Month: September 2015

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Supreme Court says patent applications are difficult to draft

I am indebted to Louis Ventre, Jr. for pointing out this delightful quotation from the US Supreme Court in 1892:

The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy; and, in view of the fact that valuable inventions are often placed in the hands of inexperienced persons to prepare such specifications and claims, it is no matter of surprise that the latter frequently fail to describe with requisite certainty the exact invention of the patentee, and err either in claiming that which the patentee had not in fact invented, or in omitting some element which was a valuable or essential part of his actual invention.

Topliff v. Topliff, 145 U.S. 156, 12 S.Ct. 825, 36 L.Ed. 658.  

Maybe it should be standard procedure to send a copy of this quotation to each client when they complain about the cost to get a patent application drafted.

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fuliginous

Wow.  If you want to learn a new word now and again, hang out with the folks in the PCT Listserv.  Here’s a PCT Listserv posting of earlier today by list member Jim Boff:

I think you have said it all.

  • The requirements of the US are seen by the rest of the world as replete in fuliginous obscurity.
  • The requirements of the rest of the world are seen in like respect by the US.
  • The rest of the world is not in total harmony and look upon each other in suspicion.
  • Patents are property and people get difficult about property.
  • If there was such a thing as a form of patent assignment that was agreed valid in all jurisdictions and that required minimal formalities to be valid everywhere that would be a wonderful thing and devoutly to be wished for.

But you mention notarisation?

If you want it simple there has to be compromise everywhere on formalities, in the US as well as outside the US.

Jim Boff

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Unexpectedly fast PCT-PPH decisions at USPTO

Note:  what seemed like an improvement at the USPTO regarding PPH petitions turned out to be illusory.  Please see a followup article about this.

There are two ways to pursue US patent protection from a PCT patent apoiplaplication:

  • entry into the US national phase, and
  • filing of a bypass continuation application,

and there are many factors which might influence a particular filer’s choice of one approach or the other.  Now there is yet another factor, namely the speed with which a PPH petition might get granted.  If you pick “US national phase”, your PPH petition will nowadays likely get decided in a few days rather than a few months.  As I will describe below, a couple of weeks ago we filed about fifty PCT-PPH petitions, and we figured we would have to wait the usual four to seven months for USPTO to decide them.  We were astonished when seven of these fifty PCT-PPH petitions got decided in less than three weeks.  It turns out there is an easy explanation for this happy result. Continue reading “Unexpectedly fast PCT-PPH decisions at USPTO”