Bluesky: @oppedahl.com
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””
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:
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”
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.
(Note on November 10, 2025: alert reader Suzannah Sundby pointed out to me that at the present time there are at least two resources on the USPTO web site (here and here) about this general topic.)
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:
When you are e-filing a petition, how should you pick where to send your petition?
(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?”
Here is what I faxed today to USPTO Director Michelle Lee about the ever-increasing backlog of PPH petitions.
Continue reading “What I faxed to Director Lee about the PPH petition backlog”
There’s a curious temporary display in the atrium at the USPTO. Called “Walk through time”, it is a winding
path with large printed labels on the floor, portraying various events in the history of the USPTO. It starts with the founding of the patent office and proceeds through some sixty or so events to the present. 
My personal favorites are the 1887 event (the US joins the Paris Convention) and the 1970 event (the US joins the Patent Cooperation Treaty).
Will you be in San Diego at the time of the INTA annual meeting? If so, there are two receptions that you won’t want to miss.
Continue reading “The two receptions that you need to attend in San Diego in May”
Saturday, March 21, 2015 is the day that I blogged about a PPH petition that had been outstanding in the Office of Petitions since September 12, 2014. I don’t know if it is sheer coincidence … but the Office of Petitions considered the petition on Monday, March 23 (and granted it).
So as of now our oldest not-yet-ruled-upon PPH petitions were filed November 5 and November 13. This is still an unreasonable delay within the Office of Petitions, but not as bad as the six-month-plus delay in the case that just got its petition granted.
We have a case in which we filed a PCT-PPH petition on September 12, 2014. We are now into our seventh month of waiting for the Office of Petitions to rule on the petition. I’ve blogged about this problem at the USPTO before, here and here and here and here. It does not promote science and the useful arts to have PPH petitions sitting untouched for such a long time. Nor does it serve the goals of the PCT-PPH programs to have petitions sitting untouched for such a long time.