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

[Rick Neifeld]

You said "The patent examiner now requires a copy of the [PCT] 
specification. ... What he seems to want is a copy of the specification 
that is not the PCT publication. ... 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."

You did not say the examiner asked for a Word file.
I note that the PCT application, as you filed it, is available from 
WIPO.  I would just point that out to the examiner or do the examiner 
the courtesy of downloading and emailing it to him.





Best regards, Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States
Mobile: 1-7034470727
Email: richardneifeld at gmail.com
Web: https://neifeld.com/
This is a NOT confidential communication of counsel. If you are not the 
intended recipient, delete this email and notify the sender that you did so.

On 7/31/2024 7:09 PM, Randall Svihla via Patentpractice wrote:
>
> 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.
>
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