Category: Patents

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Filing in EPO with a priority claim to a US application? If so, read this!

Sometimes when you log in at EFS-Web there will be a sort of “announcement of the day” on the main EFS-Web page.  Recently there was an announcement that said that US patent applicants need to be sure to file Form PTO/SB/69 to avoid getting in trouble with the European Patent Office.  I had never heard of Form PTO/SB/69 and had no idea that without it there was some risk of getting in trouble with the EPO.  So I looked into the matter and spoke with people at EPO and at USPTO about this.

Maybe you already know all about Form PTO/SB/69 in which case no need to read further.  Otherwise I invite you to read on.

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Bilateral priority document exchange between USPTO and Chinese patent office

USPTO and the Chinese patent office (“SIPO”) have quietly implemented a bilateral system for automated exchange of electronic priority documents.  This system, launched on October 8, 2014 bypasses the legacy approach through DAS (WIPO’s document access service).  Importantly, for inbound PDX to the USPTO, the four-character access code will no longer be needed.

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For those entering the US national phase on and after September 16, 2014 … recall the “check the box” problem

We all recall the nightmare of having to figure out whether or not to “check the box”.  You know the box that I am talking about:

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Well, a nice member of our PCT listserv pointed out today that September 16, 2014 is an interesting day for the “check the box” problem.  I wonder how many readers of this blog already know why this is?

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Dontcha just hate “see attached letter”?

There are a lot of annoying things about an email that says “see attached letter”.  I’ll basically just be ranting in this posting.  Feel free to skip it.

I should emphasize first that if somebody is paying my firm to do work, I will cheerfully receive any and all “attached letters” that they wish to send.  The non-US patent firm that has sent me dozens of patent applications to be filed in the US can send any email in whatever way they want to sent it.

What I am talking about is the non-US intellectual property firms, and the service providers (annuity services for example) that are receiving money from my firm.  These are the people I am complaining about when I say I am annoyed by an email that says “see attached letter”.

Why am I annoyed by this?

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Thinking about calling a US patent application a continuation-in-part

From time to time I encounter a client or foreign colleague that asks whether some soon-to-be-filed US patent application ought to be termed a CIP (continuation-in-part) of a previous patent application by the same applicant.  The way I look at it, this used to be a good idea but nowadays is rarely if ever a good idea.  I hope that folks will post comments with their thoughts about this.

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Make plans to attend “PCT at the EPO”

As a reminder, the European Patent Office will present “PCT at the EPO”, a two-day educational program.  This will be Wednesday and Thepoursday, October 1 and 2 at the EPO office at the Hague.  One session is “National Phase at the USPTO”.  The speakers for that session will be Michael Neas of the USPTO and myself.

This is a unique educational program with a faculty composed of patent office presenters and private practitioners.

The first day of the event will conclude with a panel discussion on key developments in the PCT (I am one of the panel members), followed by a cocktail reception and a networking dinner.

To find out more about this two-day program, or to register, click here.

 

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USPTO needs to implement SSL and PFS on all servers

The USPTO needs to implement SSL and PFS on all of its public-facing servers.  In plain language all of the servers at USPTO need to use “https://” rather than “https://”.  Why?  Because apparently there are eavesdroppers.  See this report from a member of the E-Trademarks listserv:

The company TMFeatures really has figured out how to decipher what we are searching, and I am very concerned.  I am working on a very sensitive global launch for a client, and I received an email this afternoon from this company which makes it clear that it knows exactly what I have pulled up on the public USPTO TESS database.  How can that happen?   If a company is able to compile a list of the marks we have pulled up, it would not be hard to make a very good case of competitive intelligence available for the right price.   I assume this would be much worse for single industry in-house trademark counsel than us outside people, but still very concerning.

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EFS-Web broken again

USPTO has had another system crash.  EFS-Web is broken again.  It crashed at about 6AM this morning, Saturday, August 9.

Practitioners will recall the big USPTO system crash on Wednesday, May 14 (blog) in which EFS-Web was broken but also EFS-Web Contingency was broken.

In today’s system crash, EFS-Web is broken but EFS-Web Contingency is still working.  So today’s crash at the USPTO is not quite as bad as the May 14 crash.

The USPTO maintains a USPTO Systems Status and Availability page which supposedly provides “the latest information on operating status and availability of Online Business Systems.”  The USPTO failed that promise again today.  At no time during this six-hour outage did the SSAA page give any acknowledgement that EFS-Web had crashed.

What are the workarounds when EFS-Web crashes like this?

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Today is the last day to file certain PTA correction requests

I have not encountered very many patent practitioners that noticed the Federal Register notice of May 15, 2014 entitled “Revisions To Implement the Patent Term Adjustment Provisions of the Leahy-Smith America Invents Act Technical Corrections Act”.  This notice established today, July 31, 2014, as the last day on which you can file a certain type of request for adjustment of patent term.

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