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

[David Boundy]

I haven't looked at these regs.   Is there an affirmative duty reg: "The
application will be complete if the applicant files x, y, and z."  Or
something like that.

>From time to time when I get a confusing request, I file a paragraph that
says something like

The examiner requested such-and-such, but cited no reg that requires
such-and-such.  37 CFR 1.495 requires x, y, and z, but not [whatever he's
asking for].   Applicant has filed x, y, and z.

When all parties work within the written rules, everyone knows what to
expect of each other.  In contrast, when one side improvises, it's
impossible for the other to know precisely what teh problem is that needs
to be rectified.  Without a common understanding of the problem, it's
impossible for the other to know whether what is available to offer is
enough.  The International Bureau (IB) had already provided a copy of the
application (and, presumably, an XML text capture) to the USPTO -- if the
most-formal copy known in patent law is not sufficient, what is the
examiner's remaining concern?  Applicant is happy to scratch the examiner's
itch, but the examiner has to identify exactly what and where it is.  What
can an applicant provide that would scratch it any better than the IB has
already done?

On Wed, Jul 31, 2024 at 6:57 PM Patent Lawyer via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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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