Yet another AIA trap for the unwary

We are all accustomed by now to the very important trick of “aging the preliminary amendment”.  When we file a transition application (an application filed on or after March 16, 2013 which is tied to some application filed before that date) the usual mistake is to file the preliminary amendment on filing day.  The reason it is usually a mistake is that years later in litigation, the infringer will howl that the preliminary amendment added new matter, and that that new matter had been claimed, and that the “new” law of patentability should have been applied to the case rather than the “old” law of patentability that was actually applied to the case (because you refrained from “checking the box” in the ADS).

So the malpractice-avoiding strategy for many fact patterns is the by now very familiar practice of “aging the preliminary amendment”.  We file the transition case, and then wait for midnight to pass in Virginia.  Only then do we file the PA.  Later the Examiner will determine whether or not the PA contains new matter.  If the Examiner enters the amendment, this counts as an express determination by the Examiner that the PA must not have contained new matter.  This denies the infringer, in litigation, any opportunity to howl about the case having supposedly been examined using the “wrong” law of patentability.

Which gets us to the latest trap for the unwary.

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How to know whether USPTO has recognized your patent Power of Attorney?

There are lots of situations where USPTO will refuse to do what you want if USPTO thinks that you are not the “attorney of record”.  Filing any of a variety of EFS-Web auto-granted actions such as a Terminal Disclaimer.  When you try to do any of these things in an application file, the EFS-Web system asks you to type in your registration number and will look up that number in the Palm database for the application file.  If EFS-Web thinks you aren’t the attorney of record, it will halt and refuse to let you move forward.

As another example it is impossible to get the auto-granted petition to withdraw as attorney, unless the Palm system thinks you are the attorney.

You never know when one of these situations might come up without warning, and you would need to get such a filing done.  Which means that as a general rule you should be filing a Power of Attorney in each case.  And as a general rule you should docket carefully to check to make sure the USPTO actually recognizes the Power of Attorney.  Then when a crunch time comes, such as the need to urgently file a Terminal Disclaimer, or get yourself withdrawn as attorney, you will actually be able to get the task done.

And as it turns out, at least two of USPTO’s ways for you to supposedly learn whether or not the USPTO recognizes the Power of Attorney are flawed and can’t be trusted.

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Slow Fedex costs more than fast Fedex

fedex-anomalyWhenever you generate a Federal Express shipping label, you reach a place where you have to pick which service you want.  In general you would expect that the faster service costs more than that slower service.  But no!

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PPH petition backlog — four months and counting

(Followup posting here.)

USPTO’s internal standard for attending to PPH petitions is two months. Well over four months have passed since the last time we saw the USPTO decide a PPH petition.  Our oldest PPH that stands unattended-to by the USPTO was filed August 26, 2014, a full four months ago now.

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USPTO will be closed Friday, December 26

The USPTO will be closed Friday, December 26, 2014.  Any action or fee due on Friday, December 26, 2014, would be considered timely if filed on the next succeeding business day, specifically, Monday, December 29, 2014.  You can see this on the USPTO web site here and here.

A big thank you goes to Bryan Wheelock and Matthew Hintz who provided the citations to the items on the USPTO web site.

Yet another nice person (Scott Barrett) points out that apparently this closure was announced by the White House on December 5, 2014.

Ghost art unit apparently disbanded

On November 19 I blogged about the “Ghost Art Unit” at the USPTO.  This was art unit 2910, headed by SPEs Cathron Brooks and Joel Sincavage.  This was a curious art unit with no Examiners.  Our firm had some fifteen design patent applications stalled in this art unit.  The cases had no First Office Action Prediction, which was no surprise given that the art unit had no Examiners.  A comment by a USPTO person gave me the impression that a couple of thousand design patent applications, all GUI (graphical user interface) applications, were assigned to this art unit. Continue reading

Registering a sound mark

USPTO’s grant this week of a trademark registration for Ant-like Persistence reminds me of the trademark registration which we received a couple of years ago for a sound mark.  Long-time members of the E-Trademarks listserv will recall this grant which happened about four years ago.  We use this sound mark when we do webinars and audiovisual recordings.

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A tip of the hat to the TTABlog

Yesterday I was delighted to see that John L. Welch had given a shout-out onClipboard02 his very popular TTABlog to an article in my Ant-like Persistence blog.  This was in his TTABlog Flotsam and Jetsam, Issue No. 15.  If you’ve not already done so, you should subscribe to the TTABlog.  John was doing blogging before it was trendy, for over a decade now, and his blog has probably at least ten times as many followers as mine has.  So it’s very nice and very gracious for him to have linked to my blog.  I estimate that his link brought at least a hundred new viewers to my blog.

On the subject of intellectual property blogs, there are other important blogs that you should subscribe to.  These include the many sponsors of Meet the Bloggers, a moveable feast that has turned up at INTA meetings since the San Diego meeting in 2005.  John has sponsored Meet the Bloggers many times, as have:

I’d guess there will likely be an eleventh annual Meet the Bloggers reception at the INTA meeting in San Diego in 2015.

And of course if you have not already done so, you should subscribe to Dennis Crouch’s Patently-O Blog.