Category: Patents

We are all accustomed by now to the very important trick of “aging the preliminary amendment”.  When we file a transition application (an application filed on or after March 16, 2013 which is tied to some application filed before that date) the usual mistake is to file the preliminary amendment on filing day.  The reason it is usually a mistake is that years later in litigation, the infringer will howl that the preliminary amendment added new matter, and that that new matter had been claimed, and that the “new” law of patentability should have been applied to the case rather than the “old” law of patentability that was actually applied to the case (because you refrained from “checking the box” in the ADS).

So the malpractice-avoiding strategy for many fact patterns is the by now very familiar practice of “aging the preliminary amendment”.  We file the transition case, and then wait for midnight to pass in Virginia.  Only then do we file the PA.  Later the Examiner will determine whether or not the PA contains new matter.  If the Examiner enters the amendment, this counts as an express determination by the Examiner that the PA must not have contained new matter.  This denies the infringer, in litigation, any opportunity to howl about the case having supposedly been examined using the “wrong” law of patentability.

Which gets us to the latest trap for the unwary.

Continue reading “Yet another AIA trap for the unwary”

There are lots of situations where USPTO will refuse to do what you want if USPTO thinks that you are not the “attorney of record”.  Filing any of a variety of EFS-Web auto-granted actions such as a Terminal Disclaimer.  When you try to do any of these things in an application file, the EFS-Web system asks you to type in your registration number and will look up that number in the Palm database for the application file.  If EFS-Web thinks you aren’t the attorney of record, it will halt and refuse to let you move forward.

As another example it is impossible to get the auto-granted petition to withdraw as attorney, unless the Palm system thinks you are the attorney.

You never know when one of these situations might come up without warning, and you would need to get such a filing done.  Which means that as a general rule you should be filing a Power of Attorney in each case.  And as a general rule you should docket carefully to check to make sure the USPTO actually recognizes the Power of Attorney.  Then when a crunch time comes, such as the need to urgently file a Terminal Disclaimer, or get yourself withdrawn as attorney, you will actually be able to get the task done.

And as it turns out, at least two of USPTO’s ways for you to supposedly learn whether or not the USPTO recognizes the Power of Attorney are flawed and can’t be trusted.

Continue reading “How to know whether USPTO has recognized your patent Power of Attorney?”

(Followup posting here.)

USPTO’s internal standard for attending to PPH petitions is two months. Well over four months have passed since the last time we saw the USPTO decide a PPH petition.  Our oldest PPH that stands unattended-to by the USPTO was filed August 26, 2014, a full four months ago now.

Continue reading “PPH petition backlog — four months and counting”

(Follow-up postings are here and here and here.)

Last month I blogged about USPTO’s backlog of undecided PPH petitions.  These are the petitions in cases where the applicant is asking the USPTO to place a patent application on the Patent Prosecution Highway because the application has already been found patentable in some other patent office.

USPTO’s internal standard is to rule upon such a petition within two months of when it was filed.  When I blogged about this last month, we had petitions filed as long ago as August 26, 2014 that had not yet been decided.  By now we have over a dozen PPH petitions that were filed more than three months ago and remain outstanding as of today.  The August 26 petition remains outstanding.  The backlog is worsening.

How old is your oldest PPH petition that has not yet been decided?

US filers are very familiar with the requirement that if an invention is made in the US, the applicant may only file a patent application on that invention in a non-US country if the applicant has obtained an FFL (foreign filing license) from the USPTO.

From time to time the question will arise what if the invention is jointly made by people in some country outside the US and people in the US?  Each country has laws about where you can file first and what you must do before you can file elsewhere.

The nice folks at WIPO have developed a handy web page that summarizes FFL requirements around the world.

This web page at WIPO’s web site does not, of course, give legal advice as to how to deal with complicated problems where some of the inventors are in one country and some of the inventors are in a different country.  I can describe some of the approaches that some practitioners use to try to solve these problems.

Continue reading “Countries with foreign-filing-license requirements”