US Patent Law Question...

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Warren Smith

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Apr 4, 2022, 4:01:49 PMApr 4
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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.

Warren Smith

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Apr 4, 2022, 4:30:18 PMApr 4
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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

 



 Smith/Bernard: Please provide a citation to support this factual assertion.

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Herman

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Apr 4, 2022, 5:09:38 PMApr 4
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On 4/4/22 13:29, Warren Smith wrote:
> 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?
>

>
> 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.


It is not clear to me what precisely is being addressed here - amendment
of the original (foreign/international) application, or the wording of
the national (US) application which claims priority on the basis of a
foreign application.

The English language translation of the foreign application (and any
amendments thereto) that may need to submitted if the foreign
application is not in English is one matter, and would in principle have
to match the foreign application exactly.

The US application that claims priority need not match the foreign
application on a textual level at all, but only in the sense that the
original application contained the technical idea being claimed in the
US application.

Consider the case where the foreign application is in English (and thus
would not involve translation) -- the legal aspects should be the same
as when translation is involved.


Herman Kahn
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