Category: Patents

Posted on

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”

Posted on

Yet more Patentcenter bugs – the e-signature block

click to enlarge

(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”

Posted on

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.)

Posted on

USPTO being helpful about IDSs that did not get considered

click to enlarge

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”

Posted on

What if you were not happy with service from the Application Assistance Unit?

click to enlarge

From time to time I will encounter a patent practitioner who feels let down by the USPTO’s Application Assistance Unit.  Indeed every now and then I will run into a practitioner who will say, surely in jest, that they feel the phrase “Application Assistance Unit” is an oxymoron.  In my own experience, it is quite rare that the AAU fulfills its promise. A chief use case for the AAU is the filer who received a Notice indicating that there was some real or imagined flaw in an inventor’s declaration, or in an application data sheet, or in a power of attorney, and that the document involved is being bounced due to its real or imagined flaw.  The Notice is invariably profoundly unhelpful and never actually comes out and says what exactly was supposedly wrong with the bounced document.  The Notice always says that if you want to know what exactly was supposedly wrong with the bounced document, you can get the answer by placing a telephone call to the AAU.  And in my experience, what never happens is the AAU actually answering the question.

So what can you do if you are not happy with how it went in your telephone call to the AAU? Continue reading “What if you were not happy with service from the Application Assistance Unit?”

Posted on

Using DOCX leads to delay in visibility in IFW

USPTO has made it plain that it really wants filers to file their US patent applications in Microsoft Word format, not as PDFs.  (USPTO expresses this wish by saying it wants patent applications to be filed in “DOCX” format, but of course there is no single “DOCX” format, there are many variants of DOCX and the only variant that USPTO handles correctly is the variant that Microsoft Word generates.)  There are many drawbacks to the way that the USPTO has implemented its handling of patent applications filed in a DOCX format, and one of them is that this can result in a long delay in the visibility of the newly filed patent application in IFW.  It is yet another reason to simply file in PDF format.  Continue reading “Using DOCX leads to delay in visibility in IFW”

Posted on

“Signed in” status in Patentcenter is inconsistent between browser windows

It is commonplace that if one has Patentcenter open in two or more browser windows in the same browser, the “signed in” status will be inconsistent between the various browser windows.

Because the problem is intermittent, one assumes that this is not merely some coding error that can be fixed consistently by means of a simple correction of one line of code.  Instead there are probably weird “race conditions” between internal processes within various USPTO systems, or synchronization failures between various USPTO systems.  The problem is probably a very deep and difficult-to-fix problem rather than a simple fix-a-line-of-code problem.

I expect this is a “failure to scale” problem.  As more users log ino and use Patentcenter, the various systems that are supposed to work together to provide a seamless user experience end up failing to keep properly in touch with each other.

This is trouble ticket number CP36.

Posted on

“Signed-in” status in Patentcenter disappears frequently and without notice

PAIR has two modes — “Public PAIR” and “Private PAIR”.  EFS-Web has two modes as well, a signed-in mode and a not-signed-in mode.  So it is more or less to be expected that the USPTO developers of Patentcenter set it up so that there is a signed-in mode and a not-signed-in mode.  The user interface of Patentcenter does an extremely poor job of letting you know if you have shifted from signed-in mode to not-signed-in mode and vice versa.  But after one has used Patentcenter for some time one eventually picks up that one can figure it out by closely watching the blue menu bar at the top of the page.  If you see five choices in that blue bar, it means one thing:

click to enlarge

If you see eight choices in that blue bar, it means something else:

click to enlarge

Can you guess which blue bar means which?  Yes, you would probably guess that whichever menu bar has more choices, probably that is the menu bar that means your status is “signed-in”.  And that is indeed the situation.

The main point of this blog article is that there is something defective in Patentcenter, probably at some very deep level, in the way that Patentcenter keeps track of whether you are signed in or you are not.

If you are signed in, this status is supposed to last a minimum of some period of time.  If I recall correctly, that period of time is thirty minutes.  So for example if you just e-filed something in Patentcenter, and less than thirty minutes have passed, you should be able to click around in the workbench in Patentcenter and you should be able to see the applications in your workbench.

But what many in the Patentcenter listserv have noticed is that the signed-in status in Patentcenter often disappears long before the end of the 30-minute timeout period.  When it does so, this happens without notice.  No pop-up asking you if you wish to continue being logged in.  

I imagine this defect in Patentcenter is at some very deep level in the system, given how important it is for Patentcenter to keep track of which files each logged-in user is permitted to see.

This is a big problem in Patentcenter.  It has trouble ticket number CP35.