Register now for Design Day 2019

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You will recall that back on January 13, 2019 I told you to save the date, namely Thursday, April 25.

Registration is now open for Design Day 2019.  This will be at the USPTO in Alexandria, Virginia.

This event always sells out weeks in advance.  If you want to attend, you need to register right away.

To learn more, or to register, click here.

Yours truly is among the members of the planning committee for Design Day 2019.  I can promise you that it will be a good use of your time to attend.


Today is a snow day at the USPTO

Today, Wednesday, February 20, 2019 is a snow day.  This means that any document that you needed to file today at the USPTO will be timely if you file it by tomorrow, Thursday, February 21.

(This might be as good a time as any to subscribe to this blog.)

Update: Status of ID5 Offices in DAS

Let’s remind ourselves how the five biggest Offices for industrial design protection (called “ID5”) are coming along in terms of participation in the DAS system.  It is recalled that the DAS system permits the exchange and retrieval of electronic certified copies of priority documents.  So which Offices are trendy, modern, and up-to-date?  Which of the ID5 Offices have not yet joined DAS for designs?   Continue reading “Update: Status of ID5 Offices in DAS”

Filing a Demand if no ISR has been established?

I recently blogged about an imminent PCT rules change.  The rules change, which will take effect July 1, 2019, changes the timing of when an International Preliminary Examining Authority (“IPEA”) will commence its preliminary examination activity after receiving a Demand from an applicant.

  • The present situation is that the IPEA will put the activity “on ice” until the last possible date (P+22 or ISR+3, whichever is later) unless the applicant makes an express request for the activity to be commenced sooner.
  • The situation on and after July 1, 2019 will be that the IPEA will commence the preliminary examination right away unless the applicant makes an express request that the activity be postponed.

Which naturally enough raises the question of what exactly counts as “right away”?  And as I explained in the blog post, “right away” is defined as the date upon which the IPEA is for the first time in possession of all of the following:

  • the Demand;
  • the Preliminary Examination fee and the handling fee (and late fee if applicable);  and
  • the ISR/WO (or declaration of non-establishment).

Every now and then someone will suggest that the PCT has the potential to be a bit dry.  And whenever that happens, others will point out particularly fascinating aspects of the PCT that show how wrong that suggestion could be.  And so it is today, as one alert reader on the PCT listserv (which of course you should join if you have not already done so) reminded listserv members a few minutes ago.  She wondered why one would ever file a Demand if one had received a Declaration of non-establishment of an international search report.  Her comment was informed by the fact that as a general rule, IPEAs usually will not carry out preliminary examination for any subject matter for which an international search has not been carried out.

Indeed why, despite having received a declaration of non-establishment, might one nonetheless feel the need to file a Demand? Continue reading “Filing a Demand if no ISR has been established?”

Western Union Edge

Seemingly almost every industry is disrupted these days by the Internet and other technological changes.  Over-the-top distribution of streaming media allows the consumer to bypass legacy cable or satellite gatekeepers.  Voice over IP services allow telephone customers to bypass legacy landline telephone companies, saving lots of money.

Yet every time we get paid by foreign patent or trademark counsel, we get charged by our own bank to receive the bank wire, even if the sender pays all of the bank fees at their end that they are able to pay at their end.  I recently asked for a detail billing from our bank and found that our bank was also charging us an additional fee for many of our incoming bank wires to “repair” some of the wires because of real or imagined flaws in the bank wire instructions received from the foreign banks.

Frustrations like these had often reminded me that I keep hearing about various ways other than bank wires that people can send money to each other.  Venmo.  Zelle.  Paypal.  Wechat.  But most of these systems are no good for international transfers, and most of these systems are unavailable to businesses.

Are there smart ways to save money paying foreign patent and trademark counsel?  Is it possible to bypass banks, avoiding the bank wire transfer fees that normally get charged to both the senders and the recipients of wire transfers? Continue reading “Western Union Edge”

Important PCT rule change effective July 1, 2019

Each year, July 1 is very often the date upon which PCT rules changes will take effect, and 2019 is no exception.  There is a rule change regarding PCT Demands that will come into force on July 1, 2019.

The single most important thing to keep in mind about this rule change will be the importance of making sure to get one’s Article 34 Amendment (or instructions to take into account one’s Article 19 Amendment) filed with the IPEA no later than the date upon which one hands in the Demand itself and the associated fees. Continue reading “Important PCT rule change effective July 1, 2019”

Receiving Offices that need to join DAS

(Update:  A letter got sent on February 22, 2020 to the Commissioner for Patents at the USPTO, asking the RO/US to become a Depositing Office in the DAS system.  See blog post.  The Commissioner for Patents answered.  See blog post.)

(Updated to reflect that RO/EP, RO/GE, RO/IL and RO/NO joined the trendy, modern and up-to-date club.)

One of the important ways that a patent office can participate in the DAS program is as a Depositing Office.  This means that the Office makes applications which have been filed at that Office available to the DAS system so that other Offices can retrieve the applications.

A particular way that a patent office can participate in DAS is in its role as a Receiving Office.  The idea is that an applicant may have filed a PCT application in that Receiving Office, and may later find the need to claim priority from that PCT application with respect to some later-filed patent application.  When such a situation arises, the normal expectation of the applicant would be that of course the Receiving Office will be a Depositing Office in the DAS system.

Such a Receiving Office would, of course, deserve the accolade of being termed “trendy, modern, and up-to-date.”

Which then raises the natural question “which Receiving Offices are trendy, modern, and up-to-date?”  Here is the list of patent offices whose Receiving Offices are trendy, modern, and up-to-date:

  • Australia
  • Brazil
  • Chile
  • China
  • Denmark
  • Eurasian Patent Organization
  • European Patent Office
  • Finland
  • Georgia
  • India
  • Israel
  • Morocco
  • Netherlands
  • Norway
  • Spain
  • Sweden
  • WIPO

One might then wonder, which Receiving Offices are not trendy, modern, and up-to-date?  And in particular, one might wonder, if we rank the Receiving Offices in order by the number of filings at those Offices, which of the top-ranked Receiving Offices are not yet trendy, modern, and up-to-date? Well, one need wonder no longer.  Here I provide the answer.

Here are the top-ranked Receiving Offices by number of PCT filings.  These five Receiving Offices, taken together, account for something like 85% of all PCT applications filed in the world.  Next to each of these five Receiving Offices I have indicated whether (as of April 2020) it has or has not become a Depositing Office in the DAS system:

  1. RO/US (USPTO) – not trendy, modern, and up-to-date
  2. RO/CN (China) – yes trendy, modern, and up-to-date
  3. RO/JP (Japan) – not trendy, modern, and up-to-date
  4. RO/EP (European Patent Office) – yes trendy, modern, and up-to-date
  5. RO/KR (Korean Intellectual Property Office) – not trendy, modern, and up-to-date

Participation as a Depositing Office is clearly an action item for RO/US, RO/JP, and RO/KR.

Let’s hope that the USPTO, the JPO, and the KIPO will soon join the DAS system as Receiving Offices.

Mondegreen – a neat word

We are all accustomed to the phenomenon that a person might mishear a song lyric or other publicly recited phrase.  “to the republic for Richard Stands.”  “scuse me while I kiss this guy.”  It turns out there is a name for this.  It is called a Mondegreen.

What got me thinking about this, of course, was my recent blog article that mentioned Bad Moon Rising.  “There’s a bathroom on the right.”

Anyway so now you can save up this really good word “Mondegreen” and put it to use in just the right setting.