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

Thu Aug 1 17:36:06 UTC 2024

For anyone interested… look at the file wrapper for 15/321,777, which is the case that I had majorly screwed up.  It was a last-minute filing right before Christmas (haste makes waste).

While I don’t like/want to publicize my mistakes, I am human and I think many might benefit from this…

Particularly, in the file wrapper, see:

PCT legal’s letter notifying me of the screw up
04/13/2017      M327   Miscellaneous Communication to Applicant - No Action Count

My Petition
            04/18/2017      PET.PCT         Petition for review by the PCT legal office

The Granted Petition
05/01/2017      PET.DEC.OIPE          Petition decision routed to the Office of Patent Application Processing(OPAP) to act on the decision or continue prosecution

Note, I filed the first page of the PCT publication, the IB308(second), and IB304.  I did not file any specification, etc.  (The USPTO automatically retrieved such from WIPO.)

FWIW…

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Dan Feigelson via Patentpractice
Sent: Thursday, August 1, 2024 9:52 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Dan Feigelson <djf at iliplaw.com>
Subject: Re: [Patentpractice] National phase under 371 -- what's required?

I'm afraid I don't follow the logic there. How does filing a copy of the published PCT help you avoid a petition to revive?

There are two points for identifying the PCT application by application number: on the ADS, and in the screen in EFS where the PTO asks for the PCT application number. For some reason the PTO gives deference to what's entered in EFS, even though (a) the ADS contains additional identifying information, like the names of the inventors, the name of the assignee/applicant (usually), and the priority applications, making it easy to cross-check if the application number is correct, and (b) the Regs say that the ADS is supposed to control.  So if you make a mistake entering the PCT number in EFS, but you've got it right in the ADS, you have what to point to about the correct number - and you have the law behind you, even though the PTO doesn't care about the law.

But whether you submit a copy of the published PCT, or identify the PCT number in an ADS, how does either of those thing get you around a petition to revive if you enter the PCT number incorrectly in EFS and the PTO (illegally) chooses to rely on that information instead of the information you've provided elsewhere in the file? As far as the PTO is concerned, you didn't enter the national phase for the application you wanted to enter. So from the PTO's perspective, you missed your date and need to petition to revive.

What I did miss here? How does filing a copy of the published PCT save you the need to petition to revive?

(A separate but related question is, What happens to the applicant whose application number you mistakenly entered when he wants to file a 371?)

Dan

On Thu, Aug 1, 2024 at 3:58 PM Randall Svihla via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> 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<mailto: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<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?

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:

[cid:image001.png at 01DAE417.6D515B40]

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto: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<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?

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<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: Carl Oppedahl <carl at oppedahl.com<mailto: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…

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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<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: Patent Lawyer <patentlawyer995 at gmail.com<mailto: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<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Reply-To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Date: Wednesday, July 31, 2024 at 6:59 PM
To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Patent Lawyer <patentlawyer995 at gmail.com<mailto: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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