PCT Archives - Ant-like Persistence

Yet another thing the USPTO got wrong about its planned shutdown of EFS-Web

(updated to mention new trouble ticket CP153.)

The USPTO has announced (press release) that on November 8, 2023, seven weeks from today, it will shut down EFS-Web.  It looks like the USPTO has completely failed to give any thought to what this means for PCT applicants whose patent applications involve genetic and nucleotide sequences.  Continue reading “Yet another thing the USPTO got wrong about its planned shutdown of EFS-Web”

Patentcenter PCT-related defect is actually a feature?

I was gobsmacked during today’s USPTO webinar entitled How to make a smooth transition to Patentcenter.  The USPTO doubled down on a serious PCT-related defect in Patentcenter, saying that it is actually supposedly a feature, not a bug.

Everybody knows that you are not supposed to enter the US national stage twice from any single PCT application.  Or, to state it more plainly, it is legally impossible to enter the US national stage twice from any single PCT application.

Everybody knows this, that is, except the presenter in today’s USPTO webinar entitled How to make a smooth transition to Patentcenter.  This is a webinar that is intended to help experienced users of EFS-Web and Private PAIR make the transition to Patentcenter.

EFS-Web guards against the inadvertent duplicate entry into the US national stage from a PCT application.  Of course one of the stated design goals for Patentcenter, since its origin in 2018, is that all features from EFS-Web are supposed to be brought forward into Patentcenter.  Indeed the USPTO has announced “mission accomplished” for this stated design goal.  The USPTO says on its web site:

Patent Center has 100% of the functionality of EFS-Web, Public and Private PAIR …

This is patently false (blog article), but USPTO has not corrected this false statement.  One of the ways that USPTO has failed to provide “100% of the functionality of EFS-Web” in Patentcenter is that Patentcenter fails to guard against duplicate attempts to enter the US national stage from a PCT application.  This defect was reported to the USPTO on February 20, 2023 in trouble ticket CP99 (deep link to trouble ticket page).

During today’s USPTO webinar entitled How to make a smooth transition to Patentcenter, an attendee asked about this defect in Patentcenter.  I was gobsmacked to hear the USPTO presenter actually doubling down on the defect, stating that it is supposedly a feature, not a bug.  You can hear the words of the presenter here (MP3 file) and you can play the audio file here:

Here is a transcript:

Attendee question.  In EFS-Web, the system guards against a possible duplicate attempt to enter the US national stage from a particular PCT application.  Patentcenter fails to do so.  Why is that?

USPTO answer.  Stakeholder feedback indicated that Patentcenter may be implemented to allow more than one 371 filing, which may be desirable in situations where, for example, a unity-of-invention restriction was made during the international phase, to separate the claims into multiple groups.  So that was a great question, and hopefully that answer will shed some light on that for you.

Hopefully what will happen soon is that the USPTO will send out a corrective email message to everybody who attended today’s USPTO webinar, letting them know that the presenter was completely wrong about this.

And hopefully, what will happen soon is that the USPTO will correct this defect in Patentcenter, which was reported to the USPTO on February 20, 2023.

A reminder about training material for DO/EO/US

On December 10, 2019 I provided training material to the USPTO (blog article, training material) about PCT Declaration Number 4.  The idea is that a patent firm located outside the US might be trendy, modern, and up-to-date and might provide a signed inventor declaration (for later US purposes) at the time of filing a PCT application.  The idea is that perhaps 1½ or 2½ years later, when the US national phase is entered, the signed declaration of inventorship for US purposes would already be in the file!  The idea is that the formalities examiner in the DO/EO/US would take a look in the file and would pay attention to the presence of the signed PCT Declaration Number 4.

Unfortunately, all too often in recent months, we have had cases at the DO/EO/US where the formalities examiner at the USPTO fails to pay attention to the presence of the signed PCT Declaration Number 4 in our national-phase entry application file.  Just today, for example, in one of our national-phase entry applications, the formalities examiner at the USPTO mailed out an official Filing Receipt along with Form PCT/DO/EO/903 (371 Acceptance Notice) dated July 17, 2023 falsely stating that we had failed to provide a “properly executed inventor’s oath or declaration” for our inventor.

It is hoped that the USPTO will once again in 2023 provide the training materials to its DO/EO/US formalities examiners, so that they can avoid making this mistake in the future for other US national-phase applicants.

How to choose which subject for binge-watching?

PCT enthusiasts now have two subjects to choose from for binge-watching.  Just today I finished the video editing of the sixteenth webinar in the recently finished sixteen-webinar series on ePCT.  As a consequence, as of today, a PCT enthusiast may, if desired, binge-watch more than nineteen hours of webinar video about ePCT.  (You can see it here.)

This parallels the over fourteen hours of webinar video about PCT (as distinguished from ePCT) that are available for binge-watching here.  Yes, the PCT enthusiast has not one but two subjects available for binge-watching.

Learn how to receive ISA/EP correspondence electronically rather than by postal mail

Do you sometimes pick ISA/EP when you file a PCT application?  Is it a source of frustration that the communications from ISA/EP arrive only slowly, via postal mail, rather than electronically?  Would you like to learn how to set things up with an electronic EPO mailbox so that you can receive your ISA/EP communications electronically instead of by slow postal mail?  Continue reading “Learn how to receive ISA/EP correspondence electronically rather than by postal mail”

Recordings of many recent ePCT webinars are now available

I am by now part way through a series of sixteen webinars about the ePCT system.  Thirteen of the webinars have been presented, and there are three more webinars that you can register for (click here to register).  We were successful in recording the first thirteen webinars and the recordings have been edited into presentable form and have been posted for viewing.  So if you missed any of the first thirteen webinars, you can view the recording.  Here are the topics and links for viewing the thirteen recordings that have been posted so far. Continue reading “Recordings of many recent ePCT webinars are now available”

Who would find these four webinars to be of interest?

click to purchase

At this link you can see a plan for four webinars.  The goal is to cover the PCT forms that PCT applicants and agents receive most often.  Each webinar will be 90 minutes in length.  The goal is to cover the forms listed and discussed in Oppedahl on PCT Forms and PCT Docketing, shown at right.

The question is, would anybody actually want to attend these four webinars?  That’s what I would like to know.  I invite people to post a comment below.

Sign up for EPO webinar: PCT for US paralegals and patent agents

If you are a PCT user, you need to register for a webinar which EPO will present on May 9, 2023.  You can read about it, and you can register, here.

The webinar will take place starting at 10AM Mountain Time on Tuesday, May 9.  The webinar is free of charge.

The European Patent Office (EPO) is offering a 1½-hour online seminar for US paralegals and agents dedicated to the Patent Cooperation Treaty (PCT). This seminar is an opportunity to find out more about the services provided by the EPO and the latest developments in the PCT system as well as getting practical information on the related EPO’s online services.  Topics to be discussed include:

    • PCT procedure before the EPO as International Authority including practical examples
    • Payments and Reimbursement
    • New secure online access
    • Online filing possibilities
    • Electronic Mailbox for PCT agents/applicants
    • Questions & Answers

I think that for most US attendees, the most interesting topic will be EPO’s upcoming enhancements and improvements to its “electronic mailbox” system.  This is the system that permits the applicant to receive ISA/EP and IPEA/EP communications instantly rather than having to wait for such communications to arrive via postal mail.  This includes things like the ISR/WO and an Invitation to Pay Additional Fees.

Five more ePCT webinars available for signup

Many readers have signed up for the first eight webinars about ePCT.  (Details here.)  Now I have scheduled dates for five more of the webinars.  Here are the dates and times, and here are the links to register:

    • Webinar 9.  Thursday, April 27, 2023, 10AM Mountain Time.  Filing a new US PCT application in RO/IB using ePCT.  Click to register.
    • Webinar 10.  Tuesday, May 2, 2023, 10AM Mountain Time.  ePCT actions and communications with the IB.  Click to register.
    • Webinar 11.  Thursday, May 11, 2023, 10AM Mountain Time.  External signatures and PCT declarations.  Click to register.
    • Webinar 12.  Thursday, May 18, 2023, 10AM Mountain Time.  Sequence listings and ePCT.  Click to register.
    • Webinar 13.  Thursday, June 1, 2023, 10AM Mountain Time.  Docketing of PCT applications and making use of ePCT notifications.  Click to register.  Suggested companion purchase.

Time of day at the IB returns to normal for US filers

Two weeks ago I blogged (see blog posting) that US filers filing PCT applications in RO/IB needed to pay extra close attention to what time it is in Switzerland.  (And it was the same for e-filers in the Madrid Protocol system.)  The reason is that in the US, Daylight Saving Time happened on March 12.  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 26, 2023) 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.