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

[John Hammond]

I like that characterization of the Reply.  So much so that I can see, “The Applicant files herewith a Petition to Pound Sand.”

 

John

 

From: Patentpractice [mailto:patentpractice-bounces at oppedahl-lists.com] On Behalf Of Carl Oppedahl via Patentpractice
Sent: Wednesday, October 29, 2025 2:20 PM
To: For patent practitioners. This is not for laypersons to seek legal advice.
Cc: Carl Oppedahl
Subject: Re: [Patentpractice] Large Tables ASCII Format; Objecting to Post Allowance Drawing Correction Requirement

 

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is, has anyone objected to a Notice to file Corrected Application Papers after allowance asking that the Notice be withdrawn on this grounds?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

www.fisherbroyles.com <http://www.fisherbroyles.com/> 

  

The information contained in this e-mail message is only for the personal and confidential use of the intended recipient(s). If you have received this communication in error, please notify us immediately by e-mail, and delete the original message.

 

 

 

From: Patentpractice  <mailto:patentpractice-bounces at oppedahl-lists.com> <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.  <mailto:patentpractice at oppedahl-lists.com> <patentpractice at oppedahl-lists.com>
Cc: Carl Oppedahl  <mailto:carl at oppedahl.com> <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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