If you look closely at your mobile phone, you will see that most of its four edges are made of metal. But if you look closely around the four edges, will also see at least three narrow lines that are not metal — those lines are insulators. The point of this blog article is that it is a mistake to fail to pay attention to these insulators.
It is astonishing to see the USPTO developers repeating a mistake now in 2023 that they made in 2020. Back in 2020, it took the developers more than six months to fix it. One wonders how long it will take this time. The mistake was to assume (incorrectly) that “patent offices” are the same thing as “places that you can send mail to”. I am not making this up!
The USPTO people who are developing Patent Center have stepped up the frequency with which users of Patent Center encounter a pop-up window containing a customer survey. It is sad is that one section of the survey (quoted at right) fishes for undeserved compliments. Continue reading “Patent Center developers fishing for compliments”
Recently I presented four webinars about PCT Forms. The webinars were recorded, and the recordings are now available here.
The USPTO is sticking with its plans to start imposing its $400 penalty for failing to file one’s US patent application in Microsoft Word format. The penalty will start on January 17, or will start on January 18, depending on which sentence of the USPTO’s most recent announcements you choose to trust (blog article). Another way to describe this is that a filer who (a) wishes to avoid at least some of the malpractice risks of filing in Microsoft Word format (the USPTO’s flavor of DOCX), and (b) wishes to avoid having to pay the $400 penalty … will need to include a trusted PDF copy of the application in the e-filing package.
Which means that starting on Thursday, January 18, or maybe starting on Wednesday, January 17, the filer will need to go to some trouble to make sure that a trusted PDF file forms part of the e-filing package.
But it is important to realize that the trusted PDF file does not fully protect the filer.
One reason that the trusted PDF file does not fully protect the filer is that the USPTO’s e-filing system tampers with the trusted PDF.
As shown in the figure, the first thing that the USPTO does with your trusted PDF is dismember it into TIF images, one per PDF page. And then the USPTO carries out halftoning and resizing. This is the native storage format in IFW. Later if you click to see your trusted PDF, you will find that what IFW gives back to you as a PDF is not bit-for-bit the same as the PDF that you uploaded. The PDF that the IFW gives back to you will, among other things, have a non-identical message digest (hash).
Here is a real-life example from a real filing of a trusted PDF in a US patent application. At right you can see what I actually uploaded in the PDF.
And at right you can see what you would actually get back if you were to download the supposedly same PDF file. As you can see, the image is blurred almost beyond recognition.
It seems to me that the filer who wants to avoid the harm caused by the halftoning and resizing would definitely want to index the trusted PDF as “non-black-and-white drawings”. That way the trusted PDF is preserved bit-for-bit.
Here is what the USPTO said today (archived here) about its $400 penalty for failing to file in Microsoft Word format:
As previously noted, we will continue to allow filings in non-DOCX filing formats for new, non-provisional utility patent applications until January 17, 2024. After January 17, those filing new, non-provisional utility patent applications with specification, claims, and abstract in non-DOCX filing formats will incur a surcharge.
It’s clear that filings carried out on January 16, 2023, or earlier, may be done in trusted PDF format without penalty. It’s clear that filings carried out on January 18, 2023, or later, must include a Microsoft-Word-formatted copy of the patent application to avoid the penalty.
But what will happen for patent applications filed on January 17, 2024?
The Federal Register notice says the effective date of the penalty will be January 17, 2024. This means that a filer who files on January 17 (and fails to provide the Microsoft-Word-formatted copy) will incur the penalty.
But the quoted language above says the penalty will be incurred for applications filed after January 17. In other words, a filing that is not “after January 17” will not incur the penalty. And I note that January 17 and “after January 17” have no overlap. They are not the same thing.
Hello dear readers. The people at WIPO who handle the PCT system are hoping to do a better job for their users, and so they have posted a questionnaire. If you make use of ePCT, or if you use the services of RO/IB, you can share your thoughts through this questionnnaire. Here is the invitation:
Starting in March 2023, the RO/IB has been working as a Pilot Team on enhancing our customer services. We need again your support to ensure that we meet your expectations. We also invite you to share your ideas to help us go further. Please complete the survey below and feel free to forward it to anyone in your PCT community. Please click here and start the survey. It will take around 2 minutes.
It will be recalled that on December 7, 2023, an oral argument took place before the Court of Appeals for the Federal Circuit for In re Chestek PLLC. This appeal relates to the USPTO’s requirement that a trademark applicant reveal to the USPTO where he or she sleeps at night.
A transcript of the oral argument is now available. You can listen to the audio recording of the oral argument here. It is important to realize that the transcript that follows is based upon best efforts, but the authoritative source is the audio recording.
The recording is about 30 minutes in duration. The judges on this panel were:
- Judge Alan D. Lourie
- Judge Raymond T. Chen
- Judge Kara F. Stoll
The two speakers at the lectern were:
- Andrew Grossman, for appellant in re Chestek PLLC
- Mary Beth Walker, for appellee the USPTO
As a reminder you can see the appeal briefs here.
The transcript follows.
(Update: a transcript of the oral argument is now available. )
As I wrote recently (blog article) I will be an observer at the oral argument for In re Chestek PLLC. It will be possible to listen to a live stream of the oral argument here. The session begins today at 10AM Eastern Time. A case called IOENGINE, PLLC v. lngenico Inc will go first (taking an estimated 40 minutes) and then the oral argument for In re Chestek LLC will take place. To prepare for the event you may wish to review the briefs. You can see:
(Update: a transcript of the oral argument is now available. )
(Update: how to prepare for the oral argument.)
I plan to attend the oral argument on Thursday, December 7, 2023, as an observer in the case of In re: Chestek PLLC. See Notice of Oral Argument. This will be at the Court of Appeals for the Federal Circuit, at Courtroom 203, 717 Madison Place NW in Washington, DC.