[Patentpractice] Large Tables ASCII Format; Objecting to Post Allowance Drawing Correction Requirement

[Carl Oppedahl]

Yes in our office this comes up about once every six months.  We file a 
paper saying what you said.  It always works.

It is very satisfying each time it works.

Each time I present a three-day PCT live in-person class (the next one 
will be this coming January or so), I have an hour-long section in which 
I review the many factors that might prompt a filer to choose one way or 
another as between bypass continuation or national phase.

And I just now realized this is yet another factor.  If you pick bypass, 
then you are vulnerable to these last-minute demands to prepare and file 
new drawings.  Each of which risks a later accusation that new matter 
supposedly got added.

In contrast, if you pick national-phase, then you can tell them to pound 
sand when they send you a last-minute demands to prepare and file new 
drawings.

So thank you, Roger, you have triggered an improvement to that section 
of the class.

Carl

On 10/29/2025 9:32 AM, Roger Browdy wrote:
>
> The below posting has a very interesting reference to MPEP 1893.03(f), 
> which says that the USPTO may not impose drawing requirements during 
> examination of a national stage appln beyond those imposed by the 
> PCT.  My question is, has anyone objected to a Notice to file 
> Corrected Application Papers after allowance asking that the Notice be 
> withdrawn on this grounds?  I am interested in the success rate for 
> such an argument.
>
> *Roger L. Browdy*
>
> Partner
>
> _____________________________________________
>
> *FisherBroyles, LLP*
>
> direct: +1 202-277-5198
>
> _roger.browdy at fisherbroyles.com_
>
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>
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>
> *From:*Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On 
> Behalf Of *Carl Oppedahl via Patentpractice
> *Sent:* Monday, June 2, 2025 3:11 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] Large Tables ASCII Format
>
> On 6/2/2025 12:48 PM, Suzannah K. Sundby via Patentpractice wrote:
>
>     Facts:
>
>     National Phase application was filed with pages and pages of tables
>
>     Application allowed.
>
>     Got a Notice to Correct Application Papers because font of Tables
>     too small
>
>     Increasing the font size makes the total pages close to 900 pages,
>     which requires 11 ADDITIONAL units of application size fees from
>     what was previously paid.
>
>     I have the tables in ASCII format (prepared for a CON).
>
>     Question: In response to the Notice, can we amend the
>     specification to delete the embedded tables and provide in ASCII
>     format (by amending the specification to incorporate the ASCII
>     tables)?
>
>     I understand extra page fees are calculated as 3 KB = 1 page,
>     which significantly decreases the amount of fees to something like
>     2 additional units of application size fees.
>
>     I called patent publications (waited over an hour), they
>     transferred me to “case resolution team” for post-allowance stuff,
>     who simply said they don’t know.  I thus called OPLA and got no
>     one and hence left a message hours ago.
>
> I wonder if MPEP § 1893.03(f) would be of any help?  Here is what I 
> filed recently in one of my national-phase cases.
>
>     Request that Notice to File Corrected Application Papers be withdrawn
>     The undersigned has now received a Notice to File Corrected
>     Application Papers dated May 28, 2025.
>     It is signed by <redacted> in the Publication Branch.
>     The Notice says "The figure label for FIG. 6 is not oriented in
>     the same direction as the figure." The
>     Notice purports to require that the applicant respond with an
>     amendment to the drawings.
>     The Publication Branch is requested to comply with MPEP §
>     1893.03(f) which says:
>
>         The USPTO may not impose drawing requirements during the
>         examination of a national stage
>         application beyond those imposed by the Patent Cooperation
>         Treaty ( e.g., PCT Rule 11).
>
>     The present application is a national phase application. It is
>     thus apparent that the Notice to File
>     Corrected Application Papers was improper.
>     So as to comply with MPEP § 1893.03(f), the Publication Branch is
>     requested to withdraw the Notice
>     to File Corrected Application Papers.
>     Respectfully submitted,
>
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