Author: Carl

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WIPO DAS portal now functions for US designs

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I am delighted to be able to report that the WIPO DAS portal now functions as it should for US designs.

This raises many questions, which I will try to answer:

  • What do you mean it “now functions”?  Did it not function before?
  • As a design practitioner in the US, should I perhaps be a bit embarrassed that I had not noticed that it was not functioning before?
  • As a design practitioner outside the US, should I perhaps be a bit embarrassed that I had not noticed that it was not functioning before?
  • Okay I give up.  What exactly is the WIPO DAS portal, what is its connection with US designs, and why do I need to know about it?

Finally, what is there about this WIPO DAS portal that would protect me, as a practitioner in an Office of Second Filing, from a risk of professional liability due to a lost priority claim due to failure to timely provide a certified copy?  Yes, I call this “the single most important point in this blog article“.  If you would like to eliminate this particular category of risk to yourself when handling such filings, then scroll down to the place in the article where I discuss this.

Continue reading “WIPO DAS portal now functions for US designs”

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The importance of SAOSIT

Those who file patent applications relying upon Article 4 of the Paris Convention should pay attention to the requirement that the second application needs to have its applicant be the same applicant or successor in title with respect to the applicant in the first application.  This gives rise to the initialism SAOSIT.  (It’s not an acronym — see this blog article.)

And there are some patent offices that take the position that the “cleanup” paperwork that brings about the “or successor in title” situation is paperwork that needs to have been executed chronologically prior to the filing of that second application.  I am told by practitioners in the UK and in EPO that this time relationship needs to be satisfied for either of those Offices.

One of the places where this comes up is with the filing of a provisional as discussed here.

Oh, yes, and if anybody wonders, I am the person who coined the initialism SAOSIT.  I think I coined it about six years ago.

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Another reason why I am glad we use VOIP.MS telephone service

At our firm we use VOIP.MS for our outbound telephone service and for most of our inbound telephone service.  VOIP.MS is one of the several companies these days that makes it easy to dump the traditional landline telephone services and make use of voice over IP.  As I have discussed in previous blog articles, it is astonishing how much money one can save and it is astonishing what powerful features can be implemented in one’s telephone system, using voice over IP.  There are a bunch of reasons why we felt good about having selected VOIP.MS for most of our voice over IP services.

But today’s blog article talks about a new and different reason why we feel good about having selected VOIP.MS.  They noticed that someone in the Gaza strip had snuck into our PBX and had placed several telephone calls to mobile phones in Albania.  They proactively shut off the international calling on the trunk that had been passing these calls, and they dropped an email to us letting us know.  This was at 9AM on a Sunday.   Continue reading “Another reason why I am glad we use VOIP.MS telephone service”

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The smart consumer will consider using GoodRX.com

A few months ago I needed to get a prescription filled, and my doctor said “you might want to consider using GoodRX.com“.  My doctor suggested that when I got to the pharmacy, I should pull out my smart phone, open a web browser, visit the web site GoodRX.com, type in the name of the drug, and show the screen to the pharmacist.

I followed the doctor’s suggestion and I was astonished at what happened next.  The list price for the drug (thank goodness I only needed it once, for a problem that thankfully was not very serious and thankfully went away promptly!) was slightly over $100.  With my health insurance it was around $70.  Using the information on the screen of my smart phone, the price dropped to $20.  I paid the $20, took the drug, the problem went away, and I realized I had better blog about GoodRX.

So what’s the deal?  Is it a scam?  Does it always work?  Is it somehow illegal?  Is there some catch?  When a person gets this price reduction, are they somehow paying for this by revealing private information to Facebook or something? Continue reading “The smart consumer will consider using GoodRX.com”

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Today is the day – USPTO pulls the plug on PDX with respect to Korean patent office

As I blogged here, today is the day that USPTO has pulled the plug on PDX in connection with KIPO (the Korean patent office).

For US design filers whose cases claim priority from Korean cases, this is welcome news.  Simply use Form PTO/SB/38 to ask USPTO to retrieve your electronic certified copy from the KIPO.  Be sure to include the DAS access code provided to you by Korean counsel.

For any US case claiming priority from a Korean utility or design application, the Best Practice nowadays is to set up an “alert” in DAS for the application, and to obtain a Certificate of Availability in DAS for that application, all the while checking that US is listed among the Offices to which the application is available.

Can you pass the DAS quiz?

Now what remains is for USPTO to do the same (pulling the plug) for the PDX relationship with EPO.

Starting now, when you as US counsel send instructions to Korean counsel to file utility or design cases claiming priority from your US cases, be sure to pass along the DAS access code (which is the PAIR confirmation code).  Also set up an “alert” in DAS for the US priority application, and also send a Certificate of Availability to Korean counsel.

Starting now, when Korean counsel sends instructions to you to file utility or design cases in the US that are claiming priority from Korean cases, Korean counsel should pass along the DAS access code.  Korean counsel should also send a Certificate of Availability to you.

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Backlog at DO/EO/US

These days if you enter the US national phase you can expect to wait at least three months for your Filing Receipt.

We try to track this kind of thing pretty closely in our active files.  For a domestic filing receipt the delays these days are a mere 2-3 weeks.  But if the filing receipt that you are waiting for is a DO/EO/US filing receipt, you will have to wait three months.

This three months is, these days, the “best case”.  This assumes that you e-filed the case (not paper) and that you did not have any missing parts (no missing inventor declaration, no missing translation into English, no missing fees).  This assumes that you provided not only an ADS but also a computer-readable ADS but not only that, you provided it in the first EFS-Web submission meaning that the bibliographic data auto-loaded into Palm.  You also provided an Express Request for immediate national-phase entry if the other requirements were satisfied before the end of the 30 months.  Put plainly, you did everything that you possibly could to make as easy as possible the work of the DO/EO/US person.

With all of this, the waiting time for a Filing Receipt these is three months.

If, however, you do anything that requires the DO/EO/US person to do actual work, like not having paid all of the fees, not having provided the inventor declaration, etc. then the waiting time for the Filing Receipt will be much longer.

How long are you having to wait for your US national phase Filing Receipts?  Post a comment below.

 

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Date is set for USPTO to pull the plug on PDX for Korean patent office

I am delighted to learn that a date has been set for the USPTO to pull the plug on PDX for the connection between the USPTO and the Korean Intellectual Property Office.

As I blogged here, the Korean Intellectual Property Office (KIPO) recently became a Depositing Office in DAS for purposes of design applications.  This was of course welcome news but it did not help US filers, because:

  • until now USPTO and KIPO have had an available connection through PDX, and
  • PDX does not support designs, although DAS does, and
  • PDX trumps DAS, meaning that between any two Offices, if there is a DAS connection, it will not get used so long as there is a PDX connection.

USPTO has announced that the plug will get pulled on PDX on December 1, 2018.

For US design filers whose cases claim priority from Korean cases, this is welcome news.  Simply use Form PTO/SB/38 to ask USPTO to retrieve your electronic certified copy from the KIPO.  Be sure to include the DAS access code provided to you by Korean counsel.

For any US case claiming priority from a Korean utility or design application, the Best Practice nowadays is to set up an “alert” in DAS for the application, and to obtain a Certificate of Availability in DAS for that application, all the while checking that US is listed among the Offices to which the application is available.

Can you pass the DAS quiz?

Now what remains is for USPTO to do the same (pulling the plug) for the PDX relationship with EPO.

Starting now, when you as US counsel send instructions to Korean counsel to file utility or design cases claiming priority from your US cases, be sure to pass along the DAS access code (which is the PAIR confirmation code).  Also set up an “alert” in DAS for the US priority application, and also send a Certificate of Availability to Korean counsel.

Starting now, when Korean counsel sends instructions to you to file utility or design cases in the US that are claiming priority from Korean cases, Korean counsel should pass along the DAS access code.  Korean counsel should also send a Certificate of Availability to you.

 

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Bad signage at Chicago Union Station

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I recently had reason to connect from one Amtrak train to another at Chicago’s Union Station.  The type of ticket that I was traveling on gave me access to Amtrak’s Metropolitan Lounge in that train station.  My layover was about five hours so I was really looking forward to finding this lounge and taking it easy for a while.  I disembarked from the first train (the California Zephyr from Denver) and found a helpful map (at right).  And promptly got misdirected. Continue reading “Bad signage at Chicago Union Station”

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US filers and filing at WIPO and daylight saving time

Keep in mind that most locations in the US will turn off daylight saving time today, but today is not the day that Switzerland will turn off daylight saving time.  (Switzerland turned off DST a week ago.)

Those who are filing documents at the International Bureau — documents that need a same-day filing date — should check to make sure they know what time it is in Switzerland as of today.

The main point here is that for a US filer, everything is now “back to normal”.  Whatever time zone offset a US filer is accustomed to between his or her time zone and Geneva, that offset is back to normal.

ePCT will tell you what time it is in Switzerland.