to avoid the need to file an expensive
>> petition to revive the international application with respect to
>> the U.S.
>>
>> *From:*Suzannah K. Sundby <suzannah at canadylortz.com>
>> *Sent:* Thursday, August 1, 2024 8:18 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?
>>
>> 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 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>
>> *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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