Test takers report question about amending the abstract. Specifically, one test taker reported a question about the International Searching Authority writing someone’s abstract and what could be done to amend it when the applicant didn’t think it was well written. [See PCT - Amendment of Abstract - MPEP 1844.01]
Answer: The International Searching Authority shall establish an Abstract (if missing), and the applicant may within one month from the date of mailing of the international search report, submit comments on the abstract established by the International Searching Authority.
PCT RULE 38 – Missing or Defective Abstract
PCT RULE 38.1. – Lack of Abstract
If the international application does not contain an abstract and the receiving Office has notified the International Searching Authority that it has invited the applicant to correct such defect, the International Searching Authority shall proceed with the international search unless and until it receives notification that the said application is considered withdrawn.
AND
PCT RULE 38.2. – Establishment of Abstract
(a) If the international application does not contain an abstract and the International Searching Authority has not received a notification from the receiving Office to the effect that the applicant has been invited to furnish an abstract, or if the said Authority finds that the abstract does not comply with Rule 8, it shall itself establish an abstract. Such abstract shall be established in the language in which the international application is to be published or, if a translation into another language was transmitted under Rule 23.1(b) and the International Searching Authority so wishes, in the language of that translation.
(b) The applicant may, within one month from the date of mailing of the international search report, submit comments on the abstract established by the International Searching Authority. Where that Authority amends the abstract established by it, it shall notify the amendment to the International Bureau.
“In general, the examiner will have to establish a new abstract if the applicant did not provide an abstract or if the abstract does not comply with PCT Rule 8.”
The answer is different if it does not specifically hinge on a PCT Rules (red herring – International Searching Authority) from MPEP 1800. Generally, USPTO procedure is that the examiner will not supply an abstract if one is absent, but the examiner may revise an abstract if the application is otherwise in a condition of allowance. [See MPEP 608.01(b)]
In 608.01(b) Abstract of the Disclosure
The Office of Initial Patent Examination (OIPE) will review all applications filed under 35 U.S.C. 111(a) for compliance with 37 CFR 1.72 and will require an abstract, if one has not been filed. In all other applications which lack an abstract, the examiner in the first Office action should require the submission of an abstract directed to the technical disclosure in the specification. See Form Paragraph 6.12 (below). Applicants may use either “Abstract” or “Abstract of the Disclosure” as a heading.
Regarding an improper abstract, if the application is otherwise in condition for allowance, the examiner should make any necessary revisions:
In 608.01(b) “Upon passing the application to issue, the examiner should make certain that the abstract is an adequate and clear statement of the contents of the disclosure and generally in line with the guidelines. If the application is otherwise in condition for allowance except that the abstract does not comply with the guidelines, the examiner generally should make any necessary revisions by a formal examiner’s amendment after obtaining applicant’s authorization (see MPEP § 1302.04 rather than issuing an Ex parte Quayle action requiring applicant to make the necessary revisions.”
{ 7 comments… read them below or add one }
Also see MPEP 1826 (“The Abstract”):
This question is from a previous exam:
The answer is (E). MPEP 1826, PCT Rule 38 (38.1 and 38.2).
As to (B), MPEP 608.01(b) states “[t]he abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.”
So, it sounds like your screwed if the RO invites an abstract, but not if they don’t. Does anyone agree?
I got a different version of the question yesterday. It asked “what is the right of the applicant after ISA rewrites the abstract of International appl.?”
The answer I chose was something like this: Applicant may file amendment or comments to the change within 30 days of mailing of ISA documents to the applicant, in return the ISA may or may not enter the amendment.
During the exam, I could not find in MPEP anything supporting “ISA has a choice to decline any amendment”. However, the other selections did not provide the 30 day from the mailing of ISA doc.s part so I think this is the right answer
matt30’s answer is pretty much taken word for word from the PCT rules:
§ 38.3 Modification of Abstract
The applicant may, until the expiration of one month from the date of mailing of the international search report, submit to the International Searching Authority:
(i) proposed modifications of the abstract; or
(ii) where the abstract has been established by the Authority, proposed modifications of, or comments on, that abstract, or both modifications and comments; and the Authority shall decide whether to modify the abstract accordingly. Where the Authority modifies the abstract, it shall notify the modification to the International Bureau.
The question I had on a Dec 2009 (test just taken) was that the practitioner was “dis-satisfied” with the abstract established by the ISA:
And following the question had “what can the practitioner do”
The answer amongst the selections included the phrasing: “within 1 month” the practitioner can submit comments on the abstract.
The other answer that I almost selected dealt with amendments under Article 19 (or something like that) which allows amendments to be entered for the specification.