Monthly Archives: July 2015

Maximizing patent term (was “certified copy needed?”)

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A member of the EFS-Web listserv, an email discussion group for patent practitioners, posed this question:

We filed a US continuation application claiming priority to a PCT application filed in the EP receiving office.  (The PCT application had no priority claim.)  We filed the application by the 12-month convention deadline at the client’s request.

I do not think we need to provide a certified copy of the PCT, but can anyone confirm?

The question as presented turns out to be easy to answer — no, if you don’t want to provide a certified copy, you could avoid having to do so.  But it would be at the cost of a year of patent term.  The real question is “how may I avoid flushing a year of patent term down the drain?” Continue reading →

“Checking the box” now being litigated

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Every time we file a US patent application we worry about getting the wrong answer when we figure out whether or not to “check the box”:

checkFor anyone who has suppressed their memory of this unpleasantness, recall that you, the practitioner, are required to take a position on whether the correct law for the Examiner to use in deciding what is patentable and what is not patentable is the “old law” or the “new law”.  And it is a certainty that ten years from now when your patent is being tested in litigation, the adversary will try to convince the judge and the jury that you told the USPTO the wrong answer on this point.

Alert reader Wayne Keown has pointed out that it did not take ten years.  I learned from Wayne that there is now a pending federal court case in which an accused infringer has alleged that a patent applicant got the wrong answer on “checking the box.”

Continue reading →

USPTO being less slow in deciding PPH petitions?

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pph-delaysIn our office we track our PPH cases pretty closely.  Through most of 2014 and most of 2015, we had been seeing delays averaging six months.  It was taking the USPTO an average of six months to get around to deciding whether to grant or dismiss a PPH petition.  I blogged about this problem here and here and here and here and here.  I faxed a letter to Director Lee about this on April 24.  One or two recent data points suggest that maybe USPTO is being less slow about this. Continue reading →

Maybe you can’t say “Make America Great Again”?

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(Trump files three more trademark applications:  followup blog post here.)

Today the USPTO granted US trademark registration number 4,773,272 to Donald Trump.  Yes, that Donald Trump.  You can see the registration certificate here.  (I blogged about the pending trademark application here.)  Oh to be a fly upon the wall, to hear whether the other presidential candidates are now being advised by their trademark counsel that from now until the November 2016 elections are over, they must avoid uttering those four words in sequence.

 

USPTO gets it wrong on petitions to revive

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We’ve had reason to review half a dozen cases in the past year in which, so far as we can see, the USPTO was completely wrong to dismiss a Petition to Revive.  In some cases the USPTO bounced the petition on the grounds that the statement that the delay was unintentional was not signed by the applicant, and in one case the USPTO bounced the petition on the grounds that the statement that the delay was unintentional was not signed by all of the applicants.  As I say, it appears the USPTO was completely wrong in its handling of the petitions to revive. Continue reading →