Monday, October 14, 2019 will be a federal holiday in the District of Columbia. This means the USPTO will be closed. This means that any action that would be due at the USPTO on October 14 will be timely if it is done by Tuesday, October 15, 2019.
USPTO published a Notice of Proposed Rulemaking some months ago, proposing to hit the filer with a $400 if the filer files a patent application in a format other than Microsoft Word word processor format. (USPTO says “DOCX” but realistically the only way a filer can get USPTO’s system to work accurately is to generate the word processor file with Microsoft Word, and even then, only with Microsoft Word for Windows, in a very recent version of the software.)
I published two comments (here and here) explaining some of the reasons why I feel the USPTO got it wrong on this. And I joined seventy-two other patent practitioners in signing a comment that explored in quite some detail some of the things that USPTO got wrong on this.
I imagine most of us nowadays have started at least trying to e-file in DOCX, just to try to find out how bad it is so that we can get ready for how bad it will be when USPTO starts charging the $400 penalty. And recently I realized that there is a very interesting fact pattern that I am quite confident that no one at the USPTO thought about at all when it promulgated this Rule — the fact pattern where the initial filing is in a non-English language. Continue reading
On October 2, 2019, Samoa deposited the Instrument of Accession to the Patent Cooperation Treaty with the International Bureau of WIPO. This means that the PCT will come into force for Samoa on January 2, 2020.
This brings to 153 the number of member States for the PCT.
Samoa already belongs to Madrid Protocol. Samoa has joined the Hague Agreement at the same time as the PCT. So on January 2, 2020 Samoa will achieve the trifecta for international filing mechanisms.
The two-letter code for Samoa is “WS”.
Every now and then we receive a notice like this after paying an Issue Fee. It is a Notice to File Corrected Application Papers (“NTFCAP”), and it tells us that our case will go abandoned if we fail to hand in a Substitute Specification, identical to what is already in the file except that it has to have page numbers added. Continue reading
USPTO says that if you check this box, the second authentication factor will not be not needed during signin for the next 24 hours.
This is, of course, false. Or more accurately, it is almost always false. The check box does occasionally save the USPTO customer from having to carry out two-factor authentication when logging in to a USPTO system. But usually it does not work. Continue reading
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
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:
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.
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.
I am fascinated to see the following information on the DAS page of the WIPO web site:
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.