Best Practice when filing a PCT application – “pub preview”

When you file a PCT application, of course one of the things that you will do is take steps so that you can view your PCT application in ePCT.  Once the newly Clipboard01filed PCT application is visible to you in ePCT, then there is a Best Practice to be followed, namely proofreading the preview of the PCT publication.  Continue reading “Best Practice when filing a PCT application – “pub preview””

USPTO and Asian family names

There are many cultures, including those in Hungary, China, Japan, Korea, Singpore, and Vietnam, where the family name comes first and the given name comes after the family name.  For example Park Geun-hye, the president of South Korea, is the daughter of Park Chung-hee.  Park, the president’s first name, is her family name.  Geun-hye, the president’s last name, is her given name.

Unfortunately all too often the USPTO doesn’t get this.  Continue reading “USPTO and Asian family names”

Why we never use “micro entity” status

We are all accustomed to “large entity” and “small entity” USPTO fees.  A small entity gets to pay half price for most USPTO fees, as compared with what a large entity would have to pay.

Micro entity status has been available since the AIA happened in about 2012. A micro entity gets to pay half price for most USPTO fees, as compared with what a small entity would have to pay.  That amounts to one-fourth of what a large entity would have to pay.

In the three or so years that have passed, our firm has never even once made use of “micro entity” status for a patent applicant in the USPTO.  Why? Continue reading “Why we never use “micro entity” status”

An entity can be both large and small

It is all too easy to get into a rut, (a) telling clients that the way to figure out whether an entity is large or small is by counting the employees and (b) proceeding on the assumption that if a client was small in its previous patent application, then of course the client will likewise be small in its next patent application.

But an entity can be simultaneously large and small.

Continue reading “An entity can be both large and small”

IP torts and natural persons as defendants

A longstanding member of the E-trademarks listserv offered up an all-too-familiar fact pattern:

Scenario:  In-house counsel sends a cease-and-desist letter asserting non-existent trademark rights.  Assume the letter is sent in bad faith and constitutes unfair competition.
Question:  Since unfair competition is a tort and in-house counsel is acting within the scope of employment, I would assume this person is jointly and severally liable with the employer.  Thoughts?  Case law?

So can you go after the person who signed the letter? Continue reading “IP torts and natural persons as defendants”

A feature USPTO needs to add – permalinks

In Patentscope and ePCT, WIPO offers “permalinks”.  These are web links that you can copy and use elsewhere, such as intranets and emails to clients.   permalinkSimilarly in European Patent Register, EPO offers such web links.register

 

Indeed the TSDR system of USPTO offers URLs that can be used this way.  So why doesn’t USPTO offer such links?

Alert list member Henry Blanco White points out that USPTO provides complicated instructions for constructing links to particular records in the USPTO Patent Full-Text and Image Database.  It’s not simply a link that you can right-click on and save.  But it is apparently a way to construct a link.

USPTO needs to offer such links in Public PAIR and in Private PAIR.  USPTO also needs to offer such links in the Patent Application Full Text and Image Database.

(Updated June 23 to reflect that USPTO does offer constructable links in the USPTO Patent Full-Text and Image Database.)

Do your own patent application customer number changes!

Recently I blogged about three nice new Private PAIR features — USPTO nice again — this time letting you check customer numbers and Now you can update entity size yourself! and Get your own new USPTO customer numbers.  Here is a fourth nice new Private PAIR feature.  You can update the customer number associated with a patent application or patent yourself. Continue reading “Do your own patent application customer number changes!”