Dozens of bugs in Patentcenter remain unattended-to

When the USPTO made Patentcenter available for alpha testing about two years ago, I was one of the alpha testers.  As an alpha tester, I reported bug after bug to the USPTO.   But I did not criticize the USPTO publicly.  I was a good alpha tester, reporting the bugs only privately to the USPTO.

This went on for a year, and then USPTO quietly shifted from alpha testing to beta testing, and it meant that more users got added to the pool of testers.  The beta testing was also a closed environment, just like the alpha testing.  I was a good beta tester, continuing to report bugs only privately to the USPTO.

I think it is possible that my firm was the most diligent and prolific alpha- and beta-tester of Patentcenter during the closed alpha and closed beta testing phases.  What makes me think this is:

  • It appears that by the end of 2019, my firm had filed fully half of all of the entries into the US national phase from a PCT application that anybody had filed in Patentcenter (blog article).
  • It appears that by April of 2020, my firm had filed at least eight percent of all of the utility patent applications that anybody had filed in Patentcenter (blog article).
  • It appears that by April of 2020, my firm had filed at least half of all of the design patent applications that anybody had filed in Patentcenter (blog article).

To the USPTO’s credit, it did fix perhaps one-third of the bugs that alpha- and beta-testers reported.  But even now, two years later, many bugs that alpha- and beta-testers have reported to the USPTO have not gotten fixed.

This would not be so bad except that a few months ago the USPTO decided to release Patentcenter for beta testing by the general public.  Anybody who wishes may now make use of Patentcenter.

And so as of that time I felt there is no need to keep bug reports private.   I set up the Patentcenter listserv, which is an email discussion group for beta testers of Patentcenter.  I set up the Patentcenter trouble ticket web site.

What is disappointing is that many Patentcenter bugs that have been reported to the USPTO since it released Patentcenter for beta testing by the public have not been fixed.  What is even more disappointing is that many Patentcenter bugs reported a year ago or even two years ago by beta- and alpha-testers have not been fixed.

Here is one example among dozens.

When you upload a PDF as part of your e-filing activity, your natural expectation about it might be:

If you upload it, and if you preview it in the e-filing system, and if it looks the way it is supposed to look, then you can safely click “submit” and it will look that way in IFW.

In ePCT, this is indeed how it works.  If it is going to get degraded when you click “submit”, then the preview will show you what the degraded file would look like.  This gives you fair warning.  You can then set to work trying to figure out what to do differently so that the file will not get degraded so badly.

In Patentcenter, this is not how it works.  A file containing gray scale might look perfectly normal to the human eye when previewed in Patentcenter.  But it will get degraded badly after you click “submit”, and it might get degraded to the point of being unreadable.

Not only that, Patentcenter might convert it into blank pages.

I am not making this up.  Blank pages.  The preview will show normal pages that are not blank.  And when you click “submit”, what will later turn up in IFW might be blank pages.

One thing that this means is that to protect yourself from malpractice liability when using Patentcenter, you have no choice but to go into IFW after you have e-filed a document, to view it and to see whether it has gotten converted into blank pages.  And to see whether it has gotten blurred or degraded, perhaps to the point of unreadability.

This is not easy to do if, as has very often happened in recent weeks, you cannot see it at all in IFW until a day or two after the day that you e-filed it.

Which brings me to my disappointment at USPTO’s failure to attend to bugs that are being reported these days by the listserv community.   Take a look at bug number CP27 .  This bug is the problem of Patentcenter converting a perfectly readable PDF file into blank pages.  This bug got reported to the USPTO on June 8, 2020.  I blogged about it on June 8, 2020.  Three weeks passed with no corrective action by the USPTO, so one of the listserv volunteers (Richard Schafer) cross-posted the bug report into Ideascale (direct link) on July 4, 2020.  Nobody from USPTO has responded in any way to this posting in Ideascale.

What prompted this blog posting today is a disappointing thing that happened yesterday when I e-filed a new patent application in Patentcenter.  This time I got lucky and I was able to see the newly filed application in IFW right away instead of having to wait several days for it to be visible in IFW.  And I was astonished to see that the USPTO had still not corrected the defect in Patentcenter that Patentcenter sometimes converts a PDF into blank pages.

Months have passed since this extremely serious bug got reported to the USPTO, and it has not been attended to even now.

As I say, in this case I got lucky.  Instead of having to wait several days for the newly filed application to be visible in IFW, I was able to see this application right away in IFW.  I clicked through the 120 or so pages of what I just e-filed, to see what damage Patentcenter had done to the various files that I had uploaded.  Yes, many files were degraded but most of the degradations were modest enough to permit the pages to continue to be human readable.  But three pages had gotten converted to blank pages.  I then located the source PDF document and printed it to CutePDF and uploaded it and e-filed it again.  This time Patentcenter did not convert it to blank pages.  Because I was able to deal with this malfunction in Patentcenter on the same day that Patentcenter malfunctioned, I did not need to worry about losing a filing date due to the malfunction in Patentcenter.

But what is so very disappointing is that USPTO has seemingly paid no attention to this extremely serious bug report, even after some three months.  

What is the protest fee in ISA/US?

In the PCT listserv, a practitioner recently exasperatedly asked:

What is the protest fee in the International Searching Authority at the USPTO?

The movie Airplane makes clear how such a question should be answered.

Rumack (Leslie Nielson): You’d better tell the Captain we’ve got to land as soon as we can. This woman has to be gotten to a hospital.

Elaine Dickinson (Julie Hagerty): A hospital? What is it?

Rumack: It’s a big building with patients, but that’s not important right now.

So we realize the answer is:

It’s a fee that you pay if you have been invited to pay additional search fees and if you wish to protest the finding of a lack of unity of invention. But that’s not important right now.

Later in the same movie the following exchange occurs:

Elaine Dickinson: You got a letter from headquarters this morning.

Ted Striker: What is it?

Elaine Dickinson: It’s a big building where generals meet, but that’s not important.

Note the particular cleverness that Elaine delivers the straight line in the first exchange, and having learned how to be funny about this, in the second exchange she is the one to deliver the punch line.

Of course there is always the chance, however remote, that the practitioner was really asking something like:

What is the amount of the protest fee in ISA/US?

This turns out to be a very interesting question, and it prompted me to look up and compare the protest fees in each of the twenty-three ISAs. Here is the answer. Continue reading “What is the protest fee in ISA/US?”

Mexican Institute of Industrial Property joins DAS

Yet another intellectual property office has joined DAS.  The Mexican Institute of Industrial Property (IMPI) will become a Depositing Office and an Accessing Office in DAS on Tuesday, November 3, 2020.

Only just now did I notice that the logo for IMPI is a Möbius strip!  

IMPI will be a Depositing Office for:

  • patent applications
  • utility model applications
  • industrial design applications

In addition, RO/MX will be a Depositing Office for purposes of PCT applications filed in RO/MX.

This offers a reminder that Mexico is one of the seventy-six Offices that provides utility model protection.

IMPI will be an Accessing Office for:

  • international design applications (Hague applications) filed at the IB
  • industrial design applications
  • patent applications
  • utility model applications

Which intellectual property firm in Mexico is the most trendy, modern, and up-to-date?   Send me a DAS access code for a Mexican patent application, a DAS access code for a Mexican utility model application, a DAS access code for a Mexican industrial design application, and a DAS access code for a PCT application filed in RO/MX.  I can then post Certificates of Availability (with a few digits of the application numbers blurred) for those four applications, and I will then be able to recognize your firm as the most trendy, modern and up-to-date intellectual property firm in Mexico.

Today is the day — Colombia joins the WIPO DAS system

Yes, today is the day that Colombia joins DAS as both an Accessing Office and a Depositing Office.  You can read about this here.

Who is the most trendy, modern and up-to-date Colombian intellectual property firm?  Be the first to provide to me an application number, filing date, and DAS access code for a design application, a patent application, a utility model application, and an RO/CO application, and I will recognize your status as the most trendy, modern and up-to-date in Colombia.  (I will blur part of the application number in the Certificates of Availability that I obtain and post.)

Eighth-largest economy in the world opens national phase route from PCT

When I was first in patent practice, the only way to pursue patent protection in Italy from a PCT application was to enter the European regional phase.  There simply was no national-only route to Italy from the PCT.  

And so things have remained for years and years, until July 1, 2020.  On July 1, 2020 Italy, the eighth-largest economy in the world when ranked by gross domestic product, opened a national-phase route from PCT.

You can read all about this in the Italian National Chapter Annex in the PCT Applicant’s Guide.

It is interesting to think about fact patterns that might prompt a filer to make use of this filing path.  Clearly one fact pattern that might call for this filing path is if the applicant particularly needs protection in Italy, more than in any other country that belongs to the EPO.  Instead of spending all of the money that has to be spent for entering the regional phase in EPO, the filer might only need to spend the money for a national-phase entry in Italy.

Another fact pattern conceivably calling for an Italian national-phase entry might be if an applicant is particularly interested in obtaining utility model protection in Italy.  Italy has utility model protection as one of its available protection mechanisms, while EPO does not.  

Here are some of the most important things to know about Italian national-phase entry from the PCT:

  • Italy is a 30-month Office for purposes of national-phase entry.
  • You need to provide a translation of the PCT application into Italian as part of the national-phase entry process.
  • For purposes of national-phase entry, DO/EO/IT recognizes Restoration of the Right of Priority, but only under the “due care” standard.

I have to imagine that this recent development must be very popular with patent firms in Italy, since it represents an opportunity to earn a professional fee carrying out a task which previously was not possible to carry out.  Indeed I clicked around on the Internet and found many a patent firm in Italy that has posted an article on its web site letting readers know that the firm stands ready to attend to such an Italian national-phase filing.

Have you carried out such an Italian national-phase entry from a PCT?  Do you plan to do so?  If so, what circumstance is prompting such a plan?  Please post a comment below.

The “Captain May I?” problem can arise in PCT cases too

In an earlier blog article I wrote about the “Captain May I?” problem.  This is the problem that arises if a Hague Agreement filer (the filer of an international design application) designates the US, and if the filer claims priority from a non-US design application, and if the filer relies upon DAS as the way to provide the certified copy of the priority application to the USPTO.  In that blog article I described that for two and a half years now, the USPTO has been aware of the fact that Hague filers often use Form DM/1 as a way to provide a priority claim and its DAS access code.  USPTO interprets its own 37 CFR § 1.55 in such a way that the electronic copy of the priority application that USPTO retrieves from DAS, using that DAS access code, does not count as a “certified” copy unless the Hague filer also files an Application Data Sheet presenting the priority claim all over again.  

It would have been helpful if USPTO had touched up 37 CFR § 1.55 a year ago, or two years ago, or two and a half years ago, to fix the perceived problem in the rule that leads to this otherwise completely unnecessary duplicate presentation of the priority claim.  USPTO’s foot-dragging on this has led to an accumulation of two and a half years’ worth of issued US design patents that have a cloud over them if they claim foreign priority and made use of DAS.

Upon a bit of reflection I realize that this “Captain May I?” problem with USPTO’s interpretation of its own 37 CFR § 1.55 can also put a cloud over a US utility patent if it comes from a PCT application.  Continue reading “The “Captain May I?” problem can arise in PCT cases too”

Yet more Patentcenter bugs – the e-signature block

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(Update:  the USPTO fixed this bug about a year after after the USPTO was told about it.)

37 CFR § 1.4(d)(2)(i) says exactly what a virgule signature (the USPTO calls it an “S-signature”) is supposed to look like.  The Rule says that what the signer must type between the two virgules (the two “slashes”) is at least one letter or Arabic numeral.  Notably the Rule does not say that what must appear between the two virgules is the signer’s name.  The signer is only required to provide his or her name “in printed or typed form preferably immediately below or adjacent the S-signature”.  Which means that the USPTO got it wrong in the web-based issue fee payment form in Patentcenter, quoted at right. Continue reading “Yet more Patentcenter bugs – the e-signature block”

Two more Offices join the WIPO DAS system

I am delighted to report that two more Offices have announced their participation in the DAS system.  These are the Italian Patent and Trademark Office and the Superintendence of Industry and Commerce of Colombia (the Colombian patent and trademark office).  Here are details of the Depositing-Office participations:

  Colombia is a Depositing Office? Italy is a Depositing Office?
National industrial design applications yes since August 28, 2020 yes since October 1, 2020
National patent applications yes since August 28, 2020 yes since October 1, 2020
National trademark applications   yes since October 1, 2020
National utility model applications yes since August 28, 2020 yes since October 1, 2020
PCT international applications filed
With the office as a PCT receiving office
yes since August 28, 2020 yes since October 1, 2020

 

One striking aspect of this is the participation of RO/CO and RO/IT as Depositing Offices.  This reminds us that among the IP5, the straggler Receiving Offices are RO/JP, RO/KR, and RO/US.  

Note, too, the ever-increasing participation of Offices in DAS with respect to trademarks.

This also offers a reminder that these two Offices offer utility model protection.

Here are details of Colombia’s Accessing-Office participation:

  Colombia is an Accessing Office?
Hague international applications yes since August 28, 2020
National industrial design applications yes since August 28, 2020
National patent applications yes since August 28, 2020
National trademark applications yes since August 28, 2020

 

Who is the most trendy, modern and up-to-date Colombian intellectual property firm?  Be the first to provide to me an application number, filing date, and DAS access code for a design application, a patent application, a utility model application, and an RO/CO application, and I will recognize your status as the most trendy, modern and up-to-date in Colombia.  (I will blur part of the application number in the Certificates of Availability that I obtain and post.)

Who is the most trendy, modern and up-to-date Italian intellectual property firm?  Be the first to provide to me an application number, filing date, and DAS access code for a design application, a patent application, a trademark application, a utility model application, and an RO/IT application, and I will recognize your status as the most trendy, modern and up-to-date in Italy.  (I will blur part of the application number in the Certificates of Availability that I obtain and post.)

USPTO being helpful about IDSs that did not get considered

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Beginning a couple of years ago, some very nice people in the Issue Branch at the USPTO have promoted patent quality, and have promoted science and the useful arts, and have saved us as patent practitioners from a lot of stress and malpractice risk, by looking out for IDSs that have not been considered.  In the past, we as patent practitioners had to pester the Examiners to consider such IDSs.  Those very nice people in the Issue Branch at the USPTO do the pestering for us nowadays.  I am guessing I will never get to learn the names of those very nice people, and will never have the opportunity to thank them directly.  All that I can do, I guess, is thank them in this blog.  Maybe someone at the USPTO who knows who those nice people are can print out this blog article and show it to them.  Continue reading “USPTO being helpful about IDSs that did not get considered”