[Pct] pre-grant protection under 35 U.S.C. § 154(d) -- 371 national phase in USA

[Scott Nielson]

37 CFR 1.215:

  *   (a) The publication of an application under 35 U.S.C. 122(b)<https://mpep.uspto.gov/RDMS/MPEP/current#/current/d0e303054.html##d0e303063>  shall include a patent application publication. The date of publication shall be indicated on the patent application publication. The patent application publication will be based upon the specification and drawings deposited on the filing date of the application, as well as the application data sheet and/or the inventor's oath or declaration. The patent application publication may also be based upon amendments to the specification (other than the abstract or the claims) that are reflected in a substitute specification under § 1.125(b)<https://mpep.uspto.gov/RDMS/MPEP/current#/current/d0e323278.html##d0e323290>, amendments to the abstract under § 1.121(b)<https://mpep.uspto.gov/RDMS/MPEP/current#/current/d0e323020.html##d0e323037>, amendments to the claims that are reflected in a complete claim listing under § 1.121(c)<https://mpep.uspto.gov/RDMS/MPEP/current#/current/d0e323020.html##d0e323123>, and amendments to the drawings under § 1.121(d)<https://mpep.uspto.gov/RDMS/MPEP/current#/current/d0e323020.html##d0e323179>, provided that such substitute specification or amendment is submitted in sufficient time to be entered into the Office file wrapper of the application before technical preparations for publication of the application have begun. Technical preparations for publication of an application generally begin four months prior to the projected date of publication. The patent application publication of an application that has entered the national stage under 35 U.S.C. 371<https://mpep.uspto.gov/RDMS/MPEP/current#/current/d0e307164.html>  may also include amendments made during the international stage. See paragraph (c)<https://mpep.uspto.gov/RDMS/MPEP/current#/current/d0e307164.html##d0e307183>  of this section for publication of an application based upon a copy of the application submitted via the USPTO patent electronic filing system.

Four months to prepare the application for publication is a bit ridiculous. I've seen preliminary amendments filed a month before publication make it in but you cannot count on it. I think a preliminary amendment filed within a week of filing the national phase application will almost certainly be included but there is no guarantee.

If its not included, you can file a request to have it republished (USPTO fee is about $500).


Scott Nielson

801-660-4400

________________________________
From: Pct <pct-bounces at oppedahl-lists.com> on behalf of William Ahmed via Pct <pct at oppedahl-lists.com>
Sent: Tuesday, June 10, 2025 12:01 PM
To: for Users of the Patent Cooperation Treaty <pct at oppedahl-lists.com>
Cc: William Ahmed <ahmed.william at ymail.com>
Subject: [Pct] pre-grant protection under 35 U.S.C. § 154(d) -- 371 national phase in USA

Dear List,
I have a PCT with a national-phase deadline [30 month] this Friday.

My client is concerned about pre-grant protection  under 35 U.S.C. § 154(d) .

If I enter the national stage in the United States THIS WEEK, and then I file a preliminary amendment NEXT WEEK (i.e. after the 30 month deadline), which version of the claims will the USPTO publish.

Does anyone have an idea?

Thanks,
Bill
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