Carl Oppedahl's blog
As you may see here, I will be teaching some classes about the Patent Cooperation Treaty in the next few months. These include:
I teach advanced patent prosecution as an adjunct professor at the University of Denver. I hear from my students what it costs these days to buy a casebook for a class. Some cost $150. Some cost $200. So I am delighted to see that there is some movement in the direction of reducing this cost for the student. It comes from publishing-on-demand services such as Createspace and Lulu, as I will describe. Continue reading “The end of expensive law school casebooks?”
I’ll share my notion of the Best Practice for recordation of US patent assignments. Please post comments below. Continue reading “Best practice for recording US patent assignments”
The Office of Patent Application Processing could be nicer to applicants. Were OPAP to do so, this would promote science and the useful arts. Continue reading “How about six little check boxes?”
On September 26 and 27 (a Monday and a Tuesday), WIPO will conduct an advanced seminar on the Patent Cooperation Treaty. To register and to find out more, click here. Here is WIPO’s description of the seminar:
This PCT seminar is targeted towards patent administrators, paralegals and other users who are already familiar with the PCT System. This is a unique opportunity to learn more about the procedural details of the PCT system and some of the best filing and practice strategies, directly from PCT experts of the International Bureau of WIPO. Prior completion of the introductory PCT distance learning course is highly recommended.
The twentieth annual AIPLA PCT Seminar will take place July 25 and 26 (Monday and Tuesday) in Alexandria, Virginia. It’s time to sign up if you have not already signed up.
This Seminar is different from other PCT programs in that it has not only official patent office presenters but also practitioners. Among the presenters are a speaker from China and a speaker from Europe, and they will talk about how to draft a PCT patent application with China and Europe in mind. They will also talk about the process of entry into the Chinese national phase and European regional phase.
Yours truly is among the presenters.
To register, or to find out more, click here.
Those trademark practitioners whose clients include companies located outside of the US will be familiar with the so-called Section 44e filing basis. This is the filing basis that honors Article 6quinquies of the Paris Convention. It permits a would-be applicant in the USPTO to get a free pass (for six years) on having to prove use in commerce in the US. To qualify for this filing basis, and thus to get the six-year free pass, the applicant must establish that the same applicant earlier obtained a non-US trademark registration for the same mark. The goods/services identified in the registration are required to “cover” the goods/services identified in the US application. A further requirement is that the registration is required to come from the place that is the “country of origin” for the applicant. Finally, the registration needs to be valid and subsisting, and needs to have an expiration date far enough in the future to make it likely the US prosecution would reach is conclusion prior to the expiration date.
The problem is that the TEAS forms for such a US trademark application are actively unfriendly to many applicants, namely those applicants for which the office of registration provides cryptographically protected certificates of registration. I’ll explain. Continue reading “A way to make a TEAS form friendlier”
Readers will recall that I blogged over a year ago about a defect in a TEAS form, namely the Section 71 and 15 form. This is the form that permits the owner of a US trademark registration that came from a Madrid Protocol application to renew the registration, and at the same time to make the registration incontestable. The defect that I reported back then was that the TEAS form would sometimes force the filer to pay a “grace period” fee even if no grace fee was actually due.
Another defect in this particular TEAS form has surfaced. Suppose the registration is between 9 and 10 years old and has not yet been made incontestable. Then it should make sense to permit the filer to use this Section-71-and-15 form. But the form won’t work. The form will refuse to proceed, stating (untruthfully) that the registrant is not permitted to do a Section 71 filing at this time as well as a Section 15 filing.
I reported this problem to the USPTO over a year ago. It still has not been fixed.
When I reported this defect in the TEAS 71-and-15 form, USPTO suggested a workaround, namely to give up and do the Section 71 filing in one e-filing project and to do the Section 15 filing in another e-filing project. I guess strictly speaking this does count as a “workaround”, but it is not a very good workaround. It forces the US practitioner, and the foreign trademark firm, and the client of the foreign trademark firm, to deal with twice as many emails, and twice as many settings and clearings of dockets, and twice as many opportunities for an e-signature to go wrong. It also forces the participants to deal with a doubled risk of a lost email.
The challenge, I guess, for the developer of the TEAS form, is that the TEAS form needs to check for several conditions to be satisfied:
It strikes me that this coding task should be well within the ability of even a relatively novice programmer. It seems to me that even if a team of two or three coders were to be required, they could accomplish this coding task in less than one day. I’d be glad to contribute a day’s worth of pizza and energy drinks to get this coding task completed.
I had hoped that by now USPTO would have gotten this fixed. But as of now, it is still impossible to use the 71-and-15 TEAS form for any window later than the 5-to-6 window.