[Patentpractice] National phase under 371 -- what's required?
Carl Oppedahl
carl at oppedahl.com
Thu Aug 1 16:08:05 UTC 2024
Inspired by the listserv member (thank you Orvis PC) I have added
Feature Request FR55
<https://patentcenter-tickets.oppedahl.com/patentcenter-feature-requests/#FR55>.
I note that of the 54 Patent Center feature requests that have been
outstanding now for over a year, precisely /*zero of them*/ have been
implemented thus far.
On 8/1/2024 9:59 AM, Carl Oppedahl via Patentpractice wrote:
>
> 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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