Big delays in recent months in the Image File Wrapper

Back in the early days of EFS-Web and Private PAIR, I could e-file a new patent application and within just a few minutes, I could look in IFW (Image File Wrapper) and see what the USPTO had received.  If there had been some problem, say an illegible drawing, then this would permit doing a corrective filing the same day.

And in those early days, if I were to e-file a follow-on document (for example a response to an office action), the newly filed document would be visible immediately in IFW.

All of this was consistent with USPTO’s stated performance standard for IFW which was (and is) that a newly e-filed document should be visible in IFW no later than one hour from when it was e-filed.

But not nowadays.  Very often, USPTO comes nowhere close to meeting its own stated performance standard.  I will describe some typical examples of performance failures for IFW.

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USPTO chips away at auto-loading of bib data into Palm

When EFS-Web was new, the USPTO tried to be smart about bibliographic (bib) data.  USPTO designed Form PTO/SB/14 which was an enormous (one megabyte) PDF form.  The user could paste the bib data into the form.  This included things such as “who are the inventors” and “what are their residences” and “what is the priority claim” and “what domestic benefit claim is being made to a provisional application”.  The form was entitled “Application Data Sheet” (ADS).

This was a lot of work for the user, but USPTO dangled a reward.  If the user were to include this ADS in the initial EFS-Web submission, the USPTO would promise to auto-load all of the bib data into Palm.  From there it would propagate into PAIR and it would be used in preparing the official Filing Receipt.  I will now describe how this reward gradually changed into a hoax.   Continue reading

How USPTO could handle bib data changes better

(On December 21, USPTO released a new functionality called Corrected Web-based Application Data Sheet.  I have posted a followup blog article about this new functionality.)

Sometimes a filer needs to update bibliographic (bib) data in a pending patent application.  In a recent blog post I talked about how USPTO’s preferred way of receiving requests for bib data changes is ill-conceived and wastes the valuable time of USPTO personnel and valuable time of the filer.  In that blog post I described how USPTO’s rules actually permit the use of a “smart procedure” in which the filer only lists the items being changed.  Items that are not being changed could be omitted in this “smart procedure”.  But the USPTO actually recommends that the “smart procedure” not be followed.

Having said all of this, the constructive thing to do is to describe how the USPTO could handle bib data changes better.  Which I will now do.   Continue reading

How to change bib data at the USPTO

(After I blogged on November 22 about how USPTO could do better in receiving updated bib data, on December 21 USPTO announced a new system for receiving updated bib data.  Please see my blog article about USPTO’s new system.)

About once a week in our office we find the need to update, change, or add bibliographic (bib) data in a pending patent application at the USPTO.  In general what we find is that the USPTO does not follow its own rules for such changes.  The USPTO’s procedures are ill-conceived, making poor use of the time of applicant and Office personnel alike.  In a later blog post I will describe what USPTO should do instead.  But for this blog post I will detail what the USPTO rules actually say about how to accomplish bib data changes, in the hope that this might be helpful to others.   Continue reading

What’s missing from USPTO’s Global Dossier public access system

Yesterday USPTO released its Global Dossier public access system.  I blogged about this.  In that blog article I listed three design flaws in that system.  Today, having had a day to play with the system, I can describe something important that is missing from that system.   Continue reading

Disappointing news about PPH petitions

In September of 2015 I posted a blog article celebrating some exciting news about PPH petitions.  In that article (“Unexpectedly fast PCT-PPH decisions at USPTO“) I noted that we had gotten some cases onto the Patent Prosecution Highway a mere three weeks after filing the PCT-PPH petition.  This was very good news given that previously it was taking anywhere from four to seven months for the Office of Patent Petitions to get around to examining PPH petitions.  The letters communicating the three-week grants of Highway status came from a different part of the USPTO (not the Office of Patent Petitions) namely the Office of International Patent Legal Administration (the former Office of PCT Legal Administration).

At our firm we use PPH a lot.  We try to track our PPH cases pretty closely.  When we saw this good news in September of 2015, we figured USPTO had gotten a clue and had changed its workflow so that PCT-PPH petitions were going to OIPLA instead of going to OPP.  And OIPLA was deciding such petitions fairly promptly after filing.

Well, it turns out I was wrong about this.   Continue reading

Best practices/strategies for claim drafting to avoid Alice issues?

Over on the EFS-Web listserv, a list member asked:

Is anyone aware of any training materials, articles, guides, etc. providing best practices/strategies for claim drafting to avoid Alice issues in new patent applications?

Here’s what I think about that:   Continue reading

Global Dossier public access now functioning

(See followup article here.)

Weeks and months ago USPTO delivered webinars and other outreClipboard01aches in which it demonstrated the soon-to-be-functioning Global Dossier public access system.  Today the system got released.  You can see it here.  Its chief advantage for US filers will be that it will provide English-language access to information in the Japanese, Korean, and Chinese patent office databases.

I will explain a bit about how it works and what you can do with it.   Continue reading

Spoke too soon — USPTO did not get it right

In a recent blog post I said “USPTO gets it right — new way to pay issue fees”.  Turns out I was mistaken.  USPTO did not get it right when implementing its new way to pay issue fees.  What a disappointment. Continue reading