Every now and then I am astonished to see the USPTO getting something right. Here is an example of the USPTO getting something right — what it amounts to is that I filed a divisional patent application and the USPTO filed for me the IDS that I was getting ready to file. Yes, of course normally when one files a continuation or divisional application, one faces the tedious task of preparing an IDS in the child case to disclose all of the references from the parent case. Here, oversimplifying it slightly, I have a case where the USPTO filed that child-case IDS for me. I won’t have to prepare and file that IDS. You might wonder, what’s going on here? You might wonder, why is the USPTO doing my work for me? If you wonder these things, then read on. Continue reading
It can be very difficult to log in at Patentcenter, which is the system that USPTO intends will replace Private PAIR and EFS-Web. Given that USPTO plans to shut down both Private PAIR and EFS-Web in the near future, what follows from this is that the USPTO needs to fix the many design flaws and software bugs in Patentcenter. Many of the flaws and bugs in Patentcenter have been outstanding since its alpha-test launch more than two years ago, and have not been fixed even after more than two years. Today’s blog article talks about a trick that often helps with the login defects in Patentcenter. Continue reading
It’s like trench warfare, trying to get the USPTO to clean up its act on how it handles Powers of Attorney. The war is not over, but one small battle has perhaps moved things forward slightly. Continue reading
US practitioners toss the phrase “incorporation by reference” into patent applications as a matter of routine. But in the world of the Patent Cooperation Treaty, and in many designated Offices in which one might enter the national or regional phase from a PCT application, there are only very limited circumstances in which an applicant can rely upon incorporation by reference.
Attend this webinar, presented by WIPO, to learn just what the limited circumstances are in which a PCT applicant may rely upon incorporation by reference. The presenters will be Matthias Reischle-Park, Deputy Director and Hanna Kang, Legal Officer, PCT Legal and User Relations Division. Continue reading
WIPO will be providing a two-hour overview of ePCT and its functionalities. Attendees will be shown how to do several important things, including:
- how to file PCT applications online,
- how to perform online Actions,
- how to share access rights, and
- how to best manage applications by using the many practical features offered by ePCT.
The speakers will be Viviane Gross, Head, PCT eServices, and Pascal Piriou, Customer Service Assistant. Continue reading
For many years, those who e-file genetic sequence listings have prepared and filed the listings using a standard called ST.25. A successor standard fetchingly named ST.26 has been agreed upon by all of the patent offices of the world. It is XML-based. A software tool has been developed by WIPO which users can use to create, edit, and verify ST.26 sequence listings.
I have set up a new listserv named ST26@oppedahl-lists.com for email discussions relating to the use of ST.26. This listserv will chiefly be of interest to those who work with sequence listings when they file patent applications.
This listserv joins the many other intellectual-property related listservs hosted by OPLF, for example for trademark practitioners, for users of the Patent Cooperation Treaty, for users of USPTO’s Patentcenter, for users of the Madrid Protocol, for protection of industrial designs, and for protection of copyrights.
To find out more about the new ST.26 listserv or to subscribe to the ST.26 listserv, click here.
This seminar is an opportunity to find out more about the services provided by the EPO and the latest developments in the PCT system:
- PCT procedure before the EPO as International Authority
- New PCT Rules (as of 1 July 2020)
- Online filing possibilities
- Register Alert, Mailbox, ePCT
- Payments and Reimbursement
Only 400 seats are available for this program, which is free of charge. Register now to reserve your place!
On April 7, 2021 I presented a webinar entitled Worry-free use of ePCT with EFS-Web and e-filing PCT applications at the USPTO. (I publicized it in this blog article on March 23, 2021.) More than 400 people attended. Now a video recording of the webinar is available, an hour and 49 minutes in duration. You can download the presentation materials here and you can watch the video recording here.
The webinar attendees and I had the great good luck that Ann Bardini, who is a WIPO person who is one of the developers of the ePCT system, was able to join at the last minute as a co-presenter for this webinar.
This webinar explained how and why it is that you no longer need to worry about whether it is okay to use ePCT when filing PCT applications at the USPTO.
On May 6, 2016 the USPTO published a Federal Register notice warning filers against the use of ePCT in connection with filing of PCT applications at the USPTO. The notice identified an aspect of 37 CFR § 5.15 (the “Foreign Filing License rule”) which, as interpreted by the USPTO, supposedly put into question the circumstances in which a filer could use ePCT to generate a ZIP file for uploading to EFS-Web in the filing of a PCT application.
On September 30, 2020 the USPTO promulgated a change to 37 CFR § 5.15 which lifted this cloud over the use of ePCT.
In this webinar, I explained the many reasons why it is a Best Practice (and indeed always was a Best Practice, notwithstanding the 2016 Federal Register notice) to use ePCT whenever possible in the process of filing a PCT application at the USPTO. I explain what the cloud was that had been placed over ePCT in 2016, and I explain how and why that cloud has been lifted. I described how to comply with Foreign Filing License rules in the filing of PCT applications, including use of RO/US or RO/IB, and including cases where you do or do not have an FFL from your priority application that is broad enough to cover the entirety of your PCT disclosure.
Who should watch this recording? A chief target to watch this recording is the person who has been scared about using ePCT ever since the USPTO published that Federal Register notice on May 6, 2016. Hopefully by watching this recording, you can overcome any fear you may have had during these past five years about running afoul of export control laws or foreign filing license violations, a fear that may have arisen because of the wording of the 2016 notice.
Another target person to watch this recording is the person who has known all along that it is a Best Practice to use ePCT to the full extent possible in all aspects of PCT filings, and who has not been able to do so because your supervisor or your client has been scared of using ePCT because of that 2016 Federal Register notice, and has told you that you are not allowed to use ePCT. Hopefully by watching this recording, you will be able to gain information that you can pass along to others such as that supervisor or client, to help them overcome their concerns.
Finally there may be some who were never aware of this 2016 Federal Register notice, but simply have not been using ePCT, and who keep hearing about ePCT and have reached a realization that there is probably something important and smart about using ePCT or otherwise people would not keep talking about ePCT all the time. If you are in this category, please watch this recording. You can snooze through the part about why it was that in the past there were so many people who were scared to use ePCT, and when we get to the part about why it is smart to use ePCT now, you can perk up and you can learn why it is now a Best Practice to use ePCT as much as you can in all aspects of the PCT filing process.
Want to make sure you don’t miss out on other helpful webinars in the future? Make sure you subscribe to this blog.
On April 1, 2021 I presented a webinar entitled Docketing PCT for US filers. (I publicized it in this blog article on March 23, 2021.) More than 400 people attended. Now a video recording of the webinar is available, an hour and 15 minutes in duration. You can download the presentation materials here and you can watch the video recording here. Continue reading