[Patentpractice] Am I losing my mind?

[Randall Svihla]

Hi, Carl

When you are relying on a certified copy of a foreign priority application filed in a parent application or other application, 37 CFR 1.55(h) requires you to identify the other application:

(h) Certified copy in another U.S. patent or application.  The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application will be considered satisfied in a reissue application if the patent for which reissue is sought satisfies the requirement of this section for a certified copy of the foreign application and such patent is identified as containing a certified copy of the foreign application.  The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application will also be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and such prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.

Nevertheless, it seems that the Examiner will usually go on a treasure hunt to see if he can find a certified copy in another application.

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: Tuesday, May 21, 2024 3:08 PM
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] Am I losing my mind?


I wonder if you are getting the inventor declaration mixed up with the certified copy of the priority application.

When you file a CIP or divisional or continuation, you get a free pass on having to provide a certified copy of the priority application, if it was already provided in the parent case.  The Examiner is required to go on a treasure hunt to see whether the certified copy can be found in the parent case.

There is no such free pass for inventor declarations.  Why it is different for one thing and the other, I don't know.
On 5/21/2024 1:08 PM, Richard Straussman via Patentpractice wrote:
All,

    I filed a continuation (not a CIP or divisional) off of an allowed parent application.  We did not file a copy of the declaration from the parent application, as I have never done so before.  We have now received a Notice of Missing Parts because no declaration was filed with the application.  I know that we can file it per MPEP 602.05 (and maybe it is better practice to do so), but I am not aware of a requirement in that regard.  Am I wrong?  Or is the PTO entirely off base?

    Thanks in advance!
--
Richard Straussman
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