Category: Patents

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  Then when a crunch time comes, such as the need to urgently file a Terminal Disclaimer, or get yourself withdrawn as attorney, you will actually be able to get the task done.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”

In my previous post about published USPTO statistics for utility art units, I promised another blog post listing the utility art units with the smallest backlogs.  Here they are:

Continue reading “Utility art units with the smallest backlogs”

In my early days of amateur radio (call sign AA2KW) the way I knew how much current was flowing in a circuit was by looking at a needle in a d’Arsonval meter.  With the meter at right, with the needle as shown you could fairly confidently say the current is 9.6 amperes.  But with this kind of meter if the current got too big, the needle would bump against a “peg”.  We would say “the meter is pegged” as a shorthand way of saying “the current is so big that it exceeds the range of the meter”.  With the meter at right if the needle were at “10”, a person who did not know how mechanical meters worked might mistakenly conclude that the current was in fact 10 amperes.  The real situation was that there was a “peg” to keep the needle from swinging further to the right.  If the needle happens to be at “10”, the true value might be 12 amps or 20 amps or more.

Which brings us to the point of today’s blog posting.  USPTO publishes statistics as to the backlogs for particular art units.  In Private PAIR, you can see the backlog for a specific one of your pending files, communicated as a “First Office Action Predication” based upon when your application was filed and which art unit you are in.  The FOAP tells you how many months from now that particular application is likely to receive its first Office Action.  USPTO also publishes general statistics for each art unit.  Recently I wrote about backlogs in the design art units.  Now I am going to say a few words about the utility art units with the biggest backlogs including the art units that are “pegged”.

Continue reading ““Pegged”, or, which utility art units have biggest backlogs?”

(Followup postings here and here and here and here.)

USPTO’s internal standard for deciding PPH petitions is to try to attend to each petition with two months of when it was filed.  But the Office is falling behind.  What can you do?

The last time I asked USPTO about this kind of backlog, which was about two years ago, the Office cheerfully explained that if you want your PPH petition decided promptly, you can file a second petition.  This second petition is a petition under Rule 182, with a fee of $400 (smaller for small or micro entities), to ask that the PPH petition be decided promptly.

Anyway after we filed half a dozen of these $400 petitions, USPTO somehow allocated enough resources to the problem that PPH petitions were again being attended to promptly.  That was a couple of years ago.  But now USPTO has fallen behind again.

It sort of misses the point of PPH if USPTO fails to take up the PPH petitions promptly, seems to me.

Continue reading “USPTO falling behind in deciding PPH petitions”