Author: Carl

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What caption to use when responding to a patent Office Action?

Most of us, when we were learning how to prepare a response to a patent Office Action in the USPTO, were taught to load up the caption with every conceivable piece of information.  When I was first in practice I was taught to provide not only the application number but also the art unit, the Examiner’s name, the filing date, and the title of the invention.  Some years later the USPTO introduced the “confirmation number” and this, too, went into the caption. Now I skip all of this and I use the application number and nothing else in the caption.  Why?

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Closure on changes in PCT fees (was “Four Fridays”)

Readers will recall my January 26 posting and my February 4 posting about the consequences of the decision on January 15 by the Swiss central bank to allow the Swiss Franc to rise to its natural level after over a year during which the bank had sought to cap the percentage difference between the Swiss Franc and the Euro.  The Swiss Franc jumped 15 to 20 to 30 percent relative to various other currencies.  I predicted that the International Bureau would seek to revise the “equivalent amounts” for the PCT international filing fee and other PCT fees payable to the International Bureau and would seek to make the revised fees effective much sooner than the usual delay of 3-4 months.  Now the new fees have been set and indeed they will take effect sooner than the usual delay.

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When the new fifteen-year design patent term takes effect?

In a recent blog post I said that May 13, 2015 will be a big day, and one of the reasons it will be a big day is that design patents granted from applications filed on or after that day will enjoy a fifteen-year term.  This is a longer term than the fourteen years with which we are familiar.

In response, alert reader and patent practitioner Karen Oster asked about the many web articles that say that the effective date for the fifteen-year patent term was fourteen months ago on December 18, 2013.  Among them are:

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US makes more progress toward the Hague Agreement

The Hague Agreement is the international filing system for design protection that corresponds to the PCT filing system for international utility patent protection and the Madrid filing system for international trademark protection.  The progress of the United States toward membership and participation in the Hague Agreement has been slow and at times tortuous.  As I blogged here, President Clinton signed the treaty in 1999.  Many years passed before the Senate ratified it in 2007.  Congress needed to pass enabling legislation which finally happened in 2012.  Next the USPTO needed to promulgate proposed Rules, which it did in 2013.  The next important step was for the United States to deposit an “instrument of accession” to the Agreement with WIPO.

Interestingly somehow the United States and Japan managed to coordinate their efforts, and the two countries deposited their instruments of accession on the same day, Friday, February 13, 2015.  You can see WIPO’s press release here.  us-inst-accAnd at right is a photograph (courtesy of WIPO) showing the historic event.  You can see US Ambassador Pamela Hamamoto handing the Instrument of Accession to WIPO Director General Francis Gurry.

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Helpful webinars about ePCT

Almost daily I will encounter some patent practitioner or patent firm or corporate patent department that uses PCT but that fails to make use of ePCT.  Of course when this happens I encourage the patent practitioner or patent firm or corporate patent department to start using ePCT.  I imagine this to be a bit like the dentist who encourages people to brush and floss, sometimes feeling discouraged with the realization that some will not follow the advice.  Now comes another series of webinars from WIPO explaining how to use ePCT.

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