Category: Patents

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One hundred six practitioners write to the Acting Commissioner for Patents

Today a letter got sent to the Acting Commissioner for Patents, Andrew Faile.  It was signed by one hundred six patent practitioners.   You can see the letter here.  USPS delivered it as you can see here.  A courtesy copy of the letter was send by email to Acting Commissioner Faile and to Director Kathi Vidal.

The purpose of the letter is to help Acting Commissioner Faile appreciate the two major failures in the USPTO’s Federal Register notice dated April 28, 2022 entitled Filing Patent Applications in DOCX Format (87 FR 25226).

 

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What is in the “yearlong study” that supposedly says DOCX is the right path?

The USPTO published a Federal Register notice entitled Setting and Adjusting Patent Fees during Fiscal Year 2020, dated August 2, 2020 (85 FR 46932).   This is the FR notice that communicates the USPTO’s conclusion that if we are going to force applicants to change from what they were doing in the past, and in particular if we are going to force them henceforth to hand in some particular format for US patent applications, then we at the USPTO know what’s best, and what’s best is not some particular flavor of PDF.  What’s best (according to the USPTO) is Microsoft Word DOCX format. 

The Federal Register notice said, in four places:

The USPTO conducted a yearlong study of the feasibility of processing text in PDF documents. The results showed that searchable text data is available in some PDFs, but the order and accuracy of the content could not be preserved. 

As soon as we saw this, many members of the practitioner community wondered what was in the “yearlong study”?    What was there in this “yearlong study” that led to a conclusion that Microsoft Word DOCX format was supposedly the better format to try to force applicants and practitioners to file, rather than some particular PDF format?

One member of the practitioner community filed a FOIA request at the USPTO, asking for a copy of the “yearlong study”.  This was ten months ago.  The people at the USPTO whose job it is to fight FOIA requests comply with the FOIA law have fought tooth and nail to keep from having to hand over the “yearlong study” and have not handed it over even now after ten months.  And indeed almost everything about the USPTO’s way of forcing the Microsoft DOCX format upon applicants and practitioners has led to an adversarial relationship between the USPTO and a substantial portion of the practitioner community.

So it was very much a breath of fresh air when, earlier today, at my request, Acting Commissioner Andrew Faile sent me a copy of the “yearlong study”.  I think Acting Commissioner Faile is trying to be more open and candid with the practitioner community now in recent months.

I have done a quick read of the yearlong study and you can read my initial conclusions here.

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Please consider signing this letter about DOCX

(Update:  The letter has been sent.  See here.)

Hello readers.    If one of the things that you do for a living is filing patent applications at the USPTO, then I urge you to take a look at two documents:

Please consider signing the letter.

Thank you.

Carl

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More on the PCT letter from 42 practitioners to Director Vidal

Hello dear readers.   It will be recalled that on April 26, 2022, 42 PCT patent practitioners from the PCT Listserv signed and sent a letter to USPTO Director Kathi Vidal.  The letter (click here to see it) has eight “asks” relating to the Patent Cooperation Treaty.  As you can see here, what was really quite encouraging was that a mere two minutes later, Director Vidal responded, saying:

Thank you for reaching out on this … .  I appreciate it.  I will review it shortly.  Kathi.

The part of the USPTO that is in charge of stuff like this is called International Patent Legal Administration (IPLA).  A couple of days ago, the phone rang and it was a very nice fellow named Stefanos Karmis, who is the acting director of IPLA.  He let me know that Director Vidal has asked him to be the point person on getting back to us on this letter.  He asked if I could meet with him by telephone to discuss our “asks”.  He and I have set a date of June 2 for a telephone call about this.  This is, obviously, an encouraging development and we will want to do what we can to make the most of this telephone call, and whatever might come after that.

Here are some of the things that have taken place as part of preparing for the June 2 telephone call.

We have set up a private listserv for the 42 signers of the letter, so that we can discuss and prepare.  

We have set up a Gotomeeting for May 26 for the 42 signers of the letter, so that we can discuss and prepare.

The other 900 or so members of the PCT Listserv who did not sign the letter (now I imagine some are wishing they had gotten off their behinds and signed the letter!) have been invited to get in touch with whichever of the 42 signers they are best acquainted with, to discuss and prepare.  There may also be discussions on the PCT Listserv itself for discussions as we lead up to the June 2 phone call.

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What I wrote to a potential client just now

This morning an email message came in from a patent firm in a foreign country.  The email message was from a patent firm that we have not worked with before.  The email message told us that the patent firm has a client that filed a PCT application and is now interested in entering the US national phase.   The email message said:

Therefore, we would appreciate if you please provide your fees with a breakdown of firm’s fees and government fees, and any other fee that the client would incur, from the filing to registration as soon as possible.

I will tell you what I wrote back to this patent firm.  Continue reading “What I wrote to a potential client just now”

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Director Vidal responds to Forty-two Patent Practitioners on PCT

click to enlarge

(Update:  we now have a phone call scheduled with the acting director of IPLA.  Read about it here.)

It was at 7:25 AM today (Eastern Time) that Forty-two Patent Practitioners wrote to Director Vidal, with eight “asks” relating to the Patent Cooperation Treaty, and sent a courtesy PDF copy of the letter by email.  Two minutes later, Director Vidal answered the email (see at right).  She wrote:

Thank you for reaching out on this … .  I appreciate it.  I will review it shortly.  Kathi.

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Forty-two Patent Practitioners write to Director Vidal about PCT

(Update:  we now have a phone call scheduled with the acting director of IPLA.  Read about it here.)

(Update:  Director Vidal has responded to acknowledge receiving the letter.  See blog posting.)

Forty-two Patent Practitioners have written to Director Kathi Vidal in a letter dated April 26, 2022, asking her to help the USPTO get closer to providing world-class service to the PCT applicant community.  You can see the signed letter here.  Here are the “asks”:  Continue reading “Forty-two Patent Practitioners write to Director Vidal about PCT”

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Progress of PCT Receiving Offices towards participation in the DAS system

(Update:  Forty-two Patent Practitioners have written to Director Vidal about this.  See blog article.)

There is a recent development that the RO/TR (PCT Receiving Office of the Turkish Patent and Trademark Office) will become a Depositing Office in the WIPO DAS system, with effect from June 1, 2022.  Turkey’s decision to be trendy, modern and up-to-date in this regard brings to twenty-four the number of patent offices around the world whose Receiving Offices have become Depositing Offices in the DAS system.  

This raises the natural question of what the progress is of the various PCT Receiving Offices in this important area.  Which PCT Receiving Offices are trendy, modern and up-to-date?  Which PCT Receiving Offices are laggards?  It is instructive to rank the Receiving Offices based on how many applications get filed there, and then to check to see which of those ROs have taken the step of becoming a Depositing Office in the DAS system.  Here is how things stand as of the present. (Preview: The USPTO fares poorly in this assessment.) Continue reading “Progress of PCT Receiving Offices towards participation in the DAS system”