Category: Patents

Hello readers.  Yesterday you learned (blog article) that a face-to-face meeting has been scheduled between USPTO people and representatives of the Patent Center listserv.  It will take place on Wednesday, October 18.  What prompted this meeting are the concerns that were raised in the letter dated September 29, 2023 from One Hundred Seventy-Eight Members of the Patent Center Listserv to USPTO Director Kathi Vidal.

As of yesterday the attendee list was as follows.

From the USPTO:

• • Vaishali Udupa (Commissioner for Patents)
  • Richard Seidel (Deputy Commissioner for Patents)
  • Greg Vidovich (Assistant Commissioner for Patents)
  • Terrel Morris (Director, Office of Information Technology for Patents)
  • Kimberly Williams (OITP)
  • Patricia Mallari (Special Advisor for Patents)
  • Steven Griffin (Senior Advisor at USPTO)

Representing the Patentcenter listserv:

• • Carl Oppedahl
  • Richard Schafer
  • Suzannah Sundby

Today we have learned of a small change in the attendee list.  On the listserv side the attendee list remains the same.  But see if you can spot the change in the attendee list on the USPTO side:

• • Kathi Vidal (Director of the USPTO)
  • Vaishali Udupa (Commissioner for Patents)
  • Richard Seidel (Deputy Commissioner for Patents)
  • Greg Vidovich (Assistant Commissioner for Patents)
  • Terrel Morris (Director, Office of Information Technology for Patents)
  • Kimberly Williams (OITP)
  • Patricia Mallari (Special Advisor for Patents)
  • Steven Griffin (Senior Advisor at USPTO)

I find it very encouraging to be able to report that a face-to-face meeting has been arranged between USPTO people and people from the Patentcenter listserv.

This will happen on Wednesday, October 18, 2023, at room 10D79 of the Madison Building (600 Dulany Street, Alexandria, VA 22314).  The meeting is scheduled for 3:30 PM to 5PM.

Attending on the USPTO side will be:

• • Vaishali Udupa (Commissioner for Patents)
  • Richard Seidel (Deputy Commissioner for Patents)
  • Greg Vidovich (Assistant Commissioner for Patents)
  • Terrel Morris (Director, Office of Information Technology for Patents)
  • Kimberly Williams (OITP)
  • Patricia Mallari (Special Advisor for Patents)
  • Steven Griffin (Senior Advisor at USPTO)

Attending on behalf of the Patentcenter listserv will be:

• • Carl Oppedahl
  • Richard Schafer
  • Suzannah Sundby

What prompted this meeting are the concerns that were raised in the letter dated September 29, 2023 from One Hundred Seventy-Eight Members of the Patent Center Listserv to USPTO Director Kathi Vidal.

Everybody knows that you cannot enter the national phase twice from a single PCT application.  Everybody, that is, except:

• • the people at the USPTO who wrote the software for Patent Center (see Patent Center bug CP99), and
  • the USPTO presenter who, on September 19, 2023, said (listen to the recording) that it was intentional that Patent Center was designed to permit duplicate entries into the US national phase from a single PCT application.

EFS-Web had been correctly programmed all along to guard against this mistake.  If, in EFS-Web, a filer were to attempt to enter the US national phase in a PCT case in which the US national phase had already been entered, a warning would appear.  But the Patent Center developers had failed to bring this feature forward from EFS-Web into Patent Center.  This was Patent Center bug CP99, reported to the USPTO on February 20, 2023.  This was one of many reasons why it had been false for the USPTO to claim that “100%” of the features and functions of Private PAIR and EFS-Web had been brought forward into Patent Center.   (It continues to be false for the USPTO to claim, as it continues to claim, that “100%” of the features and functions of Private PAIR and EFS-Web have been brought forward into Patent Center.)

The Patent Center developers at the USPTO have now quietly corrected this bug in Patent Center.  Now, for the first time starting at about October 11, 2023, if you try to enter the US national phase twice from a single PCT application in Patent Center, a warning pops up.  This problem was reported to the USPTO in February, and it took more than seven months, but the Patent Center developers have now fixed this problem.

It would have been courteous of the USPTO to let us know that it cleared trouble ticket CP99, but USPTO did not do so.  We had to find out by stumbling upon it.

The other corrective step that needed to happen was for the USPTO to send out a correction, perhaps by email, to the people who attended the September 19, 2023 Patent Center training event.  Those people were expressly told by the USPTO presenter that it is possible, and indeed, advisable, to enter the US national phase multiple times from a single PCT application, for example if there had been a finding of a lack of unity of invention in the international phase.  (Listen to the recording here.)  But the USPTO has not sent out any such correction.

Patent Center bug CP151, which is one of the “high priority ticket” bugs, got quietly fixed by the USPTO within the past 36 hours.  This would have been the ideal time for the USPTO to fix Patent Center bug CP31, which is also a “high priority ticket” bug and has been outstanding for more than three years now, but the USPTO failed to do that.  Continue reading “CP151 cleared, CP31 still not cleared”

One hundred thirty-seven intellectual property professionals have written to the Office of Information and Regulatory Affairs at the Office of Management and Budget, asking for regulatory action regarding the USPTO’s handling of Patent Center and Private PAIR and EFS-Web.  The letter is dated today, October 9, 2023.  You can see it on SSRN (https://ssrn.com/abstract=4597405) and it is archived here.  The letter asks that OIRA do three things:

• • Remind the USPTO that it may not impose a burden of this magnitude without an ICR clearance.  Decommission of incumbent, working software should be postponed until the USPTO’s new replacement software demonstrates a level of reliability that provides practical utility. Decommission should be postponed until the PTO has a clearance obtained after full public comment. The PTO has done none of these things.
  • Remind the PTO that Information Quality principles govern the PTO’s decisionmaking.  Readiness and quality reviews of the new software on which the PTO relies are “influential,” and should meet requirements for objectivity, utility, integrity, and reproducibility, and public consultation. Software utility, quality, and readiness must be assessed from the point of view of the PTO’s users, not the PTO’s staff. The PTO has not done so.
  • Exercise its authority under 44 U.S.C. § 3504(a) and (h) to “oversee the implementation of policies, principles, standards, and guidelines for information technology functions and activities of the Federal Government, including periodic evaluations of major information systems” to ensure that the PTO’s major information systems are designed to achieve agency missions. As we note below, the PTO’s software engineering and quality processes are suspect.

If only USPTO leadership people who are responsible for Patent Center could extend to USPTO’s customers the courtesy of …

• • returning telephone calls, or
  • replying to paper letters, or
  • answering emails.

If only the Commissioner for Patents could have answered a paper letter that Seventy-Four Members of the Patent Center Listserv sent to him about Patent Center on December 16, 2021.  He never replied to that letter.

If only the Director of the USPTO, Kathi Vidal, could have answered an email message that the Patent Center Listserv sent to her about Patent Center on June 9, 2023.  She never answered that email.

If only the Assistant Commissioner for Patents could answer an email message that the Patent Center Listserv sent to him about Patent Center on July 11, 2023.  He has not answered that email.

If only the Commissioner for Patents, Vaishali Udupa, could answer an email message that the Patent Center Listserv sent to her about Patent Center on July 25, 2023.  She has not answered that email.

If only the Assistant Commissioner for Patents could return a telephone message that the Patent Center Listserv left for him about Patent Center on September 18, 2023, asking him about the unanswered email of July 11, 2023 mentioned above.  He has not returned our call.

If only the Director of the USPTO, Kathi Vidal, could answer a paper letter that One Hundred Seventy-Eight Members of the Patent Center Listserv sent to her about Patent Center on September 29, 2023.  She has not replied to that letter.

If only the Commissioner for Patents, Vaishali Udupa, could answer an email message that the Patent Center Listserv sent to her about Patent Center on September 30, 2023.  She has not answered that email.

If only the Director of the USPTO, Kathi Vidal, could answer an Offer of Compromise that the Patent Center Listserv sent to her as a paper letter on September 30, 2023.  She has not replied to that Offer of Compromise.

When high-up USPTO people who are responsible for Patent Center fail to return telephone calls, and fail to reply to paper letters, and fail to answer emails, what should customers do?  

(Update:  a week has passed and Director Vidal has not responded to our Offer of Compromise.  See blog article.)

This blog post describes an offer of compromise about the shutdown of Private PAIR and EFS-Web which we at the Patentcenter Listserv have extended to the USPTO today.  We hope the USPTO will accept it.  Continue reading “An offer of compromise to the USPTO”

The USPTO has announced it plans to shut down EFS-Web (and Private PAIR) on November 8.  This is because, supposedly, Patent Center provides “100%” of the functions of EFS-Web and Private PAIR.  (This is a pants-on-fire lie, as the 187 signers explain to Director Vidal.)  So anyway, the real situation is that the USPTO actually admits that it must not shut down EFS-Web, as will now be described.  Continue reading “USPTO admits it cannot shut down EFS-Web”

The USPTO announced last Wednesday, September 20, 2023 that it has picked November 8, 2023 as the date that it will shut down Private PAIR and EFS-Web.  In doing so, the USPTO was communicating its view that supposely Patent Center is ready to be taken out of beta test, and is ready to be placed into production service, supposedly doing everything that Private PAIR does and everything that EFS-Web does.

One hundred seventy-eight members of the Patentcenter Listserv have sent a letter to USPTO Director Kathi Vidal (details here) today telling her that the USPTO is mistaken about this.

But the Patentcenter Listserv is not the only group that is trying to get USPTO Director Kathi Vidal to realize that Patent Center is not ready.  The American Intellectual Property Law Association has also tried to get her to realize this.  AIPLA carried out a survey in June of 2023 of actual users of Private PAIR, EFS-Web, and Patent Center.  Here are the results of the survey (presentation slides).  Here are some of the findings of the survey.  Respondents were asked:

Would you be comfortable with Private PAIR and EFS Web being shut down in favor of PatentCenter by sometime later this summer?

• • 455 respondents (89%) said no, they would not be comfortable with that.
  • only 58 respondents (11%) said yes, this should be fine.

Respondents were asked:

In your opinion, how ready is PatentCenter for full day-to-day use (without Private PAIR or EFS Web as a backup)?  The possible answers were on a scale of 1 to 5 where 5 means “fully ready”.  Here are the responses:

A mere 2% of respondents said that PatentCenter is “fully ready”.  Even the next step down, a response of “4”, elicited a mere 6% of responses.   A staggering 92% of responses were in the bottom three values of 3, 2, or 1.

These slides have been presented to Director Vidal by AIPLA representatives.  To say this plainly, Director Vidal has seen these slides.  But despite the Director having seen these slides, the USPTO announced on September 20, 2023 that it is shutting down Private PAIR and EFS-Web on November 8, 2023.