Trying to get my paper published has been an infuriating and frustrating process. It was accepted for publication about 8 months ago, and still isn't out.
I have one more statement requiring a footnote, but, alas, my co-author (the attorney, who was in charge of the legal research) has had a health crisis, and is unavailable for the foreseeable future. While he had read and somewhat amended the following statement to its current form (so I assume it is correct), I need to cite the relevant law. Does anybody happen to know a reference?
Within the initial 12-month window for applying outside the country of first filing, US patent attorneys have some latitude to correct errors in the original text of a patent application, rephrase for clarity, and modify other language from the original disclosure or pending claims, under the caveat that any additions or substantive changes will not be entitled to an earlier priority date.[NED1]
[NED1]Smith/Bernard: Please provide a citation to support this factual assertion.
I am thinking 37 C.F.R. and M.P.E.P. § 216, but that might be a stretch.
37 C.F.R. establishes the 12-month window. In the MPEP, the sentence I am thinking of is "The foreign application must be examined for the question of sufficiency of the disclosure under 35 U.S.C. 112 as well as to determine if there is a basis for the claims sought."
That is, the English-language application merely need be supported by a sufficient disclosure in the original foreign application, so need not match the original foreign application exactly.
What do we think?
W