Intellectual Property Forum

Patents => Patent Filing and Prosecution => Topic started by: PaulWeathers on 10-29-17 at 08:24 pm

Title: 1.31 Also Applicable for National Stage Entry?
Post by: PaulWeathers on 10-29-17 at 08:24 pm
Hi

Does the new 37 CFR 1.31 also apply for just entering the US National Stage of a PCT application?

except that a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner even if the juristic entity is the applicant.

Thx
Paul
Title: Re: 1.31 Also Applicable for National Stage Entry?
Post by: PaulWeathers on 11-09-17 at 03:30 pm
Hi

A few further thoughts on the issue:

1.31 states as my citation below. A juristic entity must be represented by a pratitioner, so one will have to file a POA to some practitioner.

This alone should not preclude anyone else authorized by the applicant from filing an application (or a national stage entry).

1.42(d) states "Any person having authority may deliver an application and fees to the Office on behalf of the applicant. However, an oath or declaration, or substitute statement in lieu of an oath or declaration, may be executed only in accordance with 1.63 or 1.64, a correspondence address may be provided only in accordance with 1.33(a), and amendments and other papers must be signed in accordance with 1.33(b)."

The part emphasized by me in bold letters would confirm my assumption.

Now we have following "However" and the last accessory sentence "amendments and other papers must be signed in accordance with 1.33(b)."

where 1.33(b) states

Quote
(b) Amendments and other papers. Amendments and other papers, except for written assertions pursuant to 1.27(c)(2)(iii) or (c)(2)(iv), filed in the application must be signed by:

    (1) A patent practitioner of record;
    (2) A patent practitioner not of record who acts in a representative capacity under the provisions of 1.34; or
    (3) The applicant ( 1.42 ). Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.

There we have it again: "Amendments and other papers"

Now what does "amendments and other papers" mean? It can't mean "all papers", as then it would not make any sense to explicitly mention "amendments" at all.

Going back to 1.42 we find "applications", "fees", "oath or declaration", substitutes thereof, provision of correspondence address and our "amendments and other papers".

The "other papers" can not be construed to mean anything mentioned in 1.42(b) before the "amendments" (like just adding amendments to the previously mentioned ones) because the oath or the declaration may not be signed by a practitioner of record (1.33(b)(1) just can not apply here).

The only reasonable explanation would be that "amendments" just stands for one example of papers that can be filed in an application after the application itself has been filed.

The filing of the application itself is mandatory, as are the fees, the oath or declaration and a correspondence address.
Everything else, often beginning with a (preliminary) amendment, is prosecution of the application and requires deeper knowledge of the patent system. That's where it is reasonable to require a practitioner.

Looking at 1.33 we see a similar segmentation:

1.33(a) is about the application itself and the correspondence address and 1.33(b) is about amendments and other papers.
The "Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner." in 1.33(b)(3) ist subsidiary to the "Amendments and other papers." at the beginning of 1.33(b), so it does not apply to the initial application dealt with in 1.33(a). Even if one would construe the "all papers submitted on behalf of a juristic entity" in 1.33(b)(3) as breaking the subsidiarity, there is still the clause "Unless otherwise specified" and the explicit specification "Any person having authority may deliver an application and fees to the Office on behalf of the applicant".

The argument that "may deliver" would just mean physical delivery like a postal service or filing by paralegals of an application signed by a practitioner does not hold because a properly executed declaration can surely be delivered by a postal service or filed by a paralegal, so there would be no need for the "However" in 1.42(d).

So 1.42 together with 1.33 is conclusive in that an application itself can be filed and paid for by any person authorized by the applicant.
This should include the signatures under the ADS and under the transmittal letter in case of a national stage entry.

Now who wants to play the Devil's advocate?

 
Title: Re: 1.31 Also Applicable for National Stage Entry?
Post by: PaulWeathers on 11-15-17 at 06:24 am
Hi,


Quote
37 CFR 1.54  Parts of application to be filed together; filing receipt.

    (a) It is desirable that all parts of the complete application be deposited in the Office together; otherwise, a letter must accompany each part, accurately and clearly connecting it with the other parts of the application. See 1.53(f) and (g) with regard to completion of an application.
    (b) Applicant will be informed of the application number and filing date by a filing receipt, unless the application is an application filed under 1.53(d). A letter limited to a request for a filing receipt may be signed by a juristic applicant or patent owner.


Why would a juristic applicant or patent owner have to be allowed to sign a request for a filing receipt if he was not allowed to sign the application by himself?
This exemption is necessary because such a request is not part of the application itself, thereby qualifying as an "other paper" and falling under 1.42(d) last accessory sentence.

Still no objection from you guys?