Worry-free use of ePCT – the recording

On April 7, 2021 I presented a webinar entitled Worry-free use of ePCT with EFS-Web and e-filing PCT applications at the USPTO.  (I publicized it in this blog article on March 23, 2021.)  More than 400 people attended.  Now a video recording of the webinar is available, an hour and 49 minutes in duration.  You can download the presentation materials here and you can watch the video recording here. 

The webinar attendees and I had the great good luck that Ann Bardini, who is a WIPO person who is one of the developers of the ePCT system, was able to join at the last minute as a co-presenter for this webinar.  

This webinar explained how and why it is that you no longer need to worry about whether it is okay to use ePCT when filing PCT applications at the USPTO. 

On May 6, 2016 the USPTO published a Federal Register notice warning filers against the use of ePCT in connection with filing of PCT applications at the USPTO. The notice identified an aspect of 37 CFR § 5.15 (the “Foreign Filing License rule”) which, as interpreted by the USPTO, supposedly put into question the circumstances in which a filer could use ePCT to generate a ZIP file for uploading to EFS-Web in the filing of a PCT application.

On September 30, 2020 the USPTO promulgated a change to 37 CFR § 5.15 which lifted this cloud over the use of ePCT.

In this webinar, I explained the many reasons why it is a Best Practice (and indeed always was a Best Practice, notwithstanding the 2016 Federal Register notice) to use ePCT whenever possible in the process of filing a PCT application at the USPTO. I explain what the cloud was that had been placed over ePCT in 2016, and I explain how and why that cloud has been lifted. I described how to comply with Foreign Filing License rules in the filing of PCT applications, including use of RO/US or RO/IB, and including cases where you do or do not have an FFL from your priority application that is broad enough to cover the entirety of your PCT disclosure.

Who should watch this recording?   A chief target to watch this recording is the person who has been scared about using ePCT ever since the USPTO published that Federal Register notice on May 6, 2016.  Hopefully by watching this recording, you can overcome any fear you may have had during these past five years about running afoul of export control laws or foreign filing license violations, a fear that may have arisen because of the wording of the 2016 notice.

Another target person to watch this recording is the person who has known all along that it is a Best Practice to use ePCT to the full extent possible in all aspects of PCT filings, and who has not been able to do so because your supervisor or your client has been scared of using ePCT because of that 2016 Federal Register notice, and has told you that you are not allowed to use ePCT.  Hopefully by watching this recording, you will be able to gain information that you can pass along to others such as that supervisor or client, to help them overcome their concerns.

Finally there may be some who were never aware of this 2016 Federal Register notice, but simply have not been using ePCT, and who keep hearing about ePCT and have reached a realization that there is probably something important and smart about using ePCT or otherwise people would not keep talking about ePCT all the time.  If you are in this category, please watch this recording.  You can snooze through the part about why it was that in the past there were so many people who were scared to use ePCT, and when we get to the part about why it is smart to use ePCT now, you can perk up and you can learn why it is now a Best Practice to use ePCT as much as you can in all aspects of the PCT filing process.

Want to make sure you don’t miss out on other helpful webinars in the future?  Make sure you subscribe to this blog.

Posted in PCT |

Results: the 2020 US Tote Boards

Here are the results for the 2020 US Tote Boards.

The firm ranked first in filing of granted US plant patents in 2020 is Birch, Stewart, Kolasch & Birch, LLP.  The runner-up is Leydig, Voit & Mayer.  This is the second annual US Plant Patent Tote Board.

The firm ranked first in filing of granted US design patents in 2020 is Banner Witcoff.  The runner-up is Sterne, Kessler, Goldstein & Fox P.L.L.C.  This is the ninth annual US Design Patent Toteboard.

The firm ranked first in filing of granted US utility patents in 2020 is Oblon, McClelland, Maier & Neustadt, L.L.P.  The runner-up is Cantor Colburn LLP.  This is the sixth annual US Utility Patent Toteboard.

The firm ranked first in filing of granted US trademark registrations in 2020 is Muncy, Geissler, Olds & Lowe, P.C.  The runner-up is Fross Zelnick Lehrman & Zissu, P.C.  This is the sixth annual US Trademark Registration Toteboard.

USPTO hand-keys Hague designation data ☹

The USPTO makes much of the importance of receiving information in computer-readable formats.  For example the USPTO has proposed to charge a $400 penalty to the patent applicant who would fail to provide the body of a patent application in Microsoft Word format.  Why, then, does the USPTO so consistently fail to practice what it preaches?  For example when the applicant provides issue-fee information (assignee name and attorney-agent-or-firm information) in computer-readable format, the USPTO discards the provided computer-readable characters and hand-keys it, often making mistakes (keying “Radom, Poland” as “Random, Poland” or keying my name “Oppedahl” as “Oppendahl”).  The most recent glaring example of this has revealed itself in USPTO’s mishandling of incoming designations from international design applications, as I will describe. (These are the applications having application numbers in the series code “35”.) Continue reading →

Trademark Office disappoints; IP Badger delights

One of the things that a trademark owner has no choice but to be vigilant about is the risk that a bad person will try to steal the Amazon Brand Registry (“ABR”) rights connected with the trademark (blog article).  The usual way that a bad person will try to do this is by changing the email address that is on file at the USPTO for the trademark registration, then carrying out the ABR validation procedure (which involves Amazon sending an email message with a Secret Code Number to the email address on file) and then using the Secret Code Number to appropriate the ABR rights.  Recently one of my clients found itself the target of such an attempt.  The Trademark Office’s protective measure did not work, but fortunately IP Badger’s protective mechanism detected that the Trademark Office’s protective measure had failed.  Continue reading →

Upcoming webinar: Docketing of PCT for US filers

(The webinar was recorded and has now been posted.  Read about it here.)

Those who file PCT (Patent Cooperation Treaty) applications will be interested in an upcoming webinar on docketing of PCT applications.  This particular webinar is prepared specifically for US filers, with focus not only on general PCT docketing but also on aspects of PCT that relate to US practice. (Later I will offer another corresponding webinar for filers outside the US for docketing of PCT generally.) Continue reading →

Posted in PCT |

“We cannot be complicit. We have to speak out.”

In seven years writing this blog, I have not spoken about social or political issues.  Now I speak.  President Biden is right.  “We cannot be complicit.  We have to speak out.”

There is no place for hate against Asian-Americans.  There is no place for hate against people because of the color of their skin.  There is no place for hate against people because of their religion, or because of their non-belief.  There is no place for hate against people because of the country they came from or the country their ancestors came from.

My daily world is the world of intellectual property.  One of the oldest international agreements relating to intellectual property is the Paris Convention for the Protection of Industrial Property, a treaty that was adopted exactly 138 years ago on March 20, 1883.  One of the purposes of the Paris Convention was to bring an end to laws and policies by which some nations had treated people from other nations poorly in the particular areas of obtaining patent protection, trademark protection, and design protection. 

The treaty is composed of thirty numbered Articles, the first of which names and defines the treaty.  Most of the numbered articles are rather dry legal language spelling out procedures for (for example) filing a first patent application in a first country, and a second patent application in a second country, and linking the two patent applications together in a particular way.  The dry Articles start at Article 3 and continue to Article 30.

Which brings us to Article 2 of this treaty that was adopted exactly 138 years ago.  The drafters of this treaty, after doing the throat-clearing of Article 1, and before proceeding with the dry legalize of Articles 3 through 30, wrote Article 2:

Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this Convention. Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with.

Translated into plain language, this says:

[So far as applying for patents and registering trademarks and protecting designs is concerned,] we promise to treat people from other countries as well as we would treat people from our own country.

Among the first countries to join this treaty were Belgium, Brazil, Denmark, the Dominican Republic, France, Guatemala, Italy, Japan, the Netherlands, Norway, Portugal, Spain, Sweden, Switzerland, Tunisia, the United Kingdom, and the United States of America.  Each of these countries promised to treat nationals of other countries as well as they would treat their own nationals (in the specific area of patents, trademarks, and design protection).  In the years that have passed since then, 160 more countries have joined this treaty and have made this promise to treat nationals of other countries as well as they would treat their own nationals, in this area.  

I was not there to see it in 1883 but I’d guess the roomful of people who negotiated the language of that treaty included few if any women and few if any people of color.  Having said this, you can see that on this narrow question of of treating people from other countries the way you would want people from your own country to be treated, they got the right answer.

Now it is 2021 and we see things that happen in the world around us.  Hate against Asian-American people.  Hate against people because of the color of their skin.  Hate against people because of their religion, or because of their non-belief.  Hate against people because of the country they came from, or because of the country their ancestors came from. 

Every one of us must speak out.

If you have a platform that permits you to speak, please use your platform to speak.

If a march or gathering happens near you to support Asian-Americans, or other groups that are targets of hate these days, please join the march or the gathering.

There are many ways that each of us can communicate our support to those around us.  We must communicate our support.  

It is time to send in your numbers for the 2020 Tote Boards

The results are posted.  See the tote board results.

I am grateful to the many loyal readers who have gently reminded me that I need to organize the 2020 Tote Boards.  You can see the past Tote Boards here.  These Tote Boards are part of a tradition that extends back to 2012 when I published the first Design Patent Tote Board.  Please send in your numbers now. We will close the entries in two weeks, that is, on Friday, April 2, 2021.  Here are the four Tote Boards for which your numbers are needed.

2020 US Plant Patent Tote Board.  This will be the second annual plant patent toteboard.  This is for granted US plant patents with issue dates falling in the range of January 7, 2020 to December 29, 2020.  About 1398 US plant patents issued in 2020.  How many of them have your firm name on the front page?  A typical search string in the USPTO patents full-text database for plant patents might be:

APT/6 AND ISD/2020 and (lrep/oppedahl or lrep/oppendahl)

To send in your numbers for US plant patents, click here.  We will close the entries in two weeks, that is, on April 2, 2021.   

2020 US Design Patent Tote Board.  This will be the ninth annual design patent toteboard.  This is for granted US design patents with issue dates falling in the range of January 7, 2020 to December 29, 2020.  About 34876 US design patents issued in 2020.  How many of them have your firm name on the front page?  A typical search string in the USPTO patents full-text database for design patents might be:

APT/4 AND ISD/2020 and (lrep/oppedahl or lrep/oppendahl)

To send in your numbers for US design patents, click here.  We will close the entries in two weeks, that is, on April 2, 2021. 

2020 US Utility Patent Tote Board.  This will be the sixth annual utility patent toteboard.  This is for granted US utility patents with issue dates falling in the range of January 7, 2020 to December 29, 2020.  About 352000 US utility patents issued in 2020.  How many of them have your firm name on the front page?  Yes you may include granted reissues in this total if you wish.  A typical search string in the USPTO patents full-text database for utility patents might be:

APT/1 AND ISD/2020 and (lrep/oppedahl or lrep/oppendahl)

To send in your numbers for US utility patents, click here.  We will close the entries in two weeks, that is, on April 2, 2021. 

2020 US Trademark Registration Tote Board.  This will be the sixth annual trademark toteboard.  This is for granted US trademark registrations with issue dates falling in the range of January 7, 2020 to December 29, 2020.  About 283386 US trademark registrations issued in 2020.  How many of them did your firm prosecute to registration?  (It is not necessary that your firm filed the application, merely that your firm prosecuted the case to registration.)

To send in your numbers for US trademark registration certificates, click here.  We will close the entries in two weeks, that is, on April 2, 2021.