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
(I am delighted to offer this guest post from Beijing Elite Group Intellectual Property Law Office which is a Chinese patent law firm. Until they told me about this imminent change in Chinese design protection law, I knew nothing about the imminent change.) US filers who are considering filing for design patent protection in China will find this article to be very interesting.
Why is June 1, 2021 important for applicants of Chinese design patents?
As you may know, there are three types of patents in China: patents of invention (similar to a utility patent in the US), utility models, and design patents. The design patent protects any new ornamental design of the shape, the pattern, or their combination, or the combination of the color with shape or pattern, of a product.
A first reason why June 1, 2021 is important — broken-line practice. In some design protection Offices (including the US), it is possible to use broken lines to indicate portions of the design that are not claimed. It has not, until now, been possible to use broken lines in this way in China. For example, a bottle-neck cannot be protected solely if it cannot be separated from the rest of the bottle. Starting on June 1, 2021, it will be possible to make use of broken-line practice in China.
The availability of broken-line practice in China will be tied to the filing date of the particular design patent application. Thus, for example, if an applicant is considering filing a Chinese design patent application that claims priority from a non-Chinese design application that makes use of broken-line practice, and if the end of the six-month priority period falls on or after June 1, 2021, then the applicant might wish to consider postponing the filing of the Chinese design patent application until on or after June 1, 2021.
If a Chinese design patent application was filed before June 1, 2021 (and is thus not able to make use of broken-line practice), then it might be thought that an applicant could file a divisional application in China on or after June 1, 2021, making use of broken-line practice. We are uncertain, however, whether the new law will apply to divisional applications filed on or after June 1, 2021, tied to a parent case filed before that date.
Currently, when you have drawings in broken lines, the Chinese Patent Office will either ask you to remove the broken lines or change them into solid lines. However, the applicant cannot do it one way (for example, removing the broken lines) in the current case and file a divisional application in the other way (for example, changing the broken lines into solid lines). With this partial design protected, we do not know for sure whether the US continuation practice, for example, the parent case is all in solid lines and the continuation has some solid lines changed into broken lines to broaden the scope, is permissible.
A second reason why June 1, 2021 is important — longer patent term. Another benefit for filing the design application on or after June 1, 2021 is that the patent term is extended from 10 years from the Chinese filing date to 15 years. (The purpose of the patent term change is to help China to get ready for membership into the Hague Agreement.) This is thus a second reason to postpone the filing of a Chinese design patent application if circumstances permit the applicant to do so.
My thanks to Beijing Elite Group Intellectual Property Law Office for sharing this guest posting.
Here are the results for the 2020 US Tote Boards.
The firm ranked first in filing of granted US plant patents in 2020 is Birch, Stewart, Kolasch & Birch, LLP. The runner-up is Leydig, Voit & Mayer. This is the second annual US Plant Patent Tote Board.
The firm ranked first in filing of granted US design patents in 2020 is Banner Witcoff. The runner-up is Sterne, Kessler, Goldstein & Fox P.L.L.C. This is the ninth annual US Design Patent Toteboard.
The firm ranked first in filing of granted US utility patents in 2020 is Oblon, McClelland, Maier & Neustadt, L.L.P. The runner-up is Cantor Colburn LLP. This is the sixth annual US Utility Patent Toteboard.
The firm ranked first in filing of granted US trademark registrations in 2020 is Muncy, Geissler, Olds & Lowe, P.C. The runner-up is Fross Zelnick Lehrman & Zissu, P.C. This is the sixth annual US Trademark Registration Toteboard.
The USPTO makes much of the importance of receiving information in computer-readable formats. For example the USPTO has proposed to charge a $400 penalty to the patent applicant who would fail to provide the body of a patent application in Microsoft Word format. Why, then, does the USPTO so consistently fail to practice what it preaches? For example when the applicant provides issue-fee information (assignee name and attorney-agent-or-firm information) in computer-readable format, the USPTO discards the provided computer-readable characters and hand-keys it, often making mistakes (keying “Radom, Poland” as “Random, Poland” or keying my name “Oppedahl” as “Oppendahl”). The most recent glaring example of this has revealed itself in USPTO’s mishandling of incoming designations from international design applications, as I will describe. (These are the applications having application numbers in the series code “35”.) Continue reading
The results are posted. See the tote board results.
I am grateful to the many loyal readers who have gently reminded me that I need to organize the 2020 Tote Boards. You can see the past Tote Boards here. These Tote Boards are part of a tradition that extends back to 2012 when I published the first Design Patent Tote Board. Please send in your numbers now. We will close the entries in two weeks, that is, on Friday, April 2, 2021. Here are the four Tote Boards for which your numbers are needed.
2020 US Plant Patent Tote Board. This will be the second annual plant patent toteboard. This is for granted US plant patents with issue dates falling in the range of January 7, 2020 to December 29, 2020. About 1398 US plant patents issued in 2020. How many of them have your firm name on the front page? A typical search string in the USPTO patents full-text database for plant patents might be:
APT/6 AND ISD/2020 and (lrep/oppedahl or lrep/oppendahl)
To send in your numbers for US plant patents, click here. We will close the entries in two weeks, that is, on April 2, 2021.
2020 US Design Patent Tote Board. This will be the ninth annual design patent toteboard. This is for granted US design patents with issue dates falling in the range of January 7, 2020 to December 29, 2020. About 34876 US design patents issued in 2020. How many of them have your firm name on the front page? A typical search string in the USPTO patents full-text database for design patents might be:
APT/4 AND ISD/2020 and (lrep/oppedahl or lrep/oppendahl)
To send in your numbers for US design patents, click here. We will close the entries in two weeks, that is, on April 2, 2021.
2020 US Utility Patent Tote Board. This will be the sixth annual utility patent toteboard. This is for granted US utility patents with issue dates falling in the range of January 7, 2020 to December 29, 2020. About 352000 US utility patents issued in 2020. How many of them have your firm name on the front page? Yes you may include granted reissues in this total if you wish. A typical search string in the USPTO patents full-text database for utility patents might be:
APT/1 AND ISD/2020 and (lrep/oppedahl or lrep/oppendahl)
To send in your numbers for US utility patents, click here. We will close the entries in two weeks, that is, on April 2, 2021.
2020 US Trademark Registration Tote Board. This will be the sixth annual trademark toteboard. This is for granted US trademark registrations with issue dates falling in the range of January 7, 2020 to December 29, 2020. About 283386 US trademark registrations issued in 2020. How many of them did your firm prosecute to registration? (It is not necessary that your firm filed the application, merely that your firm prosecuted the case to registration.)
To send in your numbers for US trademark registration certificates, click here. We will close the entries in two weeks, that is, on April 2, 2021.
As I reported to you (blog article) on September 15, 2020, today is the day that the Mexican Institute of Industrial Property joins DAS. It is both a Depositing Office and an Accessing Office.
Once again I note that the logo for IMPI is a Möbius strip!
IMPI is a Depositing Office for:
- patent applications
- utility model applications
- industrial design applications
In addition, RO/MX is a Depositing Office for purposes of PCT applications filed in RO/MX.
This offers a reminder that Mexico is one of the seventy-six Offices that provides utility model protection.
IMPI is an Accessing Office for:
- international design applications (Hague applications) filed at the IB
- industrial design applications
- patent applications
- utility model applications
Which intellectual property firm in Mexico is the most trendy, modern, and up-to-date? Send me four DAS access codes:
- a DAS access code for a Mexican patent application
- a DAS access code for a Mexican utility model application
- a DAS access code for a Mexican industrial design application, and
- a DAS access code for a PCT application filed in RO/MX.
I can then post Certificates of Availability (with a few digits of the application numbers blurred) for those four applications, and I will then be able to recognize your firm as the most trendy, modern and up-to-date intellectual property firm in Mexico.
On October 25 I blogged that US filers filing documents at the International Bureau needed to pay extra close attention to what time it is in Switzerland. The reason is that in Switzerland, Daylight Saving Time stopped happening on October 25. But did not happen on that day in the US. Continue reading
Here’s a fun thing to notice. These days the USPTO is picking up an extra $27 from the IB with each inbound Hague designation. Continue reading
It’s that time of year again. The time of year when it is important to keep track of the fact that Daylight Saving Time is different in Switzerland from the way it is in the United States. This is important because you might be in the US, and you might be e-filing (or fax-filing) some document with the International Bureau of WIPO. Continue reading
Yes, today is the day that Italy joins the DAS system as a Depositing Office. You can read about it here.
Who is the most trendy, modern and up-to-date Italian intellectual property firm? Be the first to provide to me an application number, filing date, and DAS access code for a design application, a patent application, a trademark application, a utility model application, and an RO/IT application, and I will recognize your status as the most trendy, modern and up-to-date in Italy. (I will blur part of the application number in the Certificates of Availability that I obtain and post.)