Author: Carl

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How the non-DOCX penalty will work for non-English filings?

USPTO published a Notice of Proposed Rulemaking some months ago, proposing to hit the filer with a $400 if the filer files a patent application in a format other than Microsoft Word word processor format.  (USPTO says “DOCX” but realistically the only way a filer can get USPTO’s system to work accurately is to generate the word processor file with Microsoft Word, and even then, only with Microsoft Word for Windows, in a very recent version of the software.) 

I published two comments (here and here) explaining some of the reasons why I feel the USPTO got it wrong on this.  And I joined seventy-two other patent practitioners in signing a comment that explored in quite some detail some of the things that USPTO got wrong on this. 

I imagine most of us nowadays have started at least trying to e-file in DOCX, just to try to find out how bad it is so that we can get ready for how bad it will be when USPTO starts charging the $400 penalty.  And recently I realized that there is a very interesting fact pattern that I am quite confident that no one at the USPTO thought about at all when it promulgated this Rule — the fact pattern where the initial filing is in a non-English language. Continue reading “How the non-DOCX penalty will work for non-English filings?”

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Viet Nam joins the Hague Agreement

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Recently I blogged that Samoa joined the Hague Agreement on October 2, 2019 and that Israel joined the Hague Agreement on October 3, 2019.  Somehow I overlooked that just a few days earlier, on September 30, 2019, Viet Nam joined the Hague Agreement.

The Hague system will enter into force for Viet Nam on December 30, 2019.

As of December 30, 2019, companies and designers from Viet Nam can begin using the Hague System to protect their industrial designs. The applicant can pursue protection in many countries through a single international application and a single set of fees.

Likewise from December 30, 2019, those located outside of Viet Nam will be able to seek design protection in Viet Nam through the Hague System.

I had blogged on October 21, 2017 that Viet Nam was getting ready to join the Hague Agreement and indeed now it has happened.

Viet Nam joined the Patent Cooperation Treaty on March 10, 1993 and joined the Madrid Protocol on July 11, 2006.   Viet Nam thus completes the trifecta of membership in all three international intellectual property filing platforms.

The two-letter code for Viet Nam is “VN”.

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Samoa Joins the Patent Cooperation Treaty

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On October 2, 2019, Samoa deposited the Instrument of Accession to the Patent Cooperation Treaty with the International Bureau of WIPO. This means that the PCT will come into force for Samoa on January 2, 2020.

This brings to 153 the number of member States for the PCT.

Samoa already belongs to Madrid Protocol.  Samoa has joined the Hague Agreement at the same time as the PCT.  So on January 2, 2020 Samoa will achieve the trifecta for international filing mechanisms.

The two-letter code for Samoa is “WS”.

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Samoa joins the Hague Agreement

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On Wednesday, October 2, 2019 Samoa deposited its Instrument of Accession to the Hague Agreement.

The Agreement will enter into force in Samoa on Thursday, January 2, 2020.

This brings to 72 the number of contracting parties to the Hague Agreement.

As of January 2, 2020, companies and designers from Samoa can begin using the Hague System to protect their industrial designs. The applicant can pursue protection in many countries through a single international application and a single set of fees.

Likewise from January 2, 2020, those located outside of Samoa will be able to seek design protection in Samoa through the Hague System.

Samoa will join the Patent Cooperation Treaty on January 2, 2020 and joined the Madrid Protocol on March 4, 2019.   Samoa will thus complete the trifecta of membership in all three international intellectual property filing platforms.

The two-letter code for Samoa is “WS”.

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Israel joins the Hague system


On Thursday, October 3, 2019 Israel deposited its Instrument of Accession to the Hague Agreement.

The Agreement will enter into force in Israel on Friday, January 3, 2020.

I blogged back on October 21, 2017 that Israel was going to join Hague Real Soon Now, and finally it has happened.

This brings to 73 the number of contracting parties to the Hague Agreement.

As of January 3, 2020, companies and designers from Israel can begin using the Hague System to protect their industrial designs. The applicant can pursue protection in many countries through a single international application and a single set of fees.

Likewise from January 3, 2020, those located outside of Israel will be able to seek design protection in Israel through the Hague System.

Israel joined the Patent Cooperation Treaty on June 1, 1996 and joined the Madrid Protocol on September 1, 2010.   Israel has thus completed the trifecta of membership in all three international intellectual property filing platforms.

The two-letter code for Israel is “IL”.

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Does this check box ever actually work?

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USPTO says that if you check this box, the second authentication factor will not be not needed during signin for the next 24 hours.

This is, of course, false.  Or more accurately, it is almost always false.  The check box does occasionally save the USPTO customer from having to carry out two-factor authentication when logging in to a USPTO system.  But usually it does not work. Continue reading “Does this check box ever actually work?”

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How broadly can you amend claims in a PPH case?

There is a very helpful listserv (email discussion group) for US patent practitioners.  it is called the EFS-Web listserv, originally created to help US practitioners survive the problems in the initial launch by the USPTO of the EFS-Web system.  The charter of the listserv has now broadened to encompass US patent prosecution practice generally.  Here’s a question that one loyal listserv member posted today:

I just had a case transferred in that was filed with a PPH request in the US, based on a PCT written opinion. I haven’t used PPH before, so don’t have much experience.

There is a pending office action, in which the Examiner found some art in the US that wasn’t in the original search report, and I think our best way forward is to amend the claims.

PPH requests appear to require that all claim amendments be within the scope of the claims held allowable in the PCT application.

What’s the procedure if I am going to add a claim limitation that’s not in the original claim set?

Here’s what I answered. Continue reading “How broadly can you amend claims in a PPH case?”

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“Listserv” is generic

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There’s a fellow who years ago filed a trademark application for “listserv”.  It registered, and by now he has filed three renewals including an incontestability statement.  You can see the TSDR record here.  The term has long since become generic.

The registrant’s web site uses the term as a noun, as you can see in this screen shot.

My firm sponsors many listservs, some of which are listed here.

 

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Today is the day for Brazil and Madrid Protocol

(Updated to reflect Article 14(5) Declaration.)

Starting today, a trademark owner in Brazil can file a Madrid Protocol application to pursue protection in one or more Offices outside of Brazil.

And starting from today, a trademark owner outside of Brazil can file a  new Madrid Protocol application designating Brazil.

I had previously posted that starting from today, a trademark owner outside of Brazil who already has an International Registration can file a Subsequent Designation to Brazil.  This is stated too broadly.  Brazil’s Instrument of Accession includes an Article 14(5) Declaration, which provides that a “sub des” can only be filed with respect to Brazil for an IR that was registered on or after today, that is, on or after October 2, 2019.   

The two-letter code for Brazil is “BR”.