Category Archives: PCT

Backlog at DO/EO/US

· · 6 Comments

These days if you enter the US national phase you can expect to wait at least three months for your Filing Receipt.

We try to track this kind of thing pretty closely in our active files.  For a domestic filing receipt the delays these days are a mere 2-3 weeks.  But if the filing receipt that you are waiting for is a DO/EO/US filing receipt, you will have to wait three months.

This three months is, these days, the “best case”.  This assumes that you e-filed the case (not paper) and that you did not have any missing parts (no missing inventor declaration, no missing translation into English, no missing fees).  This assumes that you provided not only an ADS but also a computer-readable ADS but not only that, you provided it in the first EFS-Web submission meaning that the bibliographic data auto-loaded into Palm.  You also provided an Express Request for immediate national-phase entry if the other requirements were satisfied before the end of the 30 months.  Put plainly, you did everything that you possibly could to make as easy as possible the work of the DO/EO/US person.

With all of this, the waiting time for a Filing Receipt these is three months.

If, however, you do anything that requires the DO/EO/US person to do actual work, like not having paid all of the fees, not having provided the inventor declaration, etc. then the waiting time for the Filing Receipt will be much longer.

How long are you having to wait for your US national phase Filing Receipts?  Post a comment below.

 

Posted in PCT |

US filers and filing at WIPO and daylight saving time

· · Leave a comment

Keep in mind that most locations in the US will turn off daylight saving time today, but today is not the day that Switzerland will turn off daylight saving time.  (Switzerland turned off DST a week ago.)

Those who are filing documents at the International Bureau — documents that need a same-day filing date — should check to make sure they know what time it is in Switzerland as of today.

The main point here is that for a US filer, everything is now “back to normal”.  Whatever time zone offset a US filer is accustomed to between his or her time zone and Geneva, that offset is back to normal.

ePCT will tell you what time it is in Switzerland.

Daylight saving time and WIPO

· · 2 Comments

Keep in mind that Switzerland will turn off daylight saving time today.  Those who are filing documents at the International Bureau — documents that need a same-day filing date — should check to make sure they know what time it is in Switzerland as of today.

For US filers, keep in mind that the US will not turn off DST today.  The US will turn off DST a week from now.

US filers who are getting ready to file a document at the IB should thus pay close attention during this next week to what time it is in Switzerland.

The practical effect for most US filers is that for the next week, you get an extra hour to e-file.  For example if you are in the Mountain Time Zone, normally you rush to file by 4PM if need a same-day filing date at the IB.  But for the next week you can file as late as 5PM and you will still get a same-day filing date at the IB.

Those who are e-filing in ePCT can readily check any time to see what time it is in Geneva, because at the top of any ePCT user screen it says what time it is in Geneva.  Here is a screen shot.  For example right now it is 4:44 AM Mountain Time and as you can see it is 11:44 AM in Geneva.

What filing date you get when you e-file at RO/IB?

· · 7 Comments

What we are all accustomed to is that when we are picking a Receiving Office for the filing of a new PCT application, a substantial drawback of RO/IB is that we have to worry about the time zone.  For the US-based filer who is selecting between RO/US and RO/IB, the typical difference is six hours.  A filer in the Mountain Time Zone, for example, who is rushing to get a same-day filing date would need to e-file by 10PM if e-filing in RO/US but would typically need to e-file by 4PM if e-filing in RO/IB.

What I did not realize, until quite recently, is that things are quite different when one is e-filing a Hague application (in other words, an international design application rather than an international patent application). Continue reading →

Learn about some advanced PCT in New York on November 8

· · 1 Comment

There’s a special opportunity to learn some advanced PCT in Manhattan on November 8.  Yours truly is the instructor.

The course is Patent Administration II: Building on a Solid Foundation, a sequel to Patent Resources Group’s trusted course for patent support professionals.  Early registration pricing is available through October 22.  For more information or to register, click here.

This course is intended for patent Support Professionals who have taken PRG’s Patent Administration:  A Foundation for Success course or who have at least 3 years’ experience. It is a four-day course and I will be teaching day 4, including these topics:

  • Knowing when and how to file PCT Declarations with a PCT Application
  • Leveraging use of the Patent Prosecution Highway with PCT
  • Use of the new Collaborative Search and Examination program in PCT
  • Using ePCT to send SFD’s (subsequently filed documents) to International Searching Authorities
  • Advanced use of the WIPO DAS (document access service) including Certificates of Availability and setting up Alerts

This program includes an office-by-office discussion of the various PCT Declarations such as declaration number 2 (entitlement to file) and declaration number 3 (entitlement to claim priority).  So far as I know, no PCT course has ever until now treated PCT Declarations in such detail.  This is a unique and first-time opportunity for patent support professionals to learn really advanced patent topics including really advanced PCT topics.

Posted in PCT |

A guest post from an alert reader

· · 5 Comments

[Note from Carl Oppedahl:  I received this text from a reader who suggested that I post it as a guest blog article.  It is posted anonymously, for reasons that will become clear.  Maybe you find it as interesting to read as I did!]

This is a long e-mail, but I hope that you will read it.  I want to thank you for the blog that you posted last Saturday, because it saved me from a major malpractice exposure.  Continue reading →

Posted in PCT |

ISA/AU search fee dropped today

· · Leave a comment

IP AustraliaThe fee to be paid by a US PCT filer for a search carried out by IP Australia dropped today, from $1722 to $1631.

I mentioned this in a previous blog post.

You will not need to worry about accidentally paying an incorrect fee amount, because the e-filing systems have already been updated to reflect the new fee amount.  For filers in RO/US, the EFS-Web system has already been updated.  And for filers in RO/IB, the ePCT system has already been updated.

Posted in PCT |

Malawi joins Madrid Protocol

· · Leave a comment

click to enlarge

On September 25, 2018, the Government of Malawi deposited its instrument of accession to the Madrid Protocol with WIPO’s Director General, making Malawi the 102nd member of the Madrid System, which now covers 118 countries. The Protocol will enter into force for Malawi on December 25, 2018.

Starting from December 25, a trademark owner in Malawi can file a Madrid Protocol application to pursue protection in one or more Offices outside of Malawi.  And starting from that date, a trademark owner outside of Malawi can file a Subsequent Designation to Malawi (or can file a new Madrid Protocol application designating Malawi).

It is recalled that the Patent Cooperation Treaty entered into force on January 24, 1978, initially with 18 contracting states.  But perhaps not all readers appreciate that Malawi was one of those initial 18 contracting states for the PCT!  Saying this differently, Malawi was more trendy, modern, and up-to-date about the PCT than most of the 152 present-day members of the PCT.  Nobody joined PCT sooner than Malawi!

The two-letter code for Malawi is “MW”.