600 Parts, Form, and Content of Application

608.04(b) could reference 1893.03(e)

608.04(b) (Jan. 2018) says:

 

> Applicants can avoid the need to file a preliminary amendment by incorporating any

> desired amendments into the text of the specification, even where the application is

> a continuation or divisional application of a prior-filed application. Applicants are

> strongly encouraged to avoid submitting any preliminary amendments.

 

However, this "strong[] encourage[ment]" does not apply to national-stage applications under 35 USC 371. For a 371, "the Office will use the description, claims, abstract and drawings as published in the [WIPO] pamphlet for the U.S. national stage application." MPEP 1893.03(e), I. Similarly, "[t]he application size fee ... is determined on the basis of the international application as published by WIPO." MPEP 1893.01(c). I suggest amending 608.04(b) to note this fact, and to refer to 1893.03(e) and 1893.01(c).

 

I also suggest adding text to clarify which applies to a bypass application. For a bypass, does the Office prefer a clean spec incorporating changes, like a regular continuation, or does the Office prefer a preliminary amendment, like a 371?

 

(All opinions are my own and not necessarily those of my employer, any client, or any other party.)

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Idea No. 228