Incorporation by Reference and Non-English Specification

[w***@gmail.com]

Currently, the USPTO allows one to submit a specification in a foreign
language and still receive a filing date, but a fee is charged for
this service. Of course, to proceed to examination and obtain the
U.S. patent, ultimately, a translated specification has to be
submitted.

I am wondering if it would be possible to avoid the fee for a non-
English specification, simply by submitting a pro-forma one-page
English language specifiction, which really didn't include much of
anything, but which had the following comment therein:

The full content of (Insert Country Name) application number ______ is
hereby incorporated by reference into the present specification. Then
you also include some fairly contentless, but pro-forma legitimate,
dummy claims and a dummy drawing, just to make sure that all "formal"
requirements were met.

The CFR and MPEP indicate the following:
"An applicant may incorporate by reference the foreign priority
application by including, in the U.S. application-as-filed, an
explicit statement that such specifically enumerated foreign priority
application or applications are "hereby incorporated by reference."
The statement must appear in the specification. See 37 CFR 1.57(b) and
MPEP § 608.01(p). ... The inclusion of this statement of incorporation
by reference of the foreign priority application will permit an
applicant to amend the U.S. application to include subject matter from
the foreign priority application(s), without raising the issue of new
matter."

Therefore, it would seem that you could rely on the above rule to
achieve the same thing as submitting a non-English specification, but
without paying the fee. The specification you do submit is completely
in English, and therefore is not a non-English specification, but you
include the magic words "incorporated by reference" therein. Then,
when you get around to translating the Foreign application, you can
just submit it and it will be entered in full and cannot be considered
new matter.

Will this work?

[Your name]

Post by w***@gmail.com
Currently, the USPTO allows one to submit a specification in a foreign
language and still receive a filing date, but a fee is charged for
this service. Of course, to proceed to examination and obtain the
U.S. patent, ultimately, a translated specification has to be
submitted.
I am wondering if it would be possible to avoid the fee for a non-
English specification, simply by submitting a pro-forma one-page
English language specifiction, which really didn't include much of
The full content of (Insert Country Name) application number ______ is
hereby incorporated by reference into the present specification. Then
you also include some fairly contentless, but pro-forma legitimate,
dummy claims and a dummy drawing, just to make sure that all "formal"
requirements were met.
"An applicant may incorporate by reference the foreign priority
application by including, in the U.S. application-as-filed, an
explicit statement that such specifically enumerated foreign priority
application or applications are "hereby incorporated by reference."
The statement must appear in the specification. See 37 CFR 1.57(b) and
MPEP § 608.01(p). ... The inclusion of this statement of incorporation
by reference of the foreign priority application will permit an
applicant to amend the U.S. application to include subject matter from
the foreign priority application(s), without raising the issue of new
matter."
Therefore, it would seem that you could rely on the above rule to
achieve the same thing as submitting a non-English specification, but
without paying the fee. The specification you do submit is completely
in English, and therefore is not a non-English specification, but you
include the magic words "incorporated by reference" therein. Then,
when you get around to translating the Foreign application, you can
just submit it and it will be entered in full and cannot be considered
new matter.
Will this work?

Sort of, but not really. They will examine the English language claims,
reject them for lack of written description, and then you'll have to
translate the real spec into English, plus they'll also reject them for
being garbage, i.e. for not claiming anything patentable. If they would
examine the foreign language claims you might almost have something there,
but they won't, so you don't. Oh, you might avoid a fee, but you'll waste
more time than it's worth. They might even say that you have constructively
elected the invention defined by your dummy claims and make you file a
divisional.