Midnight at WIPO returns to normal

A week ago I blogged that filers filing things at WIPO would have an extra hour to get a same-day filing date.  As of a week ago, you could file as late as 5 PM Mountain Time and still get a same-day filing date.

Now today things return to normal.  To get a same-day filing date at WIPO, you will need to file by 4 PM.dst

For the next week, an extra hour available for WIPO filings

dstExperienced filers in the Patent Cooperation Treaty, Madrid Protocol, and Hague Agreement systems (utility patents, trademarks, and industrial designs) know that it is important to keep always in mind when midnight will arrive in Geneva, where WIPO is located.

For a PCT filer, this matters because to get a same-day filing date, a PCT application being filed in RO/IB will need to be filed by 4 PM Mountain Time.  The same is true for filing an Article 19 amendment.  The same is true if you are using ePCT to file a Demand and Article 34 amendment.

For a Madrid filer, this matters among other things for the payment of decade renewal fees.

For a Hague filer, this matters for the the filing of an international design application at the IB.

The point of today’s post is that starting today, and for the next week, you get an extra hour to get a same-day filing date.  The reason is that Europe and the US carry out their daylight saving time transitions on different days that are a week apart.

This means that you could file as late as 5 PM Mountain Time (instead of the usual 4 PM) and still get a same-day filing date.

Things will return to normal a week from now, on November 6, 2016.

Excellent guidance on Hague design drawings

When you get ready to file an international design application (a “Hague application”) you have no choice but to try to figure out what to do about drawings, with the goal of (hopefully) satisfying the requirements of each Office that you are planning to designate.

In the early days of Hague, most Offices that belonged to Hague were “registration” Offices, meaning that they checked formalities but did not do much in the way of substantive examination.  But in recent times more and more Offices that have recently joined are Offices that do carry out some amount of substantive examination.  Perhaps the Office in which an applicant would be most likely to run into trouble would be the USPTO.

And indeed it is true that some Hague applications that designate the US have been running into problems because of the drawings.

WIPO, together with various of the designated Offices, have developed guidelines for applicants.  You can see the guidelines here.

These guidelines should be studied by any applicant that is planning to designate Hungary, Japan, Kyrgystan, South Korea, Moldova, Romania, Syria, or the US.

Keep in mind that for a US applicant, one option offered by the Hague Agreement is that the US applicant could designate the US.  (I call this a “hairpin turn”.)  Such a US applicant should likewise study these guidelines.

Uploading JPG files to your Hague case

As patent practitioners have known for many years, if you were to try to upload a JPG file into EFS-Web, the system would puke on the file.

Until now, as I will explain.  It requires a bit of background.  In November of 2014 the USPTO answered a question that had been on everyone’s lips for many months, namely “What will the series code be for Hague cases?”  The answer turned out to be 35.  A year and a half passed, and in February of 2015 the USPTO assigned the first application number to a Hague case.  (It was 35/500001.)   What many people might not know is that if the application that you open in EFS-Web happens to be a “35” case, you can upload a JPG file.  Here is a screen shot that shows this:


What is the problem for which this new capability is the solution? Continue reading “Uploading JPG files to your Hague case”

USPTO grants first-ever design patent from a Hague application

The USPTO has granted the first-ever US design patent from an international design (Hague) application.

The international design application was filed pro se on May 13, 2015 by a German company called Schwan-Stabilo Cosmetics GmbH & Co. KG. The application was filed directly at the International Bureau and it designated Korea and the US.  It did not claim priority from any earlier application.

The IB published the application on June 5, 2015 and the USPTO received the application from the IB on that day. The USPTO gave application number 35/500,001 to the application.

The USPTO mailed a Filing Receipt on July 7, 2015. The case got assigned to an Examiner on October 6, 2015 and the Examiner allowed the case eleven days later. The USPTO sent the Notice of Allowance to the IB on October 20, 2015. The applicant paid the Issue Fee directly to the IB. The OB sent the Issue Fee to the USPTO on November 30, 2015.

USPTO issued the patent on April 26, 2016 as US Patent Number Des. 754922.  You can see it here.

No Assignment has been recorded for this application.  No IDS got filed in this application.  The application was never touched by US patent counsel.

Time of day at RO/IB returns to normal for US filers

On March 13 I blogged that US filers filing PCT applications in RO/IB needed to pay extra close attention to what time it is in Switzerland.  The reason is that in the US, Daylight Saving Time happened on March 13.  But did not happen on that day in Switzerland.  This meant that for the past two weeks, a US-based filer in (for example) the Mountain Time zone would be able to e-file in RO/IB as late as 5PM and still get a same-day filing date.  This differed from the usual drop-dead time of 4PM.

Today (March 27, 2016) is the day that Daylight Saving Time happens in Switzerland.  The consequence of this is that the time difference between the US filer’s time zone and the time in RO/IB is back to normal.  So for a US-based filer in the Mountain Time zone, the drop-dead time returns today to the usual 4PM.

This change also affects a US-based filer filing a design application in the IB’s Hague Agreement e-filing system.

Hague rules published

President Obama signed the act enabling the US to join the Hague Agreement on December 18, 2012.  Would-be users of the Hague Agreement have thus been waiting for more than two years for the Final Rules implementing the Hague Agreement.  Today the USPTO published the Final Rules.

In coming days and weeks I will post comments and observations about the new Rules.  If you’ve not already done so, I invite you to subscribe to this blog so that you will see the comments and observations.