Month: October 2019

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How broadly can you amend claims in a PPH case?

There is a very helpful listserv (email discussion group) for US patent practitioners.  it is called the EFS-Web listserv, originally created to help US practitioners survive the problems in the initial launch by the USPTO of the EFS-Web system.  The charter of the listserv has now broadened to encompass US patent prosecution practice generally.  Here’s a question that one loyal listserv member posted today:

I just had a case transferred in that was filed with a PPH request in the US, based on a PCT written opinion. I haven’t used PPH before, so don’t have much experience.

There is a pending office action, in which the Examiner found some art in the US that wasn’t in the original search report, and I think our best way forward is to amend the claims.

PPH requests appear to require that all claim amendments be within the scope of the claims held allowable in the PCT application.

What’s the procedure if I am going to add a claim limitation that’s not in the original claim set?

Here’s what I answered. Continue reading “How broadly can you amend claims in a PPH case?”

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“Listserv” is generic

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There’s a fellow who years ago filed a trademark application for “listserv”.  It registered, and by now he has filed three renewals including an incontestability statement.  You can see the TSDR record here.  The term has long since become generic.

The registrant’s web site uses the term as a noun, as you can see in this screen shot.

My firm sponsors many listservs, some of which are listed here.

 

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Today is the day for Brazil and Madrid Protocol

(Updated to reflect Article 14(5) Declaration.)

Starting today, a trademark owner in Brazil can file a Madrid Protocol application to pursue protection in one or more Offices outside of Brazil.

And starting from today, a trademark owner outside of Brazil can file a  new Madrid Protocol application designating Brazil.

I had previously posted that starting from today, a trademark owner outside of Brazil who already has an International Registration can file a Subsequent Designation to Brazil.  This is stated too broadly.  Brazil’s Instrument of Accession includes an Article 14(5) Declaration, which provides that a “sub des” can only be filed with respect to Brazil for an IR that was registered on or after today, that is, on or after October 2, 2019.   

The two-letter code for Brazil is “BR”.

 

 

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Argentina indeed has joined DAS

click to visit INPI web site

Right on schedule, the National Institute of Industrial Property of Argentina (“INPI-AR”) has indeed today joined the DAS system.  INPI-AR is now operating as an Accessing Office in DAS with respect to patents and utility models and industrial designs.  Here is an excerpt from an exemplary Certificate of Availability from DAS showing availability of a design application:

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Readers will recall that I blogged about this on August 19, 2019.

This welcome development brings the number of participating DAS Offices as of October 1, 2019 to twenty-four.

 

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Seventy-Three Patent Practitioners

About forty-six comments have been filed in response to USPTO’s recent notice of proposed rulemaking regarding patent fees.  One of the comments is filed by “Seventy-three patent practitioners”.  Here is the opening paragraph of their letter:

We write as patent practitioners to comment on a Notice of Proposed Rulemaking (NPRM), Setting and Adjusting Patent Fees During Fiscal Year 2020.  The signatories are members of several email listserv groups, a community of patent practitioners. The signatories taken together filed about 20,000 patent applications at the PTO during the past ten years, and paid about $50 million in fees to the PTO in the past ten years.

I am honored to be among the signers of that letter.

On a quick skim, it appears that every comment to this NPRM (including the comment cited above) that touches in any way on the non-DOCX surcharge is critical of USPTO’s effort to try to force applicants to file patent applications in DOCX format through imposition of a $400 penalty for failure to do so.  

In future blog articles I will try to excerpt and summarize some of the views expressed in the comments.

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Australia joins DAS for Designs

IP AustraliaYet another intellectual property office has joined DAS for industrial designs.  IP Australia will become both an Accessing Office and a Depositing Office for designs on November 1, 2019.

This brings to nine the number of Depositing Offices for designs.  This brings to eight the number of Accessing Offices for designs.  The Accessing Offices for designs are:

  • Australia
  • Canada
  • Chile
  • China
  • Georgia
  • South Korea
  • Spain
  • US

Conspicuously absent among the ID5 are:

  • EUIPO
  • Japan
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Argentina is getting ready for a PCT Receiving Office?

(Update on March 1, 2020:  since the date of this blog article, WIPO has updated its Participating Offices web page to say that INPI’s participation that will commence on March 2, 2020 is only as to national patent applications, not also as to PCT applications.)

I am fascinated to see the following information on the DAS page of the WIPO web site:

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What this says is that starting on March 2, 2020 (a mere five months from now), the RO/AR will be a Depositing Office for the WIPO DAS system.  What is interesting about this is that for RO/AR to be a Depositing Office, the RO/AR would have to exist by March 2, 2020.  And for RO/AR to exist, Argentina would have to join the PCT by March 2, 2020.  So I guess the DAS people at WIPO know something that I don’t about Argentina’s plans to join the PCT.