Author: Carl

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Nice feature in ePCT – fee payments

There’s a nice new feature in ePCT.  It used to be that if you were to file a new PCT application in RO/IB, and if you were to say that you plan to pay by means of a credit card, that what would happen is later (some days later) you would receive an email message with a link to a web page inviting you to pay the fees.

Now the ePCT system takes care of everything all at once.  When you click “submit” to e-file the PCT application, and when you say you would like to pay the fee by credit card, then a new screen appears that permits you to type in the credit card number and other information.  You can finish the e-filing session with the knowledge that you have indeed taken care of the fee payment.

This is good for several reasons.

First, it saves you having to docket to check for the arrival of the several-days-later email to pay the fee.  (We estimate that every time we have to set and clear a docket, we incur an internal cost of something like $50.)

Second, it gets the fees into the RO’s hands sooner.  Which means that the search fee gets into the hands of the ISA sooner.  Which means the International Search Report and Written Opinion arrive sooner.

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Extent to which metadata in PDF Documents filed in EFS-Web can be seen later?

There’s a discussion over in the EFS-Web listserv (the listserv for patent practitioners) about the best way to create a PDF so that it won’t unnecessarily reveal metadata.  The answer for Windows users is of course to use CutePDF to create the PDF.  Which then led to the question of the extent to which USPTO strips out metadata in which case maybe the filer can be lax about this.  What is the answer? Continue reading “Extent to which metadata in PDF Documents filed in EFS-Web can be seen later?”

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What it costs to get a US patent fast by making it “special” (age or health of inventor)?

When I was first in practice, there were a dozen ways to get a US patent application made “special”.  Just to give a few examples, you could explain that a would-be investor needs to know whether a particular invention is patentable before constructing a factory.  You could explain that you have found someone who infringes a claim of a patent application.  You could point out that your subject matter would promote national security or fight terrorism or benefit the environment.  You could establish that one of the inventors is in such poor health that the inventor might not live long enough to assist in the prosecution of the application.  You could establish that one of the inventors is 65 years of age or older.

A few years ago the USPTO decided to pare down the list of ways to get a patent application made “special”.  The list of ways is now very short.  In this blog post I will talk about two of the remaining ways, namely:

  • special based upon age of the inventor, and
  • special based upon poor health of the inventor.

What might the practitioner charge for making a case special on either of these grounds?

Continue reading “What it costs to get a US patent fast by making it “special” (age or health of inventor)?”

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What it costs to get a US patent fast via Track I?

A long-standing member of the EFS-Web listserv (the listserv for US patent practitioners) wondered what to charge for a Track I request.  (Track I is the program in which the US applicant can get his or her application moved to the front of the line for examination merely by paying a fee.)  I figured I might as well post a series of blog pieces with a few thoughts about professional fees for the various programs by which an applicant can get a US patent fast.

Continue reading “What it costs to get a US patent fast via Track I?”

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More DRM frustrations — Ultraviolet movies

Some months ago I griped about ham-fisted DRM systems from Amazon and Microsoft.  Now I will gripe about a ham-fisted DRM syuv-packagestem from Ultraviolet, the movie viewing system that supposedly lets me “watch it anywhere!” and supposedly lets me “instantly stream & download” to my “tablet”.  I finally got it to work, but only after about an hour and a half of struggle.  The advertising claim of “instantly” downloading was quite false. Continue reading “More DRM frustrations — Ultraviolet movies”

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Filing a PCT application at the USPTO with no US applicants?

A member of the PCT listserv asked:

On a US application filed yesterday with non-US inventors (no US assignee) and a PCT filing deadline of today, we filed through the USPTO and got a PCT application number, we just could not upload it as a PCT-Safe Zip file.   The USPTO PCT Helpline said it was okay to file through the USPTO, just a $240 transmittal charge.  We uploaded the PCT-101 request as a separate document.  Will this be enough to secure a PCT filing date?

The answer is “maybe yes”, depending on the detailed situation. Continue reading “Filing a PCT application at the USPTO with no US applicants?”

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Maximizing patent term (was “certified copy needed?”)

A member of the EFS-Web listserv, an email discussion group for patent practitioners, posed this question:

We filed a US continuation application claiming priority to a PCT application filed in the EP receiving office.  (The PCT application had no priority claim.)  We filed the application by the 12-month convention deadline at the client’s request.

I do not think we need to provide a certified copy of the PCT, but can anyone confirm?

The question as presented turns out to be easy to answer — no, if you don’t want to provide a certified copy, you could avoid having to do so.  But it would be at the cost of a year of patent term.  The real question is “how may I avoid flushing a year of patent term down the drain?” Continue reading “Maximizing patent term (was “certified copy needed?”)”