[Pct] Ex Officio Changes to the Request form

[Carl Oppedahl]

What he asked.  Sometimes you get the US practitioner whose client is 
located in (say) Canada and the US practitioner hopes very much to 
collect the money that would normally get paid to Canadian patent 
counsel, so the US practitioner tries to tough it out and make use of 
RO/US even though RO/US is not "competent" to be a Receiving Office for 
that Canadian company.

If the US practitioner were using ePCT to generate the Request and zip 
file, then the US practitioner would get spanked for trying to do this, 
and would not be able to proceed.  The US practitioner would then 
eventually muddle through things and would find that the US practitioner 
can file in RO/IB (the cost being that the US practitioner is demoted 
from "agent" status and gets moved down to mere "address for 
correspondence" status).

Of course to make this work, the US practitioner needs to have planned 
ahead and done whatever is needed so far as FFLs are concerned.  But if 
the invention was not made in the US, then there is no need to worry 
about FFLs.  If the client is Canadian, then it might work out that the 
invention was not made in the US.

To add to Paul's question.  I wonder if the original poster did use ePCT 
to generate the Request and the zip file?

On 11/27/2023 4:04 PM, McBean, Paul via Pct wrote:
>
> With regard to the “inventors as applicants” change, is it possible 
> that they were made applicants because your original applicant 
> (whoever that is) cannot be an applicant for all designated states 
> (they are ineligible to be an applicant in the US and file at the 
> RO/US)?  I think the USPTO would reject your POA at that point since 
> the inventors (now applicant / inventors) have not (I assume) signed 
> the POA.
>
> Paul
>
> *From:* Pct <pct-bounces at oppedahl-lists.com> *On Behalf Of *Timothy 
> Snowden via Pct
> *Sent:* Monday, November 27, 2023 5:50 PM
> *To:* Russell Nugent via Pct <pct at oppedahl-lists.com>
> *Cc:* Timothy Snowden <timothy at thompsonpatentlaw.com>
> *Subject:* Re: [Pct] Ex Officio Changes to the Request form
>
> Re: #3 on drawings -- I usually politely point out that the USPTO 
> downgraded the drawings, and that we are re-submitting them for 
> convenience sake. You can submit the repsonse via ePCT to avoid USPTO 
> image damage again. I've never had that response rejected.
>
> On 11/27/2023 4:26 PM, Russell Nugent via Pct wrote:
>
>     Dear Group,
>
>     I filed a PCT application in the USPTO (client's decision not
>     mine) and I have gotten some confusing correspondence back.  The
>     USPTO made ex officio changes that I can object to.  The first
>     change was that all of the inventors that were listed as Inventors
>     only have been changed to inventors and applicants.  Can anyone
>     think of a reason they would decide on their own end that the
>     inventors are applicants too?
>
>     They then rejected my POA as not being signed by all of the
>     applicants.
>
>     In addition, what is the current thinking/solution to the images
>     being degraded by the USPTO.  They objected to the drawings as not
>     being clear, and the drawings that I downloaded from Patent Center
>     are of poor quality.  Resubmitting the drawings that are good
>     quality will presumably not fix this issue.  Suggestions and
>     advice please (other than to file in WIPO next time)?
>
>     Thanks,
>
>     *RUSSELL D. NUGENT*
>
>     /Attorney at law/
>
>     *1904 Eastwood Road, Suite 310A*
>
>     *Wilmington, NC 28403*
>
>     (p) 910.899.0236 | (f) 888.290.7817
>
>     _http://www.humphriesfirm.law <http://www.humphriesfirm.law>_
>
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