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””
Register now for AIPLA PCT Seminar in July
You will recall that last February I told you to save the date for the Nineteenth Annual AIPLA Patent Cooperation Treaty Seminars. Registration is now open for the Seminars:
- July 20 and 21 (Monday and Tuesday) in San Francisco
- July 23 and 24 (Thursday and Friday) in Alexandria, Virginia
The AIPLA PCT Seminars are the best way to learn about the PCT and to bring yourself up to date about recent changes and developments in the PCT.
Registration for the Seminar also entitles you to attend a webinar, at no additional charge, on July 14. The webinar is a PCT primer, providing an overview of the PCT system and the basics of filing a PCT application.
Continue reading “Register now for AIPLA PCT Seminar in July”
Sometimes the USPTO gets it right
What happens so often is that the USPTO gets things wrong about the PCT process. For example the USPTO seems so often to go out of its way to avoid giving any credit, let alone full faith and credit, to the work done by the International Searching Authority when it searches and examines a patent application. So here is a refreshing example of the USPTO getting it right.
Where to send a USPTO patent petition?
In the old days (meaning, before e-filing at the USPTO became possible), the practitioner who was filing a petition would simply drop the petition in the mail, directed to the USPTO generally. Someone in the USPTO mail room would look at each petition, and would pick where exactly within the USPTO to direct the petition so that it might be considered and decided.
Then the Internet happened and a decade later, the USPTO reacted to the Internet by setting up EFS-Web. In EFS-Web the burden of figuring out where exactly within USPTO a patent-related petition would be directed got shifted away from USPTO mail room personnel and onto the e-filer. The choices from which the patent e-filer might pick include:
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- Petition for review by the Office of Petitions
- Petition for review by the PCT legal office
- Petition for review by the Technology Center SPRE
When you are e-filing a petition, how should you pick where to send your petition?
A new category of walking-corpse US patents?
(Update: USPTO is doing a very customer-friendly thing about this, as I report here.)
One of the scariest things for a US patent practitioner is the thought of being held responsible for a patent that turns out to have been a “walking corpse”. A patent that everybody thought was a normal patent and it turns out that there is some defect that means it was never actually a patent at all.
My favorite category of “walking-corpse” patent had, until now, been the patent that was granted on a patent application in which the applicant made a non-publication request, and then did foreign filing, and failed to timely rescind the non-publication request. The rules say that such a patent application is deemed abandoned some 46 days after the foreign filing happened. But probably nobody involved at the time knew that the status of the application was “abandoned”. Not the Examiner, not the USPTO employee who cheerfully collected the Issue Fee and mailed out the ribbon copy of the granted patent. Least of all the practitioner who forgot about rescinding the non-pub request and who triumphantly handed the ribbon copy of the patent to the client. Likely as not, the first time this defect would get noticed is at litigation time.
Anyway until now that was my favorite example of a “walking corpse” US patent. But it looks like maybe there’s now a new category of walking-corpse US patents. Continue reading “A new category of walking-corpse US patents?”