Category: Patents

If you are a US patent practitioner, of course you should be subscribed to the EFS-Web listserv.  Here is a recent post to that listserv that prompted today’s blog article:

I swear I read something about a new PTO program for automatically listing all submitted and cited prior art on continuations and divisionals–to stop people from re-filing everything again. But, I cannot find anything today.

Was I dreaming? If not, is this working?

And yes there is a new PTO program for this, as I will explain. Continue reading “The Patent Office absolutely trying to Do the Right Thing – IDSs in child cases”

(Update on March 1, 2020:  A month has passed and I have still heard nothing back from Mr. Holcombe’s office in response to my telephone and email inquiries.)

Today I learned that yesterday the USPTO’s Chief Information Office, Mr. Henry Holcombe, hosted a forum on the topic of Private PAIR.  I don’t know how Mr. Holcombe chose his guest list.  But what astonishes me is that no invitation was extended to the PAIR listserv.

The PAIR listserv is a community of over four hundred patent practitioners who make daily use of the PAIR system. My guess is that many or most of the “coalition members” who got invited to this forum are companies that make money by scraping data from USPTO systems, not by paying money to the USPTO.  In contrast, the members of the PAIR listserv are paying customers of the USPTO, who collectively pay tens of millions of dollars to the USPTO annually.

Mr. Holcombe’s stated goal of addressing recent concerns, gathering input, and sharing some details about his path forward would have been well served by reaching out to the PAIR listserv.

I contacted Mr. Holcombe’s office about this but have not gotten any response.

(Update:  A letter got sent on February 22, 2020 to the Commissioner for Patents at the USPTO, asking the USPTO to pull the plug on DAS.  See blog post.)

Yesterday in one of our cases, the USPTO retrieved an electronic certified copy of an EP priority application.  In and of itself, this was routine news, except that we had to learn about this happy event by accident.  Just accidentally I had this case open in Private PAIR and happened to click in IFW to see that the electronic certified copy had arrived. 

The key thing here is that if our US case had claimed priority from almost any other Office than EPO, we would have been told in an automatic way, by email, that the successful retrieval had taken place.  But no such automatic email arrived for this EP priority application.   Why is this bad situation the way it is?  Continue reading “USPTO dragging its feet on unplugging PDX”

(Thanks to the many commenters who gently pointed out that we are now in the year 2020!  It is not a fake date at all.)

This blog post reminds us of the extreme importance of SAOSIT.  CRISPR is an extremely important technology and several organizations are competing to see who will make money from CRISPR.  A chief part of that competition is a fight to see who will control the most patents relating to CRISPR.  Article 4 of the Paris Convention for the Protection of Industrial Property says that for a patent priority claim to be valid, the second patent application needs to have been filed by the same applicant as the applicant in the first patent application, or by the successor in title.  We call this SAOSIT (same applicant or successor in title).  On January 16, 2020 the Board of Appeal at the European Patent Office made an important decision that relates to CRISPR and SAOSIT.  The decision offers a reminder of ways that a patent applicant needs to be very careful when carrying out the filing of a PCT application or regional patent application or national patent application that makes a priority claim under Article 4 of the Paris Convention.  The decision also offers a reminder of the ways that a patent applicant needs to be very careful when filing a US provisional patent application.

Continue reading “SAOSIT and CRISPR in the News”