A guest post from an alert reader

[Note from Carl Oppedahl:  I received this text from a reader who suggested that I post it as a guest blog article.  It is posted anonymously, for reasons that will become clear.  Maybe you find it as interesting to read as I did!]

This is a long e-mail, but I hope that you will read it.  I want to thank you for the blog that you posted last Saturday, because it saved me from a major malpractice exposure. 

Back around the last week of August, I got a referral from another practitioner who connected me to a law firm in a major metro area.  A patent attorney there asked if I was interested in preparing a US non-provisional application that would claim priority to a provisional application that he had filed September 29, 2017 for one of his clients.  In my 12 years of solo practice, I hadn’t done any subcontracting work before, but I had room on my calendar and it was technology I was comfortable with, so I said yes.  I could meet the one-year filing deadline.

The arrangement was that I would work directly with the big firm’s client to prepare the application, but the attorney would file the application and be of record.  The client was informed of and approved the arrangement.  I provided an engagement letter to the law firm, and in about a week I received the retainer, payment in full for the estimated services.

I studied the provisional application and had a video call with the client/inventor, who was in Lower Scyzovia.  The client showed me a whole new embodiment that almost doubled the scope of the application to be prepared, but this was still not a problem.  I made informal drawings and wrote a first draft of the application and sent it to the client on September 13.  The client responded on September 14 with yet another embodiment that he wanted covered.  On September 16, we had another video call, and the client informed me that he wanted foreign patent protection as well.  This had never come up before, but it made sense, given that his product certainly has markets worldwide.  So I immediately informed the attorney of this, and suggested that he confer with the client about filing a PCT application.

On September 17, I had another video call with the client, and he added yet more details that he wanted covered.  More scope creep.  No word back from the attorney about the foreign filing angle.

On September 21, I got a call from the attorney.  He informed me that a conflict had suddenly developed due to something pertaining to another one of their clients, and they needed to stop representation of this client.  He suggested that I should take over, and take on the client directly, and finish and file the application.  I finally got word from the client on September 24 that he had spoken with the attorney that day.  While he really wanted the big firm’s name behind his application, he agreed to engage me as his patent agent.

I needed to get an engagement letter out with the details of filing a PCT application, and the options to file both a US non-provisional application and a PCT application, or only the PCT application alone.  First, though, never having done a case having any connection to Lower Scyzovia, I thought I’d better check to confirm that Lower Scyzovia was a member of the PCT.  I thought, well, I need the country code too while I am at it.  So I Googled “WIPO PCT country codes” or something like that.  A number of WIPO sites came up in the top five and I picked one and looked over the list.  Sure enough, Lower Scyzovia, LZ, was on it.  (I know now that I wasn’t looking at a list of PCT countries – probably what I saw that day was a list of countries that were party to the Paris Convention.)  So off I went, sending the engagement letter on September 26.  The client took a day to respond.  He elected to file PCT only.

As the filing deadline approached, the client kept adding more details on the various embodiments that he wanted covered.  I informed the client that I wanted to file the application on Friday September 28.  Even though the deadline was Monday, October 1, I didn’t want to crowd it, and I didn’t even want this case to carry over to Saturday September 29.   On the morning of Friday September 28, he was still trying to add details, and even new drawings.  None of the additions were of substance, and none were critical to patentability, so I put my foot down and said enough.  I told him that the deadline was too close, that the PTO had its electronic filing system go down for a week in late August and couldn’t be trusted, and that the application was going to be filed that afternoon.  He acquiesced.

By this time I had converted the specification to PCT format, and the formal drawings were done, so all that was left to do was the Request.  I prepared the RO101 Request in PDF form.  (Yeah, I know, I should have been using PCT-SAFE or ePCT, but I only do 2-3 PCT cases a year, so I haven’t taken the time to learn how to go that route.  Besides, I have a very detailed Request filing checklist that I follow.  Plus I’ve taken David Reed’s PCT course twice in 2007 and 2012.  Just saying this is why I haven’t made PCT-SAFE or ePCT a priority.  Not that it is right, especially in hindsight.)

So I fill out the Request form, and fill in the client as inventor and applicant, and fill in LZ as the country for the nationality and residence boxes.  And I check off on my list that at least one of nationality or residence is a PCT country.  And I file the application, and pay only the transmittal fee for now.  I  know that the application will eventually transfer to the IB since there is no US applicant, but at least the application is filed, and I can continue as the correspondence address.  And I sigh in relief and enjoy a couple of beers that night.  It was a long week.

Now on to Saturday.  I’m doing light work, catching up after the chaos of the week, cleaning up files, responding to e-mails, etc.  And your blog article comes in about 1PM, with the title, “It turns out there’s a name for this: lorem ipsum.”  Now, I think your blog is great, but I don’t read every posting.  But this one got my attention because of the lorem ipsum.  Weirdly, I’m probably one of the few people out there that have read a good bit of the lorem ipsum.  I thought, I wonder what Carl is writing about the lorem ipsum.  So I click on the link and read your post.

And I see the part asking if someone can smack the buzzer and post a comment giving the answer as to what the fatal flaw might turn out to be when an application is transferred from the RO (that turns out not to be competent) to the RO/IB.  And it bugs me.  I don’t know what the fatal flaw is.  But it’s Saturday afternoon and nice weather and I want to shut down and take the rest of the weekend off.  But I can’t, because I have ant-like persistence.  If I don’t know what the flaw is –I don’t know if my application has it.  So I have to figure it out.  I poke around for a half hour, and I still can’t figure out the answer.  So I decide as a contingency, I’m going to go into ePCT and figure out how to file the application directly into the IB as a backup plan.

I log into my ePCT account and find the page for filing a new PCT application and I get started.  I get the first part of the Request fields filled in and of course, I fill in LZ for the nationality and residence fields.  The next field is the ISA, and there are no choices.  There is some error message about the need for nationality or residence being a PCT state.  WTF?  [Editor’s note — apparently the writer is using technical terms.]  Now I’m getting nervous.  As a test, I go back and change the nationality to US, and click on the ISA box and all of the usual choices are there.  Now I’m really nervous, adrenaline flowing nervous.  I Google PCT member states and go to the WIPO page, the one with the blue and white map, and I look at the map first and see a white speck below where Upper Syczovia is.  Then I look at the list and I probably turned white as a sheet.  I AM  %$@#&ED!!!!  [Editor’s note — yes indeed the writer is using technical terms.]

What to do?  The first thing was to get in touch with the client and inform him of the situation.  The next thing was, I filed a US non-provisional application to at least lock that down.  Then I scrambled to reach my contacts at a couple of foreign filing firms to see what could be done with national application filings by Monday October 1.  I also contacted a good friend who does a lot of PCT filings to see if he had any ideas.  In the meantime, the client contacted the attorney at the law firm, and we did a conference call to discuss options.

The question asked by my friend was if there was a way to establish US residence this late.  Turned out there was.  [Explanation omitted about formation of an LLC in the US.]  I refiled the PCT application with the corporation as applicant and resident of the US.  I believe that all is ok now – the client’s US and foreign rights were not lost.

Now as a post mortem, I have to ask myself –

  • What were the odds of you posting an Ant-Like Persistence blog on exactly Saturday afternoon when I was paying attention, which had the critical question that I needed to check on?, and
  • What were the odds of you putting “lorem ipsum” in the title, and me having read the lorem ipsum, so that it would pique my interest, and I would read it?, and
  • What were the odds that the one-year date would fall on a Saturday, so that there were a couple of extra days to fix the error?  (At least that one’s easy to calculate.)

The odds have to be way worse than one in 10000.  Could be 1 in 100000 or lower.  Bottom line, I avoided a significant malpractice exposure on sheer luck, and thanks to you.    So I want to thank you, Carl.  I owe you big time.  If I’m in Denver sometime, I’m going to get in touch.  I’d at least like to buy you dinner.

As to the moral of the story – get up to speed on filing with PCT-SAFE or ePCT.

5 Replies to “A guest post from an alert reader”

  1. Maybe I missed something, but there is no country Lower Scyzovia, nor is there a country code LZ. Was Alert Reader trying to hide his identity by using a pseudonym for the country, something like Lake Wobegon, the little town that time forgot and the decades cannot improve? Or, was the whole thing a flight of fiction?

  2. As I understand it, the practitioner filed a PCT application by naming a US legal entity as the PCT application, but claimed Paris “priority to a provisional application that he had filed September 29, 2017.” The LLC did not exist when the provisional was filed, so I assume the applicant named in the provisional was the inventor personally. I see no evidence in the post that the practitioner obtained or recorded an assignment of the provisional prior to the date on which the PCT application was filed. So I see no evidence of compliance with the requirement of the Paris convention that the PCT applicant was entitled to the right of priority to the provisional application when the PCT application was filed. Several jurisdictions have held that there is no entitled to priority in this situation. So I am concerned that the practitioner and his client have a Paris problem. It is now Sunday, October 7, 2018. It is still within 14 months of the filing date of the provisional. Accordingly, it is still within the time period in which the practitioner could file two things. An assignment of the provisional to the LLC, and a second PCT application naming the LLC as applicant, and including a petition for restoration of priority to the provisional application.

  3. I also run a very small (i.e. minute – just me) IP company in the UK and do all my patent & design filings online at the UKIPO, EPO, EUIPO (at the moment) using these patent offices’ online filing tools & all my PCT filings using ePCT whether via the EPO software (indirectly) or ePCT at the International Bureau (directly). I started using ePCT whilst working for a very large company & one of the first things I did when setting up my own IP company was to get ePCT working for my new venture ASAP. I find it even more important to use ePCT now that I have a tiny company with very few resources/support. It is invaluable for so many reasons!

  4. Did the practitioner know about the option of having a US person/entity as an applicant of convenience? Also, even if LZ did have ISAs listed, wouldn’t it still be outside the scope of the powers of a US registered practitioner to file something through the IB that he couldn’t theoretically filed through the U.S.?

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