Abstract is required to “commence on a separate sheet”? No!

From time to time an Examiner in the USPTO recites this objection:

The abstract of the disclosure does not commence on a separate sheet in accordance with 37 CFR §§ 1.52(b)(4) and 1.72(b).  A new abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text.

An Examiner made such an objection a couple of days ago in one of our cases.  We will be able to force the Examiner to withdraw the objection.

Before explaining why it is that we will have no difficulty forcing the Examiner to withdraw this objection, let’s ask ourselves how such an objection could even arise.

The requirement that the Abstract commence on a separate sheet was imposed over a decade ago, and it was for a very simple purpose — to make life easier for Reed Tech (a LexisNexis company), which is the government contractor that carries out the printing of US patents.  Almost every detail of the way that you and I file and amend US patent applications is spelled out in USPTO rules that are designed to make life easier for Reed Tech.

When I was first in practice, if one wished to amend a claim, one only had to file a document listing that particular amended claim.  This meant that Reed Tech had to go hunting through the entirety of the file to locate the most recent version of each claim.  But many years ago the USPTO revised Rule 121 to say that any time you change even a single character in a single claim, you had to file a document containing a complete claim set.  The revised Rule 121 said that the complete claim set had to be on separate pages from anything else.  The idea was that at issuance time, Reed Tech would no longer have to go hunting through the entire file to locate the most recent version of each claim.  Instead, Reed Tech could simply click on the most recent “claims” document in IFW and by definition this document would provide the most recent version of each claim.

Likewise at issuance time, Reed Tech could very easily find the Abstract in the file by simply looking for the document called “abstract” in IFW.

Anybody preparing and filing a US patent application these days complies with all of these make-life-easier-for-Reed-Tech requirements out of habit.  Nobody ever has to remind you or me to remember to jump to a new page in the word processor when we are moving from the specification to the claims or from the claims to the Abstract.

So how can it possibly happen that you or I would be told by a USPTO Examiner that we had failed to provide the Abstract on a separate sheet?  This is just not the kind of mistake that you or I would make!

The explanation is that the case in which the USPTO Examiner complained about the Abstract not being on a page by itself is an entry into the US national stage from a PCT application.

When an entry into the US national stage takes place, how does the Abstract get into the national-stage file at the USPTO?  The answer is that the US practitioner does not put the Abstract into the file at the USPTO.  The way that the Abstract gets into the file at the USPTO is that a USPTO computer system makes an electronic connection to a computer system at the International Bureau of WIPO, and obtains an electronic copy of the Abstract (and the rest of the patent application) from the IB.  The USPTO computer system then loads the electronic copy of the Abstract (and the rest of the patent application) into IFW.

Of course this Abstract in our case, in the form in which the USPTO computer system obtained it from the WIPO computer system, was on the front page of a published PCT application.  So it was not on a page by itself.  It shared a page with lots of other things such as the title and the names of the inventors.

Saying this plainly, in our case it is not that I, the practitioner, somehow screwed up and filed the Abstract at the USPTO in an incorrect way.  It was not my job to file the Abstract at the USPTO.  I did not do anything incorrectly.

Which then brings us to MPEP § 1893.03(e), which says:

The abstract is reproduced on the cover page of the publication, even though it appears on a separate sheet of the international application in accordance with PCT Rule 11.4(a).  The requirement of 37 CFR § 1.52(b) that the abstract “commence on a separate physical sheet or electronic page” does not apply to the copy of the published international application communicated to the designated Offices by the International Bureau under PCT Article 20.  Accordingly, it is improper for the examiner of the U.S. national stage application to require the applicant to provide an abstract commencing on a separate sheet if the abstract does not appear on a separate sheet in the publication of the international application.  Unless the abstract is properly amended under the U.S. rules during national stage processing, the abstract that appears on the cover page of the published international application will be the abstract published by the USPTO under 35 U.S.C. § 122(b) and in any U.S. patent issuing from the application.

(Emphasis added.)  Which brings us around to the original point of this posting.  When we respond to this Office Action in which the Examiner complained that we failed to provide the Abstract on a separate sheet, we will simply cite MPEP § 1893.03(e), quoting the emphasized text.  And the Examiner will be forced to withdraw the objection.

Carol Bidwell

Now I wish that I could say that I figured all of this out myself.  I wish that I could say that the reason that I know about MPEP § 1893.03(e) is that I studied the MPEP carefully and thus came to know about MPEP § 1893.03(e).  But the real explanation is that many years ago I sat in a PCT class taught by Carol Bidwell, and she explained about MPEP § 1893.03(e).

Carol served for many, many years as an important PCT person at the USPTO, which included serving on the faculty of dozens of PCT courses, and then after retiring from the USPTO she became a consultant for WIPO, continuing to serve on the faculty of dozens more PCT courses.  Whole generations of people who use the PCT regularly (including me) learned most of what they know about the PCT from Carol.  Carol, bless her, has now retired a second time, this time from the WIPO consulting gig, and she now gets to spend more time playing golf and tennis than she did before.  Every time I touch a PCT file for a client, I am reminded of this thing or that thing that Carol taught me about PCT.

Let me offer a word of thanks to Carol for her decades of service to the intellectual property community!

Did you learn something about PCT from Carol Bidwell?  Post a comment below!

Posted in PCT |

3 thoughts on “Abstract is required to “commence on a separate sheet”? No!

  1. I attended a PCT class taught in part by Carol and by David Reed, both outstanding teachers. And yes, unfortunately not only has Carol retired, but so has David. Even after the PCT class, they were willing mentors to help me through some tricky PCT-related issues.

  2. I second Bill’s comment. Maybe Bill and I were in the same class up at Franklin Pierce, April 2006 (as I recall). Carol and David were great instructors, and first class people.

  3. I miss Carol every day, as she would always promptly respond to any crazy question I sent to her. Gary is good too but nobody can replace Carol.

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