A letter captioned THIRTY-ONE PATENT PRACTITIONERS got mailed today to Drew Hirshfeld, the Commissioner for Patents. You can see the letter here and you can track its progress through the US Postal Service here. The letter urges the USPTO to make four changes in its ways of handling the DAS (Digital Access Service) system administered by WIPO. Continue reading
On January 30, 2020 the USPTO published a Notice of Proposed Rulemaking to fix what it thinks is a problem with its Foreign Filing License rules, 37 CFR § 5.11 et seq.
The background to all of this is that in the spring of 2016, WIPO announced that soon its ePCT system would be available as a way to generate ZIP files for use in filing PCT applications in EFS-Web (at RO/US). Shortly after WIPO announced this imminent new feature of ePCT, on May 6, 2016 the USPTO published a Federal Register notice giving very scary warnings to patent practitioners about the use of the ePCT system to generate such ZIP files. The May 6, 2016 Federal Register notice had the unfortunate effect of scaring many US patent practitioners away from making any use at all of the ePCT system.
My best guess is that nobody will file any comment suggesting any change in the wording of the proposed rule change.
The main problem that needs fixing, I suggest, is not so much the wording of the FFL rules themselves, but rather the fact that this Federal Register notice dated May 6, 2016 has been dangling in front of US patent practitioners for more than three years now, continuing to give its very scary warnings about the use of the ePCT system in connection with filing PCT applications in EFS-Web. The main problem that needs fixing is that when the USPTO promulgates its new FFL rules some time after March 30, 2020, as it nearly surely will, USPTO needs to expressly walk back the May 6, 2016 Federal Register notice. The opportunity to do this will present itself when the USPTO publishes its Federal Register notice promulgating the Final Rule.
On February 8, a group of twenty-one patent practitioners filed a comment in this proceeding. You can see it here. A main point in that comment is to remind the USPTO of the need for this express walk-back of the May 6, 2016 FR notice.
A second point made in the comment is to urge the USPTO to make its procedure for updating of bibliographic data in pending US patent applications more user-friendly, for example along the lines of the Rule 92bis “action” in ePCT.
The comment period closes on March 30, 2020. My hope is that readers will file their own comments to the USPTO’s rulemaking proceeding, which you can do here. One easy way to comment, if you find yourself in agreement with the twenty-one patent practitioners, is simply to file a comment adopting the recommendations of that comment.
You might wonder which PCT Receiving Offices get selected most often by PCT filers. For many years the top Receiving Office was consistently RO/US (the USPTO). In 2019 this changed. Continue reading
The Netherlands Patent Office has just joined the long list of patent offices around the world that have pulled the plug on their fax machines. See this notice dated February 6, 2020 in the PCT Applicant’s Guide.
Other recent blog articles about this kind of thing:
(Update: The letter got sent on February 22, 2020. See blog post.)
In the letter, the signers ask four things.
- The signers ask that the USPTO discontinue its present practice of intentionally and actively aging PDX and DAS retrieval requests. They ask instead that going forward, the USPTO retrieve priority documents from PDX and DAS at the time that the applicant requests such retrieval. See for example this blog article and this blog article.
- The signers also ask that USPTO discontinue the PDX system, so that going forward, priority document retrieval from the EPO can take place through the DAS system. See for example this blog article.
- The signers suggest that Form PTO/SB/38 be reformatted so that the boxes for the important information (application number, DAS access code, filing date, Office of first filing) be large enough to permit text to be entered in a font that is easily read by the human eye even after the form has been degraded in the e-filing process. See this blog article.
- Finally, the signers ask that USPTO become a Depositing Office with respect to international patent applications (PCT applications) that have been filed at the RO/US (the receiving office of the USPTO). See this blog article.
To see the letter, and to see how to sign it, click here.
(Update: A letter got sent on February 22, 2020 to the Commissioner for Patents at the USPTO, asking the USPTO to stop its foot-dragging on retrieval of electronic certified copies from DAS and PDX. See blog post.)
Here is the setup for today’s hypothetical question. Your docket desk has contacted you to let you know that:
- the crucial 4-and-16 date is imminent for one of your recently filed US utility patent applications in which you have made a Paris Convention priority claim, and
- the PDX/DAS people at the USPTO have not yet retrieved an electronic certified copy of your priority application from the foreign patent office.
You must now figure out whether to file an Interim Copy of the priority application at the USPTO.
This blog article offers a summary of Best Practices comments about this from some very experienced patent practitioners. Continue reading
If you are going to try to get a US patent from a PCT application, there are two possible paths — US national phase entry (also called “a 371 case”), and the filing of a bypass continuation. How does this choice affect how long you have to wait to get a Filing Receipt? If you pick the bypass route, the work gets done by the same folks who handle other ordinary patent applications. It is OPAP (Office of Patent Application Processing). These days OPAP often mails a Filing Receipt very promptly. On the other hand, if you pick the national-phase-entry route, the work gets done by DO/EO/US. And this office often takes a very long time to mail a Filing Receipt. But some people have figured out how to get a very prompt Filing Receipt from DO/EO/US. It is with some reluctance that I will now reveal how they do it. Continue reading
It is my honor to post the 2019 Toteboards. These are:
- the eighth annual US Design Patent Toteboard
- the fifth annual US Trademark Registration Toteboard
- the fifth annual US Utility Patent Toteboard
- the first annual US Plant Patent Toteboard
These Tote Boards rank the top patent and trademark firms for carrying out filings in 2019 in these categories. The 2019 Toteboards join the previous fifteen Toteboards which go back as far as 2012.
If you are a US patent practitioner, of course you should be subscribed to the EFS-Web listserv. Here is a recent post to that listserv that prompted today’s blog article:
I swear I read something about a new PTO program for automatically listing all submitted and cited prior art on continuations and divisionals–to stop people from re-filing everything again. But, I cannot find anything today.
Was I dreaming? If not, is this working?
And yes there is a new PTO program for this, as I will explain. Continue reading