USPTO did a good thing over the weekend. USPTO added a feature to Private PAIR that lets you change the entity size for a patent application yourself.
How to correct a check-the-box mistake?
We are familiar with the “check-the-box” problem. The AIA provides that for a “transition” application, the law to be applied to determine what is patentable and what is not patentable is based on whether the application contains, or ever contained, at least one claim the effective filing date of which is on or after March 16, 2013. (A “transition” application is an application filed on or after March 16, 2013 that claims domestic benefit or foreign priority from an application filed prior to March 16, 2013.) The AIA did not say who exactly is supposed to figure out whether such a claim exists or existed. Unfortunately for applicants, in the February 14, 2013 Final Rules the USPTO successfully shifted this claim analysis burden to the applicant (more accurately, to the patent practitioner). 
It falls to the practitioner to work out whether or not this box should be checked. And years later in litigation of such a transition application, it will often happen that an accused infringer will devote enormous amounts of time and energy exploring whether a case can be made the the practitioner made a check-the-box mistake — checking the box when it should not have been checked, or failing to check the box when it should have been checked.
Which gets us to the topic of this blog posting. What if, during the pendency of a transition application, the practitioner discovers to his or her horror that a check-the-box mistake was made? Can the mistake be corrected? If so, how? Continue reading “How to correct a check-the-box mistake?”
Sell your patent appeal by June 19!
If you have a patent application that is on appeal, that you were thinking of letting go abandoned, this is your chance. Sell it to somebody who wants to get their appeal decided fast. But you’ve got to act quickly. This opportunity ends on June 19, just five days from now. Continue reading “Sell your patent appeal by June 19!”
Patent Trial and Appeal Board announces two-for-one sale
How did this two-for-one sale actually work out? See my follow-on posting about this program.
US patent practitioners will recall a two-for-one sale offered by the USPTO’s Examining Corps back in 2011. At that time the backlog of unexamined applications was so embarrassing that the USPTO came up with “Project Exchange”, aka the two-for-one sale. That program offered an opportunity to get fast examination of a first case that was pending as of October of 2009, so long as the applicant expressly abandoned a second case that was likewise pending as of October of 2009.
Taking a page from that play book, the Patent Trial and Appeal Board has announced its own two-for-one sale, called the “Expedited Patent Appeal Pilot”. If you have two ex parte appeals pending before the PTAB, you can abandon one of them and the PTAB will decide the other appeal fast.
Continue reading “Patent Trial and Appeal Board announces two-for-one sale”
Revisions to Best Practice for filing a PCT application in RO/US
Yesterday I posted Best Practice for filing a PCT application in RO/US. Shortly thereafter, a very nice person at WIPO sent half a dozen suggestions for making the posting better. So I have revised the posting. Be sure to use the revised version as it is better.
USPTO’s new Patent Application Alert Service
USPTO and Reed Tech have announced an interesting alert service. You go to this web page and create a user ID. And you set up one or more search terms of interest. Every Thursday, when USPTO releases another set of published patent applications, the system will use your search terms and will let you know if there is some matching published patent application.
Best Practice for filing a PCT application in RO/US
In this article I will describe the Best Practice for filing a Patent Cooperation Treaty patent application in the Receiving Office at the USPTO.
(Note on June 12, 2015 — a nice person at WIPO offered suggestions for improvement of this article, all of which were very helpful, so I have updated this article.)
Continue reading “Best Practice for filing a PCT application in RO/US”
USPTO still an SSL laggard
In August of 2014 I blogged that USPTO needed to implement SSL (“https://”) on all of its public-facing web sites. I also said that USPTO needed to implement PFS on all of its SSL-enabled web sites. (SSL and PFS are security features that protect visitors from eavesdropping by third parties around the Internet.) In that blog article I explained in detail why this is important. As just one of many examples of why this is important, the way things are now at the USPTO, third parties could eavesdrop and learn what search terms you are using when you search for a patent or a trademark registration.
Ten months have passed. It is now June of 2015 and USPTO has made no progress on this. None. Zip. Every USPTO web site that was vulnerable to this sort of eavesdropping in August of 2014 continues to be vulnerable today in June of 2015.
Now comes a directive from the White House saying the same thing now in June 2015 that I said in August of 2014. The directive tells all federal agencies that “all publicly accessible Federal websites and web services” must “only provide service through a secure connection” meaning https://. All agencies, including the USPTO, are required to get this done by December 31, 2016.
Let’s see how promptly the USPTO complies with this directive from the White House.
What’s the Best Practice for 92bis changes?
One of many nice things about the PCT (Patent Cooperation Treaty) system is that you can do one-stop shopping for changes in the bibliographic data. (In a somewhat similar way, the Madrid Protocol and Hague Agreement systems provide one-stop shopping for assignments and owner address changes.) By filing a so-called Rule 92bis request, you can update the inventor list, the name of the applicant, and/or addresses and citizenships thereof.
When I say “one-stop shopping” I mean that you do the change once and it covers multiple countries or Offices around the world.
But there are better and worse ways to carry out your 92bis request, and that’s the point of this blog posting.
Continue reading “What’s the Best Practice for 92bis changes?”
A reminder of an AIA trap for the unwary – “checking the box”
The America Invents Act took effect on September 16, 2012 and on March 16, 2013. Well over two years ago. So we don’t have to keep worrying about it nowadays, right?
Wrong, very wrong. We have to worry about it now even more than ever.
Here’s one example for the practitioner who is asked by foreign counsel to enter the US national phase from a PCT application. Continue reading “A reminder of an AIA trap for the unwary – “checking the box””