Patents – Page 105 – Ant-Like Persistence

February 4, 2015

Followup to “Four Consecutive Fridays”

On January 26 I blogged here about the earthquake that happened on January 15, in which the Swiss Franc jumped some 30% in value. I talked about how this earthquake affected the World Intellectual Property Organization in Geneva. I mentioned that the legacy approach to currency exchange rate shifts entailed a time lag of as much as three or four months, a time lag that would cost WIPO some millions of dollars. I mentioned that the various patent offices around the world, in their role as PCT Receiving Offices, might or might not choose to accommodate WIPO by implementing new fee amounts sooner. I wrote to USPTO and to EPO to urge them to accommodate WIPO in this way. Here’s what I heard back from those patent offices …

Continue reading “Followup to “Four Consecutive Fridays””

January 26, 2015

Four consecutive Fridays (PCT fees likely to increase in a few weeks)

(There is a follow-up posting and another follow-up posting.)

On January 15, 2015 the Swiss Franc rose by about 19% relative to the US dollar, as shown in this graph (source: XE.com). It’s likely to stay this way for some time. How will this affect filers of PCT patent applications?

Continue reading “Four consecutive Fridays (PCT fees likely to increase in a few weeks)”

January 24, 2015

What not to do when drafting claims (lime and coconut)

In this blog post I will say a few words about what not to do when drafting claims. First a metaphor. Suppose the invention is the one in Harry Nilsson’s song “Coconut“. The first draft of the proposed patent claim, prepared by your new associate, is:

1. A method for treating a bellyache, the method carried out with respect to a lime and a coconut, the method comprising the steps of:

putting the lime in the coconut, and
drinking it all up.

Continue reading “What not to do when drafting claims (lime and coconut)”

January 13, 2015

Urging USPTO to “drink its own Champagne”

(There is a followup posting.)

Let’s say you filed a PCT application and picked the USPTO to be your International Searching Authority. Suppose further that ISA/US decided the claims are patentable. When you enter the US national phase from that PCT application, may you safely assume that the USPTO will allow the application?

Continue reading “Urging USPTO to “drink its own Champagne””

January 5, 2015

CLE opportunity in Michigan on March 16

Last year the Intellectual Property Law Section of the State Bar of Michigan invited me to speak at their Spring Seminar 2014 in East Lansing, Michigan. It was a delightful event, well organized and well attended. From the point of view of a speaker, what’s nice is when an audience has lots of good questions. This was such an audience. I am delighted that they have invited me back to speak at this year’s Spring Seminar 2015.

You can see the program and brochure. It will be Monday, March 16, again in East Lansing. Fellow intellectual property bloggers Martin Schwimmer (The Trademark Blog) and Eugene Quinn (IPWatchdog) will also be presenting, each of them in a plenary session.

Continue reading “CLE opportunity in Michigan on March 16”

January 3, 2015

Video Documentary “Inventing to Nowhere”

If you have not already seen it, you might want to look at the video documentary “Inventing to Nowhere”. It talks about the importance of the patent system. It is quite well done.

January 2, 2015

Most-read postings in “Ant-like Persistence” for 2014

The arrival of a new year prompts every blogger to look back to see which postings in the previous year reached a lot of eyeballs.

Well, by far the most-read posting for all of 2014 in Ant-like Persistence was “A little-known USPTO initiative to reduce the backlog“. This posting, dating from early April of 2014, might be of great interest to patent practitioners who missed the original posting.

In second place was “USPTO is closed today, Monday, March 17“. This was the posting that told readers that it was a snow day in Washington. It meant that anything that needed to be filed in the USPTO on Monday March 17 could be postponed until Tuesday March 18 and still be timely.

The people who subscribe to this blog are likely to hear of such USPTO closings in the future. So if you have not already done so, subscribe to the blog. And if you have a friend or colleague who would like to hear about it when the USPTO has a snow day, encourage them to subscribe to the blog.

January 2, 2015

The importance of warning clients about unscrupulous fee requests

We all need to redouble our efforts to warn clients about unscrupulous fee requests. Four recent examples reminded me how insidious these fee requests can be. The first one asks me to wire $2322.30 to a bank in Slovakia. The second one asks me to wire $2738 to a bank in Czech Republic. The third one asks me to wire $2548.25 (where do they get these amounts?) to a bank in Slovakia. And the fourth asks me to wire $2327 to a bank in Czech Republic.

Continue reading “The importance of warning clients about unscrupulous fee requests”

December 29, 2014

Yet another AIA trap for the unwary

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”

December 29, 2014

How to know whether USPTO has recognized your patent Power of Attorney?

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?”