If you are going to try to get a US patent from a PCT application, there are two possible paths — US national phase entry (also called “a 371 case”), and the filing of a bypass continuation. How does this choice affect how long you have to wait to get a Filing Receipt? If you pick the bypass route, the work gets done by the same folks who handle other ordinary patent applications. It is OPAP (Office of Patent Application Processing). These days OPAP often mails a Filing Receipt very promptly. On the other hand, if you pick the national-phase-entry route, the work gets done by DO/EO/US. And this office often takes a very long time to mail a Filing Receipt. But some people have figured out how to get a very prompt Filing Receipt from DO/EO/US. It is with some reluctance that I will now reveal how they do it. Continue reading “How some people get prompt Filing Receipts from DO/EO/US”
It is my honor to post the 2019 Toteboards. These are:
- the eighth annual US Design Patent Toteboard
- the fifth annual US Trademark Registration Toteboard
- the fifth annual US Utility Patent Toteboard
- the first annual US Plant Patent Toteboard
These Tote Boards rank the top patent and trademark firms for carrying out filings in 2019 in these categories. The 2019 Toteboards join the previous fifteen Toteboards which go back as far as 2012.
In her new rules that went into effect on July 2, 2019, the Commissioner for Trademarks made clear that she wants to smoke out any foreign trademark applicant that is using a mailing address that is not the applicant’s foreign domicile address, so as to avoid having to hire US counsel. The Commissioner for Trademarks was quoted as saying “… in most cases, a post office box address is not a domicile because you can’t live in a PO box.” Until now, the Commissioner’s way of smoking out such non-domicile mailing addresses has been extremely unsophisticated — two tests are applied:
- does the address listed in the trademark application explicitly say “box” as in “post office box”? or
- does the address say “in care of”?
When either of these two telltales is seen, the Examiner’s training since July 2, 2019 has been to require the applicant to reveal the applicant’s “domicile” address. One form paragraph gets used if the address contains the forbidden characters “P O Box” and another form paragraph gets used if the address contains the forbidden words “in care of”.
Surely every reader of this blog, when learning of the Commissioner’s new Rules, realized that there are two ridiculously easy ways to circumvent this smoking-out process. Continue reading “Helping the Commissioner for Trademarks to smoke out non-domicile mailing addresses”
If you are a US patent practitioner, of course you should be subscribed to the EFS-Web listserv. Here is a recent post to that listserv that prompted today’s blog article:
I swear I read something about a new PTO program for automatically listing all submitted and cited prior art on continuations and divisionals–to stop people from re-filing everything again. But, I cannot find anything today.
Was I dreaming? If not, is this working?
And yes there is a new PTO program for this, as I will explain. Continue reading “The Patent Office absolutely trying to Do the Right Thing – IDSs in child cases”
I have a client whose office is in a place that lacks reliable USPS postal delivery. Because of the unreliability of the USPS postal delivery to the client’s office, the client uses a post office box to receive its mail. For decades this client has been able to use its post office box in its relationship with the Commissioner for Trademarks. Many of the trademark registration certificates from the USPTO that sit in my client’s safe-deposit box, bearing a gold seal and the signature of the Director of the USPTO, list my client’s post office box as the registrant’s address. Each six-year and decade renewal that this client has filed in recent years years has repeated my client’s post office box as its address.
But not any longer. On July 2, 2019, the USPTO published its Federal Register Notice Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants. This notice promulgated et alia new Rules which the Commissioner construes as making it impossible for a trademark applicant or registrant to receive correspondence at a post office box. And despite having been given multiple opportunities in recent months to soften its position on this, the Commissioner now has doubled down on its refusal to permit the use of a post office box to receive correspondence. Continue reading “Commissioner for Trademarks doubles down on “no post office boxes””