Comments on: Q) PCT (30 months)

By: Keener

Keener — Sat, 19 May 2012 21:33:10 +0000

Kerstin your second part is close to Brandon’s.
He is talking about the PATENT that results from a national stage of the pre 11/29/00 IA. It doesn’t matter when the national stage was and it doesn’t matter if the IA designated the US. The PATENT gets a 102e date as of the last fulfillment of 371(c)(1), (2) and (4) (AKA the Foot Rule: Fee, Oath, Translation).
Search flowchart in 700.

By: Keener

Keener — Sat, 19 May 2012 21:20:50 +0000

I was wrong about the claims limitation….
1893.01(a) (2 and 3) mention how amendments 19 and 34 should be automatically entered into the application by the IB, but, especially with translations, errors can occur. The PTO suggests using preliminary amendment (1.121) to ensure the amendments 19 and 34 are enter properly. Preliminary amendment could be used for any amendment to the national stage, mind you new matter would force a CiP.

By: Keener

Keener — Sat, 19 May 2012 20:59:08 +0000

Miranda,
I think you can you make amendments to the IA at national stage thus filing “a copy of the IA” is not always desire or required. I think you can only amend claims at NP. Brain is fuzzy today, but I’ll see if I can find it.

By: Kerstin

Kerstin — Sun, 18 Mar 2012 20:44:53 +0000

Brandon’s second example above doesn’t make sense….what is the 371 provision he is talking about? I thought that if an IA was filed pre 11/29/00, even if a subsequent US app was filed after 11/29/00 there was still no 102(e) date. Or is that if you file the IA before 11/29/00 and then enter the national stage in the US AFTER 11/20/00, as long as you have designated the US (obviously), published the IA in English you get a 102(e) date as of the date you entered the US national stage?. Can anyone help reconcile or clarify? Thanks.

By: Miranda

Miranda — Sun, 05 Feb 2012 01:53:53 +0000

PLI instructer John White keeps stating “spec claims drawing” as one of the requirements of entering the national stage under 371- is that essentially referring to a copy of the IA? why doesn’t he just say “a copy of the IA”?

By: dcnative

dcnative — Sat, 14 Jan 2012 15:31:15 +0000

Agreed.

By: E

Fri, 18 Nov 2011 04:00:12 +0000

1893.01(a)(1) Applicant may file fee/ IA copy using Express Mail procedures set for in 37 CFR 1.10

By: maggie

maggie — Wed, 19 Oct 2011 18:27:02 +0000

I think the one weird thing is to overcome a 102(e) rejection from examiner you CAN use foreign priority! But you can’t use foreign priority to est your 102(e) date.

The filing date can also be antedated by applicant’s earlier foreign priority application or provisional application if 35 U.S.C. 119 is met and the foreign application or provisional application “supports” (conforms to 35 U.S.C. 112, first paragraph, requirements) all the claims of the U.S. application.

By: maggie

maggie — Wed, 19 Oct 2011 18:13:58 +0000

For Post 11/29/2000 app 102(e) dates are based on the Earliest Effective US Filing date for
(1) Domestic 119(e) and 120
(2) International/USA 365(c)
(3) but NOT Foreign filing dates 119(a-d)

102(e) dates for Pre-11/29/2000 app are base when last component to complete application shows up (usually oath)

By: Bigbadvoododaddy

Bigbadvoododaddy — Mon, 11 Jul 2011 21:25:22 +0000

It is allowed, if I read your question where he submits spec to mean a copy of the IA. Then it is allowed.
If you mean no IA only literally the spec – then it is abandoned.