Category: Patents

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USPTO won’t fix the missing “corrective ADS” features in Patentcenter

It is recalled that one of USPTO’s stated goals for Patentcenter is that before it shuts down EFS-Web (scheduled to occur on November 8, 2023), the USPTO will bring forward all of the functions and features of EFS-Web into Patentcenter.  It is also a matter of common sense that each function and feature in Patentcenter that works for one application type needs to be implemented for all other relevant application types.   This blog article reports that the USPTO is now doubling down on a baffling refusal to implement the “Corrected Application Data Sheet” function for 371 applications.   USPTO’s position is, apparently, that so long as the USPTO documents the defect, then this relieves the USPTO of any need to actually correct the defect. Disappointingly, the USPTO extends this refusal to Hague and provisional applications as well. Continue reading “USPTO won’t fix the missing “corrective ADS” features in Patentcenter”

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No web-based Issue Fee payment for Hague applications

It is recalled that one of USPTO’s stated goals for Patentcenter is that before it shuts down EFS-Web, the USPTO will bring forward all of the functions and features of EFS-Web into Patentcenter.  It is also a matter of common sense that each function and feature in Patentcenter that works for one application type needs to be implemented for all other relevant application types.   This blog article reports that the USPTO is now doubling down on a baffling refusal to correct a defect in Patentcenter relating to the payment of Issue Fees in Hague (35-series) applications.  Continue reading “No web-based Issue Fee payment for Hague applications”

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Yet another thing the USPTO got wrong about its planned shutdown of EFS-Web

(updated to mention new trouble ticket CP153 and to describe the bug more directly.)

The USPTO has announced (press release) that on November 8, 2023, seven weeks from today, it will shut down EFS-Web.  It looks like the USPTO has completely failed to give any thought to what this means for PCT applicants whose patent applications involve genetic and nucleotide sequences.  Continue reading “Yet another thing the USPTO got wrong about its planned shutdown of EFS-Web”

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Patentcenter PCT-related defect is actually a feature?

I was gobsmacked during today’s USPTO webinar entitled How to make a smooth transition to Patentcenter.  The USPTO doubled down on a serious PCT-related defect in Patentcenter, saying that it is actually supposedly a feature, not a bug.

Everybody knows that you are not supposed to enter the US national stage twice from any single PCT application.  Or, to state it more plainly, it is legally impossible to enter the US national stage twice from any single PCT application.

Everybody knows this, that is, except the presenter in today’s USPTO webinar entitled How to make a smooth transition to Patentcenter.  This is a webinar that is intended to help experienced users of EFS-Web and Private PAIR make the transition to Patentcenter.

EFS-Web guards against the inadvertent duplicate entry into the US national stage from a PCT application.  Of course one of the stated design goals for Patentcenter, since its origin in 2018, is that all features from EFS-Web are supposed to be brought forward into Patentcenter.  Indeed the USPTO has announced “mission accomplished” for this stated design goal.  The USPTO says on its web site:

Patent Center has 100% of the functionality of EFS-Web, Public and Private PAIR …

This is patently false (blog article), but USPTO has not corrected this false statement.  One of the ways that USPTO has failed to provide “100% of the functionality of EFS-Web” in Patentcenter is that Patentcenter fails to guard against duplicate attempts to enter the US national stage from a PCT application.  This defect was reported to the USPTO on February 20, 2023 in trouble ticket CP99 (deep link to trouble ticket page).

During today’s USPTO webinar entitled How to make a smooth transition to Patentcenter, an attendee asked about this defect in Patentcenter.  I was gobsmacked to hear the USPTO presenter actually doubling down on the defect, stating that it is supposedly a feature, not a bug.  You can hear the words of the presenter here (MP3 file) and you can play the audio file here:

Here is a transcript:

Attendee question.  In EFS-Web, the system guards against a possible duplicate attempt to enter the US national stage from a particular PCT application.  Patentcenter fails to do so.  Why is that?

USPTO answer.  Stakeholder feedback indicated that Patentcenter may be implemented to allow more than one 371 filing, which may be desirable in situations where, for example, a unity-of-invention restriction was made during the international phase, to separate the claims into multiple groups.  So that was a great question, and hopefully that answer will shed some light on that for you.

Hopefully what will happen soon is that the USPTO will send out a corrective email message to everybody who attended today’s USPTO webinar, letting them know that the presenter was completely wrong about this.

And hopefully, what will happen soon is that the USPTO will correct this defect in Patentcenter, which was reported to the USPTO on February 20, 2023.

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Today is the day — Italy becomes an Accessing Office in DAS

You heard it here first (blog article, July 13, 2023)!  Today is the day that the Italian Patent and Trademark Office becomes an Accessing Office in the DAS system for the following kinds of applications:

    • national industrial design applications
    • national patent applications
    • national trademark applications
    • national utility model applications
    • PCT international applications

Continue reading “Today is the day — Italy becomes an Accessing Office in DAS”

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Comments on USPTO’s DOCX initiative

On June 6, 2023, the USPTO published a Federal Register notice (88 FR 37039) requesting comments on USPTO’s estimates of the burden that the DOCX application filing initative will impose upon applicants.  That FR Notice had set a closing date of August 7, 2023 for filing of comments.

As it turns out, nine comments got filed.  You can see them here:

All of the comments are extremely negative towards USPTO’s DOCX initiative.  Here is what listserv member Richard Schafer had to say about the AIPLA comments:

I haven’t had time to read the entire letter, but based on the executive summary section, I don’t remember seeing a public comment from the AIPLA or any other professional organization that was this strongly negative about a PTO proposal. I can only imagine the frustration certain portions of the PTO must be experiencing to have the largest professional organization in this field take such a strong stance against the entire DOCX proposal.

I’m sure someone in the PTO was lobbying AIPLA to try to prevent this kind of statement. Thankfully, that lobbying has clearly failed.

Here is my reaction to the AIPLA comments.  Highlights of the AIPLA comment letter include:

    • “The financial burden on the public as presented in the Notice would therefore be 79 times greater than that saved by the Office … .”  (letter at p. 5)
    • “In order to minimize the burden, AIPLA strongly urges that applicants be able to file a single document (such as a text-based PDF) that is legally sufficient to correct any errors that may be introduced by IT systems.”  (letter at p. 7)
    • “DOCX filing is fraught with legal and technical challenges that have not been addressed and for which solutions are unlikely.”  (letter at p. 7)
  • Historically what one has sometimes observed in comment letters from some professional associations is that a letter might use relatively soft language.  When such use of relatively soft language is observed, it is perhaps understandable given that any professional association has no choice but to try to take into account a range of views among its membership and among the participants in the comment-drafting process.  From my own perspective as a reader of many comment letters from many professional associations, I see this particular comment letter from AIPLA to be about as strongly worded as any I have ever seen from any professional association.  USPTO management (and decisionmakers at OMB) ought to not to take such a comment letter lightly.
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Comment letters about DOCX got sent

(Update:  the seven other comments are now public, and you can see them here.)

Hello colleagues.  The comment letter about USPTO’s DOCX initiative that I discussed in an earlier blog article got finalized and it received one hundred and seven signatures.  It got filed in response to the Federal Register notice (which you can see here) within the due date of August 7, 2023.  You can see the letter, as signed and filed, here.

Thank you very much to the One Hundred Seven signers!

I also sent in a separate comment letter so as to enter three documents into the record.  You can see that separate comment letter, dated August 6, 2023, here.