Category Archives: Hague Agreement

Time of day returns to normal for US filers filing at the International Bureau

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Readers will recall my blog post of two weeks ago in which I described that an American filer would (for a limited time of two weeks) have an extra hour during which to file a same-day filing at the IB.  Well, now it’s back to normal.  Now the drop-dead time for e-filing (or fax filing) is the usual 4PM (Mountain Time).

So for your PCT filing at the RO/IB, or your direct filing of a Hague Agreement design application, or your payment of a renewal for a Madrid Protocol international trademark registration, or an Article 19 amendment, or a PCT Demand … it’s back to normal.

Filing at the International Bureau and Daylight Saving Time

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It’s that time of year again.  The time of year when it is important to keep track of the fact that Daylight Saving Time is different in Switzerland from the way it is in the United States.  This is important because you might be in the US, and you might be e-filing (or fax-filing) some document with the International Bureau of WIPO. Continue reading →

Cambodia joins the Hague Agreement

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Cambodia deposited its instrument of accession to the Hague Agreement on November 25, 2016.  This event brings the number of Hague Agreement members to 66.

Cambodia now belongs to all three of the filing mechanisms — Madrid Protocol (as of June 5, 3015), PCT (as of December 8, 2016), and the Hague Agreement (as of February 25, 2017).

The two-letter code for Cambodia is KH.

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

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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.

Excellent guidance on Hague design drawings

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When you get ready to file an international design application (a “Hague application”) you have no choice but to try to figure out what to do about drawings, with the goal of (hopefully) satisfying the requirements of each Office that you are planning to designate.

In the early days of Hague, most Offices that belonged to Hague were “registration” Offices, meaning that they checked formalities but did not do much in the way of substantive examination.  But in recent times more and more Offices that have recently joined are Offices that do carry out some amount of substantive examination.  Perhaps the Office in which an applicant would be most likely to run into trouble would be the USPTO.

And indeed it is true that some Hague applications that designate the US have been running into problems because of the drawings.

WIPO, together with various of the designated Offices, have developed guidelines for applicants.  You can see the guidelines here.

These guidelines should be studied by any applicant that is planning to designate Hungary, Japan, Kyrgystan, South Korea, Moldova, Romania, Syria, or the US.

Keep in mind that for a US applicant, one option offered by the Hague Agreement is that the US applicant could designate the US.  (I call this a “hairpin turn”.)  Such a US applicant should likewise study these guidelines.

Uploading JPG files to your Hague case

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As patent practitioners have known for many years, if you were to try to upload a JPG file into EFS-Web, the system would puke on the file.

Until now, as I will explain.  It requires a bit of background.  In November of 2014 the USPTO answered a question that had been on everyone’s lips for many months, namely “What will the series code be for Hague cases?”  The answer turned out to be 35.  A year and a half passed, and in February of 2015 the USPTO assigned the first application number to a Hague case.  (It was 35/500001.)   What many people might not know is that if the application that you open in EFS-Web happens to be a “35” case, you can upload a JPG file.  Here is a screen shot that shows this:
hague03

 

What is the problem for which this new capability is the solution? Continue reading →

USPTO grants first-ever design patent from a Hague application

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The USPTO has granted the first-ever US design patent from an international design (Hague) application.

The international design application was filed pro se on May 13, 2015 by a German company called Schwan-Stabilo Cosmetics GmbH & Co. KG. The application was filed directly at the International Bureau and it designated Korea and the US.  It did not claim priority from any earlier application.

The IB published the application on June 5, 2015 and the USPTO received the application from the IB on that day. The USPTO gave application number 35/500,001 to the application.

The USPTO mailed a Filing Receipt on July 7, 2015. The case got assigned to an Examiner on October 6, 2015 and the Examiner allowed the case eleven days later. The USPTO sent the Notice of Allowance to the IB on October 20, 2015. The applicant paid the Issue Fee directly to the IB. The OB sent the Issue Fee to the USPTO on November 30, 2015.

USPTO issued the patent on April 26, 2016 as US Patent Number Des. 754922.  You can see it here.

No Assignment has been recorded for this application.  No IDS got filed in this application.  The application was never touched by US patent counsel.

Time of day at RO/IB returns to normal for US filers

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On March 13 I blogged that US filers filing PCT applications in RO/IB needed to pay extra close attention to what time it is in Switzerland.  The reason is that in the US, Daylight Saving Time happened on March 13.  But did not happen on that day in Switzerland.  This meant that for the past two weeks, a US-based filer in (for example) the Mountain Time zone would be able to e-file in RO/IB as late as 5PM and still get a same-day filing date.  This differed from the usual drop-dead time of 4PM.

Today (March 27, 2016) is the day that Daylight Saving Time happens in Switzerland.  The consequence of this is that the time difference between the US filer’s time zone and the time in RO/IB is back to normal.  So for a US-based filer in the Mountain Time zone, the drop-dead time returns today to the usual 4PM.

This change also affects a US-based filer filing a design application in the IB’s Hague Agreement e-filing system.