Author: Carl

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Errors in USPTO patent application filing receipts

The EFS-Web listserv is a place where US patent practitioners discuss problems and sometimes help each other to solve problems.  (To learn more or to join the listserv, click here.)  Here was a question posed today by one of the members of the listserv:

Apologies for the interruption/venting, but I’ve reached somewhat of a breaking point with errors in official Filing Receipts. My understanding was that fillable ADS forms were being used to expedite entry of data by the Office. However, based on the number of typos and missing information we are seeing on an ongoing basis, I imagine someone is manually typing this information in Office side. Is this still the case?

Sure we have a form request for obtaining a corrected filing receipt, we say the original ADS had the correct information, we show the corrections on the receipt, etc., but addressing Office errors is becoming a time sink.  This is separate from the time we take to cross-check every receipt that comes in, which is redundant of the time we take in reviewing the original ADS to begin with.

Is there something that I am missing?

If it matters, these are 371 filings and I confirm that fillable forms are submitted via EFS, i.e., they are not scans/images. Any insight is much appreciated.

This listserv member is right, of course.  USPTO mistakes in official Filing Receipts impose a substantial cost upon patent practitioners.  In this blog article I will talk about some of the sources of USPTO mistakes and what the patent practitioner can do to try to reduce the number of such mistakes.

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Real Party in Interest – a rulemaking that went away

Back in January of 2014, the USPTO published a Notice of Proposed Rulemaking which might have led to rules requiring each patent applicant to go to quite a lot of trouble regarding a disclosure to the USPTO of any “real party in interest” connected with a patent or patent application.  I filed comments explaining why I thought the proposed rules were ill-advised.  My comments concluded with this:

The United States Supreme Court, in the case of Dastar Corp. v. Twentieth Century Fox Film Corp. et al., 539 US 23 (2003), considered one litigant’s suggestion as to the supposed need to give attribution to everyone who was connected with a literary work. The Court said:
We do not think the Lanham Act requires this search for the source of the Nile and all its tributaries.
I do not think the aims of this rulemaking package justify imposing upon each patent applicant the burden of investigating the source of the Nile and all its tributaries, and repeating that investigation every three months.

 

I don’t know whether my comments made a difference.  I like to think that maybe they did.  But anyway the practical consequence is that the USPTO seems to have abandoned this rulemaking effort.

Readers of this blog are invited to print out the comments that I filed.  Keep them handy for use when insomnia strikes.

Comments welcome.

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Good news for a domain name owner

When parties fight over who should own an Internet domain name, sometimes it is easy to see who should win and who should lose.  Sometimes it’s clear that the domain name owner is a cybersquatter, and the complainant should win.  But other times it is the opposite — the domain name owner is innocent of any wrongdoing and what’s going on is that a covetous party wishes they could wrest the domain name away from its owner.  This blog article describes such a case, with an outcome that I find particularly gratifying.

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USPTO needs to accept “due care” restoration requests

The USPTO needs to be willing to consider requests for the restoration of the right of priority based upon the “due care” standard.  This will help US filers who missed the 12-month priority period, and whose foreign-filing plans include the European Patent Office or any of twenty-eight other patent offices that apply the “due care” standard.

US practitioners (including yours truly) have been asking USPTO to make this change for several years now.  in January of 2015, AIPLA asked USPTO make this change.  It is now October of 2016 and USPTO has still not made this change.  It is hoped that this blog article will serve as a reminder to the USPTO that this change is needed.  I will explain.

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New leadership for AIPLA Industrial Designs Committee

Richard Stockton
Richard Stockton

It’s October, which means it’s time for the AIPLA annual meeting.

And it’s at the AIPLA annual meeting that AIPLA committees get new leadership.  Each committee position (chair, vice-chair) normally has a term of two years.  So in a particular October a two-year term might be half way through or might be beginning.  About half of AIPLA’s committees thus change leadership in a particular October.

This year is the year for the Industrial Designs Committee to change leadership.  The news is that the new chair of the Industrial Designs Committee is Richard Stockton of Banner & Witcoff, and the new vice-chair is James Aquilina of Design IP.

James Aquilina
James Aquilina

Richard and James are each very active in the world of design patents, having filed and prosecuted many design patent applications.  Richard’s firm, Banner & Witcoff, has ranked in first place in the 2012 US Design Patent Toteboard, the 2013 US Design Patent Toteboard, the 2014 US Design Patent Toteboard, and the 2015 US Design Patent Toteboard.

This coming two years will be an important time for industrial designs.  New countries, including China, are likely to join the Hague Agreement.  Important court cases, including a Supreme Court case in Apple v. Samsung, are likely to be decided.  It will be good to have Richard’s and James’s leadership.

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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.

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USPTO needs to update its Foreign Filing License rule

The USPTO has known for a couple of years now that it needed to update its rule (37 CFR § 5.15) that spells out what you can and cannot do when you have a Foreign Filing License.  Things came to a head in May of 2016 and one would have hoped that USPTO would have taken action at that time.  Even now in October 2016, USPTO has not taken action.  This blog article will hopefully serve as a reminder to USPTO that the update continues to be needed.  What is needed is an update to the rule making clear that a PCT filer can use ePCT to generate a PCT Request for e-filing in EFS-Web.  I will explain.

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What it’s like if your country joins the PCT

The other day I was teaching the international-filing session of the AIPLA’s twentieth annual Patent Prosecution Boot Camp.  (By the way I highly recommend this boot camp for anyone who is just getting started in patent prosecution.)  One of the 110 or so attendees at the boot camp was a very nice fellow named Emilio Berkenwald who is with a patent firm in Argentina.  Well, I did what I always do when I meet someone from Argentina — I said I sure hoped his country would soon join the Patent Cooperation Treaty!

This reminded me, however, of the perspective that a patent practitioner might have when contemplating one’s country possibly joining the PCT.  The perspective might not be completely favorable, as I will discuss.

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Picking a new trademark

The other day one of our valued employees at our firm happened to ask me how we picked the name of our publishing arm, Penaya Publishing.  In response, I launched into a discussion of the factors that we urge clients to consider when picking a new name for a company or product or service, and the result was that I felt yet another blog article coming on.  Here it is, a discussion of factors that we urge a client to consider when picking a new name for a company or product or service.  I hope readers will post their comments and suggestions below. Continue reading “Picking a new trademark”