USPTO needs to accept “due care” restoration requests

The USPTO needs to be willing to consider requests for the restoration of the right of priority based upon the “due care” standard.  This will help US filers who missed the 12-month priority period, and whose foreign-filing plans include the European Patent Office or any of twenty-eight other patent offices that apply the “due care” standard.

US practitioners (including yours truly) have been asking USPTO to make this change for several years now.  in January of 2015, AIPLA asked USPTO make this change.  It is now October of 2016 and USPTO has still not made this change.  It is hoped that this blog article will serve as a reminder to the USPTO that this change is needed.  I will explain.

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New leadership for AIPLA Industrial Designs Committee

Richard Stockton
Richard Stockton

It’s October, which means it’s time for the AIPLA annual meeting.

And it’s at the AIPLA annual meeting that AIPLA committees get new leadership.  Each committee position (chair, vice-chair) normally has a term of two years.  So in a particular October a two-year term might be half way through or might be beginning.  About half of AIPLA’s committees thus change leadership in a particular October.

This year is the year for the Industrial Designs Committee to change leadership.  The news is that the new chair of the Industrial Designs Committee is Richard Stockton of Banner & Witcoff, and the new vice-chair is James Aquilina of Design IP.

James Aquilina
James Aquilina

Richard and James are each very active in the world of design patents, having filed and prosecuted many design patent applications.  Richard’s firm, Banner & Witcoff, has ranked in first place in the 2012 US Design Patent Toteboard, the 2013 US Design Patent Toteboard, the 2014 US Design Patent Toteboard, and the 2015 US Design Patent Toteboard.

This coming two years will be an important time for industrial designs.  New countries, including China, are likely to join the Hague Agreement.  Important court cases, including a Supreme Court case in Apple v. Samsung, are likely to be decided.  It will be good to have Richard’s and James’s leadership.

For the next week, an extra hour available for WIPO filings

dstExperienced filers in the Patent Cooperation Treaty, Madrid Protocol, and Hague Agreement systems (utility patents, trademarks, and industrial designs) know that it is important to keep always in mind when midnight will arrive in Geneva, where WIPO is located.

For a PCT filer, this matters because to get a same-day filing date, a PCT application being filed in RO/IB will need to be filed by 4 PM Mountain Time.  The same is true for filing an Article 19 amendment.  The same is true if you are using ePCT to file a Demand and Article 34 amendment.

For a Madrid filer, this matters among other things for the payment of decade renewal fees.

For a Hague filer, this matters for the the filing of an international design application at the IB.

The point of today’s post is that starting today, and for the next week, you get an extra hour to get a same-day filing date.  The reason is that Europe and the US carry out their daylight saving time transitions on different days that are a week apart.

This means that you could file as late as 5 PM Mountain Time (instead of the usual 4 PM) and still get a same-day filing date.

Things will return to normal a week from now, on November 6, 2016.

USPTO needs to update its Foreign Filing License rule

The USPTO has known for a couple of years now that it needed to update its rule (37 CFR § 5.15) that spells out what you can and cannot do when you have a Foreign Filing License.  Things came to a head in May of 2016 and one would have hoped that USPTO would have taken action at that time.  Even now in October 2016, USPTO has not taken action.  This blog article will hopefully serve as a reminder to USPTO that the update continues to be needed.  What is needed is an update to the rule making clear that a PCT filer can use ePCT to generate a PCT Request for e-filing in EFS-Web.  I will explain.

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What it’s like if your country joins the PCT

The other day I was teaching the international-filing session of the AIPLA’s twentieth annual Patent Prosecution Boot Camp.  (By the way I highly recommend this boot camp for anyone who is just getting started in patent prosecution.)  One of the 110 or so attendees at the boot camp was a very nice fellow named Emilio Berkenwald who is with a patent firm in Argentina.  Well, I did what I always do when I meet someone from Argentina — I said I sure hoped his country would soon join the Patent Cooperation Treaty!

This reminded me, however, of the perspective that a patent practitioner might have when contemplating one’s country possibly joining the PCT.  The perspective might not be completely favorable, as I will discuss.

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Picking a new trademark

The other day one of our valued employees at our firm happened to ask me how we picked the name of our publishing arm, Penaya Publishing.  In response, I launched into a discussion of the factors that we urge clients to consider when picking a new name for a company or product or service, and the result was that I felt yet another blog article coming on.  Here it is, a discussion of factors that we urge a client to consider when picking a new name for a company or product or service.  I hope readers will post their comments and suggestions below. Continue reading “Picking a new trademark”

A seminar at John Marshall Law School


Today I finished co-teaching a two-day seminar about the Patent Cooperation Treaty at John Marshall Law School.  I had the pleasure for the first time of serving on the dais with Matthias Reischle, Director and Head at WIPO.  This program was sponsored by the John Marshall Law School Center for Intellectual Property, Information and Privacy Law (“the Center”).

(Click on the photograph to see a larger copy of the photograph.)  From left, Josh Sarnoff of DePaul Law School;  Daryl Lim, Director of the Center; Matthias Reischle;  yours truly;  and Vangelis Economou, director of the JMLS Patent Clinic.

Picking when to hand in a specimen of use?

r-circleI will offer a few thoughts on how a trademark practitioner might pick when (during the prosecution of an ITU trademark application) to hand in the specimen of use.  (I will assume the simple case in which a trademark application contains just one trademark class.  In such a trademark application, there is generally a need only to hand in one specimen of use.)

The idea of an ITU application is that the applicant is not claiming to have actually used the mark in interstate commerce, but is merely professing to have a bona fide intention to use the mark in commerce at some time in the future.

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