An example of Patent Office responsiveness

Here is an example of a patent office being remarkably responsive to a user concern.

On the evening of Thursday, September 17^th, alert patent practitioner Suzannah Sundby (right) posted a message to the PCT listserv.  It seems she was getting ready to file a protest in a PCT application.  Each searching authority gets to choose for itself the amount of the protest fee that it will charge.  In her case the applicant had selected the USPTO as the searching authority, and so she needed to find out the amount of money that USPTO had chosen for this fee.  She had looked all over the place trying to find out the amount of the fee that the USPTO charges for the protest.  And she was not able to find any place on the USPTO web site or the WIPO web site that said what the amount of the fee is.  The MPEP was silent on this.  The answer could not be found on USPTO’s official fee sheet.  The PCT Applicant’s Guide maintained by WIPO did not give any answer to this question. 

I could tell from the way that she worded the message, the message having been worded using certain technical terms, that she was exasperated at the lack of any way to find out the answer to this question.

Suzannah’s listserv question inspired me to post this blog article.  The answer turns out to be that the USPTO does not charge a protest fee.  Actually it turns out you can Google this question about what protest fee the USPTO charges, and I am astonished to see that my own blog article from September 27^th, 2015, which does answer this question, is the first hit in the Google search results.  (Plug the search term “protest fee in ISA/US” into Google and you will see what I mean.)  You can try it here.  

But back to the main point of today’s blog article.  The main point of today’s blog article is that somebody at WIPO read Susannah’s listserv posting, and contacted the USPTO, and got the USPTO to state in writing to WIPO that the USPTO does not charge a protest fee.  And then WIPO updated Annex D.  This happened in the wee hours of the morning on Monday, September 21^st, 2020.

Count the days here. It took a mere three and a half days for WIPO to accomplish this updating of Annex D. And check your calendars, folks, two of those days were on the weekend. You can see the updated Annex D for ISA/US here. The relevant portion of the updated Annex is quoted above.

Annex D is for the searching authority.  It turns out that a corresponding question can come up with a preliminary examining authority.  And I see that WIPO also updated Annex E for IPEA/US in just the same way, also on September 21, 2020.  You can see the updated Annex E here.

It is refreshing to be reminded that a patent office can pay attention to something that gets posted in a listserv, and can respond to it.  And it is refreshing to see it happen so promptly.

This means that tomorrow or next week or next month, if another practitioner runs into this same question “what is the amount of the protest fee that ISA/US charges?”, that practitioner will have a very easy way to find the answer, namely by consulting this annex in the PCT Applicant’s Guide on the WIPO web site.

Or, of course, the practitioner could Google the question and find the answer in my blog.

Or, or course, the practitioner could simply go to my blog and type the question into the search box in my blog, and find the answer that way.

But again the main point here is, isn’t it nice when a patent office is responsive like this to a practitioner comment on a listserv?   Don’t you wish every patent office could be responsive like this?  I sure wish that every patent office could be responsive like this.