Bluesky: @oppedahl.com
The Canadian parliament has taken up a bill which, if enacted, would permit Canada to join the Hague Agreement (one-stop filing of applications for protection of industrial designs) and the Patent Law Treaty.
There has also been some progress in Canada toward eventually joining the Madrid Protocol (one-stop filing of applications for protection of trademarks).
Yes, it’s time to update your PCT-SAFE File Manager software. There is a vulnerability in an older version of SSL (secure sockets layer) and our friends at WIPO have released a new version of PCT-SAFE FM — version 3.51.065.241 — which avoids this vulnerability. Continue reading “Time to update your PCT-SAFE FM software”
In an order dated October 8, 2014, the US district court in Brooklyn has rendered a judgment of about $7 million against a Virginia patent law firm. The award is tied to an allegation that the firm failed to pursue US patent rights for a client despite undertaking to do so.
There was a box that could have been checked on a patent office form, that might well have kept this lawsuit from happening had it been checked.
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.
Continue reading “Filing in EPO with a priority claim to a US application? If so, read this!”
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.
Continue reading “Bilateral priority document exchange between USPTO and Chinese patent office”
I am at Schipol airport (Amsterdam) and will shortly board a train for the Hague. Tomorrow and the next day I will be at the European Patent Office to speak at the second annual “PCT at the EPO” meeting.
I have heard from a few readers of this blog who will be at the meeting. I look forward to seeing you there.
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:
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?
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?
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.
Continue reading “Thinking about calling a US patent application a continuation-in-part”
As a reminder, the European Patent Office will present “PCT at the EPO”, a two-day educational program. This will be Wednesday and Th
ursday, 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.