Patents and trademark registrations “shall be signed by the Director”

(Corrected thanks to David Boundy, as to which Director succeeded which.)

Normally the statutory requirement that a patent issued by the USPTO, or a trademark registration certificate issued by the USPTO, “shall be signed by the Director” (35 U.S. Code § 153 and 15 U.S. Code § 1057) is sort of boring.  But just now, the USPTO expressly refuses to say who is the Director of the USPTO.  What does this mean for patents and trademark registrations that have issued on recent Tuesdays? Continue reading “Patents and trademark registrations “shall be signed by the Director””

Behind the scenes in PAIR and EFS-Web

One of the important listservs that all US patent practitioners should subscribe to is the PAIR listserv.  This is a listserv designed, oddly enough, for users of PAIR.  Earlier today, alert listserv member William B. Slate posted a screen shot from PAIR showing that the “search by customer number” menu was missing.  And he’s right.  It was missing.  Later it returned in PAIR.  William’s posting to the listserv prompted me to say a few words about how PAIR actually works and why it is actually cause for astonishment any time that PAIR actually works. Continue reading “Behind the scenes in PAIR and EFS-Web”

Learn about PCT in LA on March 7

Gary Smith of the PCT Learning Center will be teaching about the Patent Cooperation Treaty in Los Angeles on Tuesday, March 7.  You can sign up for the morning part only (“PCT Boot Camp”) or the afternoon part only (“PCT Strategies Session”) or both (“The Essential PCT”).

To learn more, or to register, click here.

Learn about PCT in San Francisco on March 13

The PCT Learning Center, with support from the World Intellectual Property Organization, will be sponsoring a seminar about the Patent Cooperation Treaty in San Francisco on Monday, March 13.  The presenters will be Gary Smith and yours truly.

You can sign up for the morning part only (“PCT Boot Camp”) or the afternoon part only (“PCT Strategies Session”) or both (“The Essential PCT”).

For more information, or to register, click here.

Seats still available for PCT seminar in San Jose this Thursday

It looks like there are still seats available for the PCT Seminar that will take place this Thursday in San Jose.  I say this because the registration web page is still accepting registrations.  I must assume that the program will soon be sold out, so people should register now.

This Seminar is being provided free of charge by the patent firm Schwegman, Lundberg & Woessner P.A. with additional sponsorship by the World Intellectual Property Organization.

I will be the presenter for this Seminar.  I really enjoy presenting this subject matter and I think the Seminar will be a lot of fun.  I urge readers to register and attend.

The end of Accelerated Examination

The year 2006 was a remarkable year for the patent community in the United States.  Jon Dudas was the Director of the USPTO then, and in the USPTO’s annual report, he reported that the allowance rate had been successfully reduced to 54 percent.  In the annual report Director Dudas stated, as a matter of some pride, that “at 54 percent, the patent allowance rate was … the lowest on record.”

2006 was also the year in which Mr. Dudas launched the Accelerated Examination program for patent applicants. Now in 2017 it seems likely the AE program will be brought to a close.

Continue reading “The end of Accelerated Examination”

The money-saving strategy I described does not actually work

Readers of this blog will recall my article of a few days ago, describing what I suggested would be a strategy for saving a little money on PCT search fees.  I’m posting this note to draw your attention to a correction to that article which I posted today.  I offer my thanks to a nice person at WIPO who gently pointed out to me a couple of PCT rules which make clear that the strategy that I described a few days ago doesn’t (or at least shouldn’t) work.

There’s still a bit of an opportunity to save money on PCT search fees, although not the opportunity that I described in that article of a few days ago.

In that article of a few days ago, I described that a filer might file a PCT application on February 28, 2017, while not paying the Search Fee.  I described that the filer might then on March 1, 2017 pay the Search Fee.  For a Search Fee the amount of which dropped on March 1, I figured this would be a chance to save some money.  Not so.  As I describe in the correction to the previous posting, the amount of Search Fee due is determined not by the date that the Search Fee is paid, but by the PCT filing date.

But for a filer that has the flexibility to file a PCT application on the filer’s choice of February 28, 2017 or March 1, 2017, the reduction in Search Fee could be taken advantage of simply by postponing the PCT filing until March 1.  (For example perhaps an identical priority document had been filed on or after March 1, 2016.)

A strategy (not!) for saving a little money on PCT search fees

Update:  A nice person at WIPO reminded me of PCT Rule 16.1(f) and PCT Rule 15.3.  These rules, taken together, provide that the search fee due is based upon the international filing date, not the date of payment of the search fee.  This means that what I wrote in the blog article of a few days ago isn’t right.

The Receiving Office, upon reviewing the fees paid and working out whether any addition fee is due, will (or at least should, according to the rules) check to see whether the fee actually paid ($1372, in my example) matches the fee that was due on filing day ($1536, in my example).  If the two fees don’t match, the Receiving Office would mail out a Form PCT/RO/102 indicating that the deficiency ($164, in my example) needs to be paid.

So the trick of filing on February 28, 2017, and paying the search fee on March 1, 2017, would not work.  My thanks to the nice person at WIPO who pointed this out to me.

PCT Rule 16.1(f) is interesting for a second reason.  It uses the delightful Latin expression mutatis mutandis.