Comments on: Q) PCT (MPEP 1800/600, Amending the Abstract) http://mypatentbar.com/2007/05/05/q5-amending-the-abstract/ Patent Bar Review and Study Guide Wed, 08 Sep 2010 20:43:39 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: AD http://mypatentbar.com/2007/05/05/q5-amending-the-abstract/#comment-69 AD Fri, 11 Dec 2009 14:32:17 +0000 http://patentbar.wordpress.com/2007/05/05/q5-amending-the-abstract/#comment-69 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. 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.

]]> By: balok http://mypatentbar.com/2007/05/05/q5-amending-the-abstract/#comment-68 balok Thu, 27 Aug 2009 21:55:02 +0000 http://patentbar.wordpress.com/2007/05/05/q5-amending-the-abstract/#comment-68 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. 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.

]]> By: matt30 http://mypatentbar.com/2007/05/05/q5-amending-the-abstract/#comment-67 matt30 Sun, 10 May 2009 15:05:09 +0000 http://patentbar.wordpress.com/2007/05/05/q5-amending-the-abstract/#comment-67 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 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

]]> By: Sam http://mypatentbar.com/2007/05/05/q5-amending-the-abstract/#comment-66 Sam Sat, 21 Mar 2009 23:11:56 +0000 http://patentbar.wordpress.com/2007/05/05/q5-amending-the-abstract/#comment-66 So, it sounds like your screwed if the RO invites an abstract, but not if they don't. Does anyone agree? So, it sounds like your screwed if the RO invites an abstract, but not if they don’t. Does anyone agree?

]]> By: ytham05 http://mypatentbar.com/2007/05/05/q5-amending-the-abstract/#comment-65 ytham05 Sat, 02 Aug 2008 03:00:41 +0000 http://patentbar.wordpress.com/2007/05/05/q5-amending-the-abstract/#comment-65 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." 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.”

]]> By: mmm http://mypatentbar.com/2007/05/05/q5-amending-the-abstract/#comment-64 mmm Fri, 16 May 2008 23:54:39 +0000 http://patentbar.wordpress.com/2007/05/05/q5-amending-the-abstract/#comment-64 This question is from a previous exam: <blockquote>Which of the following statements is most correct with respect to the abstract in an international (PCT) patent application? (A) If an abstract is missing from the international application as filed, the receiving office will invite the applicant to furnish an abstract within a time limit fixed in the invitation, and if no abstract is furnished to the receiving office within that time limit, the international application will be considered withdrawn. (B) The abstract should be primarily related to what is new in the art to which the invention pertains and may (but need not) include statements concerning the merits or value of the invention. (C) Where the application is filed with an abstract that does not comply with the requirements of PCT Rule 8, the International Searching Authority will establish an abstract that does comply. (D) (A) and (B) are both correct, but (C) is incorrect. (E) (A) and (C) are both correct, but (B) is incorrect.</blockquote> The answer is (E). MPEP 1826, PCT Rule 38 (38.1 and 38.2). This question is from a previous exam:

Which of the following statements is most correct with respect to the abstract in an international (PCT) patent application?

(A) If an abstract is missing from the international application as filed, the receiving office will invite the applicant to furnish an abstract within a time limit fixed in the invitation, and if no abstract is furnished to the receiving office within that time limit, the international application will be considered withdrawn.

(B) The abstract should be primarily related to what is new in the art to which the invention pertains and may (but need not) include statements concerning the merits or value of the invention.

(C) Where the application is filed with an abstract that does not comply with the requirements of PCT Rule 8, the International Searching Authority will establish an abstract that does comply.

(D) (A) and (B) are both correct, but (C) is incorrect.

(E) (A) and (C) are both correct, but (B) is incorrect.

The answer is (E). MPEP 1826, PCT Rule 38 (38.1 and 38.2).

]]> By: More on the abstract http://mypatentbar.com/2007/05/05/q5-amending-the-abstract/#comment-63 More on the abstract Fri, 16 May 2008 22:04:11 +0000 http://patentbar.wordpress.com/2007/05/05/q5-amending-the-abstract/#comment-63 Also see MPEP 1826 ("The Abstract"): <blockquote><em>Where the receiving Office finds that the abstract is missing, it invites the applicant to furnish it within a time limit fixed in the invitation.</em> The international application is considered withdrawn if no abstract is furnished to the receiving Office within the time limit fixed. Where the receiving Office has not invited the applicant to furnish an abstract, the International Searching Authority establishes one. The same applies where the abstract does not comply with the requirements outlined in the preceding paragraphs. <em>Where the abstract is established by the International Searching Authority, the applicant may submit comments on it within 1 month from the date of mailing of the international search report, (PCT Rule 38.2(b)). </em></blockquote> Also see MPEP 1826 (“The Abstract”):

Where the receiving Office finds that the abstract is missing, it invites the applicant to furnish it within a time limit fixed in the invitation. The international application is considered withdrawn if no abstract is furnished to the receiving Office within the time limit fixed. Where the receiving Office has not invited the applicant to furnish an abstract, the International Searching Authority establishes one. The same applies where the abstract does not comply with the requirements outlined in the preceding paragraphs. Where the abstract is established by the International Searching Authority, the applicant may submit comments on it within 1 month from the date of mailing of the international search report, (PCT Rule 38.2(b)).

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