Category: Industrial Designs

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WIPO DAS portal now functions for US designs

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I am delighted to be able to report that the WIPO DAS portal now functions as it should for US designs.

This raises many questions, which I will try to answer:

  • What do you mean it “now functions”?  Did it not function before?
  • As a design practitioner in the US, should I perhaps be a bit embarrassed that I had not noticed that it was not functioning before?
  • As a design practitioner outside the US, should I perhaps be a bit embarrassed that I had not noticed that it was not functioning before?
  • Okay I give up.  What exactly is the WIPO DAS portal, what is its connection with US designs, and why do I need to know about it?

Finally, what is there about this WIPO DAS portal that would protect me, as a practitioner in an Office of Second Filing, from a risk of professional liability due to a lost priority claim due to failure to timely provide a certified copy?  Yes, I call this “the single most important point in this blog article“.  If you would like to eliminate this particular category of risk to yourself when handling such filings, then scroll down to the place in the article where I discuss this.

Continue reading “WIPO DAS portal now functions for US designs”

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Today is the day – USPTO pulls the plug on PDX with respect to Korean patent office

As I blogged here, today is the day that USPTO has pulled the plug on PDX in connection with KIPO (the Korean patent office).

For US design filers whose cases claim priority from Korean cases, this is welcome news.  Simply use Form PTO/SB/38 to ask USPTO to retrieve your electronic certified copy from the KIPO.  Be sure to include the DAS access code provided to you by Korean counsel.

For any US case claiming priority from a Korean utility or design application, the Best Practice nowadays is to set up an “alert” in DAS for the application, and to obtain a Certificate of Availability in DAS for that application, all the while checking that US is listed among the Offices to which the application is available.

Can you pass the DAS quiz?

Now what remains is for USPTO to do the same (pulling the plug) for the PDX relationship with EPO.

Starting now, when you as US counsel send instructions to Korean counsel to file utility or design cases claiming priority from your US cases, be sure to pass along the DAS access code (which is the PAIR confirmation code).  Also set up an “alert” in DAS for the US priority application, and also send a Certificate of Availability to Korean counsel.

Starting now, when Korean counsel sends instructions to you to file utility or design cases in the US that are claiming priority from Korean cases, Korean counsel should pass along the DAS access code.  Korean counsel should also send a Certificate of Availability to you.

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Date is set for USPTO to pull the plug on PDX for Korean patent office

I am delighted to learn that a date has been set for the USPTO to pull the plug on PDX for the connection between the USPTO and the Korean Intellectual Property Office.

As I blogged here, the Korean Intellectual Property Office (KIPO) recently became a Depositing Office in DAS for purposes of design applications.  This was of course welcome news but it did not help US filers, because:

  • until now USPTO and KIPO have had an available connection through PDX, and
  • PDX does not support designs, although DAS does, and
  • PDX trumps DAS, meaning that between any two Offices, if there is a DAS connection, it will not get used so long as there is a PDX connection.

USPTO has announced that the plug will get pulled on PDX on December 1, 2018.

For US design filers whose cases claim priority from Korean cases, this is welcome news.  Simply use Form PTO/SB/38 to ask USPTO to retrieve your electronic certified copy from the KIPO.  Be sure to include the DAS access code provided to you by Korean counsel.

For any US case claiming priority from a Korean utility or design application, the Best Practice nowadays is to set up an “alert” in DAS for the application, and to obtain a Certificate of Availability in DAS for that application, all the while checking that US is listed among the Offices to which the application is available.

Can you pass the DAS quiz?

Now what remains is for USPTO to do the same (pulling the plug) for the PDX relationship with EPO.

Starting now, when you as US counsel send instructions to Korean counsel to file utility or design cases claiming priority from your US cases, be sure to pass along the DAS access code (which is the PAIR confirmation code).  Also set up an “alert” in DAS for the US priority application, and also send a Certificate of Availability to Korean counsel.

Starting now, when Korean counsel sends instructions to you to file utility or design cases in the US that are claiming priority from Korean cases, Korean counsel should pass along the DAS access code.  Korean counsel should also send a Certificate of Availability to you.

 

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US filers and filing at WIPO and daylight saving time

Keep in mind that most locations in the US will turn off daylight saving time today, but today is not the day that Switzerland will turn off daylight saving time.  (Switzerland turned off DST a week ago.)

Those who are filing documents at the International Bureau — documents that need a same-day filing date — should check to make sure they know what time it is in Switzerland as of today.

The main point here is that for a US filer, everything is now “back to normal”.  Whatever time zone offset a US filer is accustomed to between his or her time zone and Geneva, that offset is back to normal.

ePCT will tell you what time it is in Switzerland.

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Daylight saving time and WIPO

Keep in mind that Switzerland will turn off daylight saving time today.  Those who are filing documents at the International Bureau — documents that need a same-day filing date — should check to make sure they know what time it is in Switzerland as of today.

For US filers, keep in mind that the US will not turn off DST today.  The US will turn off DST a week from now.

US filers who are getting ready to file a document at the IB should thus pay close attention during this next week to what time it is in Switzerland.

The practical effect for most US filers is that for the next week, you get an extra hour to e-file.  For example if you are in the Mountain Time Zone, normally you rush to file by 4PM if need a same-day filing date at the IB.  But for the next week you can file as late as 5PM and you will still get a same-day filing date at the IB.

Those who are e-filing in ePCT can readily check any time to see what time it is in Geneva, because at the top of any ePCT user screen it says what time it is in Geneva.  Here is a screen shot.  For example right now it is 4:44 AM Mountain Time and as you can see it is 11:44 AM in Geneva.

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What filing date you get when you e-file at RO/IB?

What we are all accustomed to is that when we are picking a Receiving Office for the filing of a new PCT application, a substantial drawback of RO/IB is that we have to worry about the time zone.  For the US-based filer who is selecting between RO/US and RO/IB, the typical difference is six hours.  A filer in the Mountain Time Zone, for example, who is rushing to get a same-day filing date would need to e-file by 10PM if e-filing in RO/US but would typically need to e-file by 4PM if e-filing in RO/IB.

What I did not realize, until quite recently, is that things are quite different when one is e-filing a Hague application (in other words, an international design application rather than an international patent application). Continue reading “What filing date you get when you e-file at RO/IB?”

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Can some design people in Chile and Spain and India and Korea help?

So by now there are six Depositing Offices in the DAS system for purposes of electronic certified copies of design applications. The six Depositing Offices are:

  • Chile (National Institute of Industrial Property)
  • China (Chinese National Intellectual Property Administration)
  • Spain (Spanish Patent and Trademark Office)
  • India (Indian Patent Office)
  • South Korea (Korean Intellectual Property Office)
  • US (United States Patent and Trademark Office)

I have successfully obtained Certificates of Availability for design applications in two of these six Offices, namely China and the US.  You can see exemplary Certificates here:

I would be grateful if a practitioner in Chile were to provide to me a DAS access code for a design priority document from Chile, and if a practitioner in Spain were to provide to me a DAS access code for a design priority document from Spain, and if a practitioner in India were to provide to me a DAS access code for a design priority document from India, and if a practitioner in Korea were to provide to me a DAS access code for a design priority document from Korea.  I suppose the way to do it would be to select a design document that is already a matter of public record, because it is already published or issued.  I would also need the application number and filing date.  I would then be able to obtain a Certificate of Availability and this would provide an opportunity to test out this aspect of the DAS system.

Thank you!

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At the Design Patent Symposium 2018

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It is delightful to attend the Design Patent Symposium 2018, sponsored by Banner & Witcoff, Ltd., Sterne, Kessler, Goldstein & Fox P.L.L.C., and George Washington University Law School. This symposium is taking place right now in the NEA building at 1201 16th Street NW, Washington, DC, having begun thus morning at 8:30 AM and continuing through the day to a reception ending at 6:00 PM.

It is a fascinating program (brochure here), with industrial designers, people from the USPTO, people from WIPO, and patent practitioners.  For those who were not able to attend, the presentation materials may be downloaded here.

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Latest news on Mexico and Hague Agreement

These days it is pretty interesting to keep track of the growth of the Hague Agreement (the international filing system for industrial designs).  Since a year ago there had been whispers (blog article October 21, 2017) that Mexico was going to join the Hague Agreement Real Soon Now.  And then came the new successor NAFTA agreement (see blog article of October 2, 2018) which sets forth that Mexico must join Hague by no later than the date of entry into force of the new NAFTA agreement.

Richard Stockton
Richard Stockton

Anyway just now I was delighted to hear from Rich Stockton, who is chair of the AIPLA Industrial Designs Committee, about this particular topic.  He reports that he met recently with some higher-up folks at the Mexican patent office.  They told him that they expect the Mexican legislature will approve the implementing legislation during the current session and that no other major legislative steps remain other than depositing the instrument of accession (and then waiting the requisite three months for the accession to take effect).

He thus tells me that it looks to him as though Mexico will officially join the Hague system in the first few months of 2019.

This is, of course welcome news, and the accession of Mexico to the Hague system will be a welcome development.