Author: Carl

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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”

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A seminar at John Marshall Law School

jmls-pct-2

Today I finished co-teaching a two-day seminar about the Patent Cooperation Treaty at John Marshall Law School.  I had the pleasure for the first time of serving on the dais with Matthias Reischle, Director and Head at WIPO.  This program was sponsored by the John Marshall Law School Center for Intellectual Property, Information and Privacy Law (“the Center”).

(Click on the photograph to see a larger copy of the photograph.)  From left, Josh Sarnoff of DePaul Law School;  Daryl Lim, Director of the Center; Matthias Reischle;  yours truly;  and Vangelis Economou, director of the JMLS Patent Clinic.

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Picking when to hand in a specimen of use?

r-circleI will offer a few thoughts on how a trademark practitioner might pick when (during the prosecution of an ITU trademark application) to hand in the specimen of use.  (I will assume the simple case in which a trademark application contains just one trademark class.  In such a trademark application, there is generally a need only to hand in one specimen of use.)

The idea of an ITU application is that the applicant is not claiming to have actually used the mark in interstate commerce, but is merely professing to have a bona fide intention to use the mark in commerce at some time in the future.

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Brunei joins Madrid Protocol

bruneiBrunei has joined Madrid Protocol.

Brunei deposited its instrument of accession today, October 6, 2016.

The Protocol will enter into force for the purposes of Brunei on January 6, 2017.

This brings the number of members of the Madrid system to 98.

The two-letter code for Brunei is BN.

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Cambodia joins the PCT

cambodiaCambodia deposited its instrument of accession to the PCT on September 8, 2016.  This event brings the number of PCT members to 151.

The Treaty will enter into force on December 8, 2016.

The two-letter code for Cambodia is KH.

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Examiners discover a new RCE trick

We’ve become aware of a new trick that Examiners at the USPTO use to force an aotdp-1pplicant to file an RCE.  I hesitated for a while to blog about this, fearing that this blog article would educate any Examiners that did not already know about this trick.  But hopefully the powers-that-be at the USPTO will read this blog article and will take appropriate steps to block the trick.  And anyway maybe the word had gotten around the Examining Corps about this trick some time ago, and maybe there aren’t any Examiners that don’t already knew about this trick.

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