Category: Patents

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A reminder about training material for DO/EO/US

On December 10, 2019 I provided training material to the USPTO (blog article, training material) about PCT Declaration Number 4.  The idea is that a patent firm located outside the US might be trendy, modern, and up-to-date and might provide a signed inventor declaration (for later US purposes) at the time of filing a PCT application.  The idea is that perhaps 1½ or 2½ years later, when the US national phase is entered, the signed declaration of inventorship for US purposes would already be in the file!  The idea is that the formalities examiner in the DO/EO/US would take a look in the file and would pay attention to the presence of the signed PCT Declaration Number 4.

Unfortunately, all too often in recent months, we have had cases at the DO/EO/US where the formalities examiner at the USPTO fails to pay attention to the presence of the signed PCT Declaration Number 4 in our national-phase entry application file.  Just today, for example, in one of our national-phase entry applications, the formalities examiner at the USPTO mailed out an official Filing Receipt along with Form PCT/DO/EO/903 (371 Acceptance Notice) dated July 17, 2023 falsely stating that we had failed to provide a “properly executed inventor’s oath or declaration” for our inventor.

It is hoped that the USPTO will once again in 2023 provide the training materials to its DO/EO/US formalities examiners, so that they can avoid making this mistake in the future for other US national-phase applicants.

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How to choose which subject for binge-watching?

PCT enthusiasts now have two subjects to choose from for binge-watching.  Just today I finished the video editing of the sixteenth webinar in the recently finished sixteen-webinar series on ePCT.  As a consequence, as of today, a PCT enthusiast may, if desired, binge-watch more than nineteen hours of webinar video about ePCT.  (You can see it here.)

This parallels the over fourteen hours of webinar video about PCT (as distinguished from ePCT) that are available for binge-watching here.  Yes, the PCT enthusiast has not one but two subjects available for binge-watching.

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Italian patent and trademark office — soon to be more trendy, modern and up-to-date

On October 1, 2020 (blog article) the Italian patent and trademark office joined the DAS system.  It became a Depositing 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

On September 1, 2023, the Italian patent and trademark office will become an Accessing Office in the DAS system for these same kinds of applications.  This is, of course, a very exciting development for the Italian patent and trademark office and for the DAS system.

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Will the attached assignment be acceptable to the USPTO?

About once a month we at OPLF get an inquiry from an intellectual property firm located outside of the US regarding a client’s name change or assignment.  The inquiry is along the lines of:

Here is a draft Assignment from Company A to Company B.  Kindly advise whether this Assignment will be acceptable to the USPTO to transfer patent C from Company A to Company B.  Kindly advise what other documents if any will be needed and what this will cost.

Or the inquiry is along the lines of:

Here is an excerpt from the official corporate register of country A evidencing that the Company has officially changed its name from A to B.  Kindly advise whether this document will be acceptable to the USPTO to change the applicant name from A to B.  Kindly advise what other documents if any will be needed and what this will cost.

We find ourselves having to explain the same things, over and over again, to non-US counsel.  We hope that with this blog article we can save some time for everybody involved and answer some of the questions.  Continue reading “Will the attached assignment be acceptable to the USPTO?”

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July 4 a holiday at the USPTO

Tuesday, July 4, 2023 will be a federal holiday in the District of Columbia.  This means that the USPTO will be closed that day.

This means that any response that would normally be due on Tuesday, July 4 will be timely if made by Wednesday, July 5.

Note the important comment below from alert reader Dan Ferris:

It’s important to note that the “next business day” rule does not apply to the copendency requirement for filing divisional/continuation applications. Any such applications with parent applications issuing on July 4, 2023 should be filed no later than July 4, 2023.

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False statement about DOCX returns to USPTO web site

click to enlarge

It will be recalled (blog article, May 30, 2023) that on May 28, 203, the USPTO had posted a false statement on the USPTO web site.  The USPTO said:

The USPTO strongly recommends submitting Specification, Claims, and/or Abstract in DOCX format which provides better data accuracy.

On May 29, a listserv member posted the question “Isn’t this false advertising or improper legal advice?” and a few hours later, the false statement disappeared from the USPTO web site.

Now on June 19, 2023, the false statement has quietly returned to the USPTO web site.  Quoted above is a screen shot taken on June 19, 2023 from USPTO’s Patentcenter web site.  Continue reading “False statement about DOCX returns to USPTO web site”

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Learn how to receive ISA/EP correspondence electronically rather than by postal mail

Do you sometimes pick ISA/EP when you file a PCT application?  Is it a source of frustration that the communications from ISA/EP arrive only slowly, via postal mail, rather than electronically?  Would you like to learn how to set things up with an electronic EPO mailbox so that you can receive your ISA/EP communications electronically instead of by slow postal mail?  Continue reading “Learn how to receive ISA/EP correspondence electronically rather than by postal mail”

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Time to file comments on DOCX yet again

(Update:  nine comments got filed.)

This has been a busy week for Federal Register notices by the USPTO that relate to the ill-fated DOCX patent application filing initiative.  We already knew about two Federal Register notices about this:

    • 88 FR 36956 dated June 6, 2023, blinking a fourth time on the start date for the $400 non-DOCX penalty, and
    • 88 FR 37036 dated June 6, 2023 blinking a second time on the ending date for the ability to file an “auxiliary PDF” file by which the applicant may try to protect against USPTO errors in rendering DOCX files.

Now comes a third Federal Register notice:

    • 88 FR 37039 dated June 6, 2023, requesting comments on USPTO’s estimates of the burden that the DOCX application filing initative will impose upon applicants.

In this blog article I briefly discuss this third FR notice.  In a later blog article I will discuss this third FR notice in greater detail.  Continue reading “Time to file comments on DOCX yet again”