Category: Patents

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Samoa Joins the Patent Cooperation Treaty

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On October 2, 2019, Samoa deposited the Instrument of Accession to the Patent Cooperation Treaty with the International Bureau of WIPO. This means that the PCT will come into force for Samoa on January 2, 2020.

This brings to 153 the number of member States for the PCT.

Samoa already belongs to Madrid Protocol.  Samoa has joined the Hague Agreement at the same time as the PCT.  So on January 2, 2020 Samoa will achieve the trifecta for international filing mechanisms.

The two-letter code for Samoa is “WS”.

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Does this check box ever actually work?

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USPTO says that if you check this box, the second authentication factor will not be not needed during signin for the next 24 hours.

This is, of course, false.  Or more accurately, it is almost always false.  The check box does occasionally save the USPTO customer from having to carry out two-factor authentication when logging in to a USPTO system.  But usually it does not work. Continue reading “Does this check box ever actually work?”

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How broadly can you amend claims in a PPH case?

There is a very helpful listserv (email discussion group) for US patent practitioners.  it is called the EFS-Web listserv, originally created to help US practitioners survive the problems in the initial launch by the USPTO of the EFS-Web system.  The charter of the listserv has now broadened to encompass US patent prosecution practice generally.  Here’s a question that one loyal listserv member posted today:

I just had a case transferred in that was filed with a PPH request in the US, based on a PCT written opinion. I haven’t used PPH before, so don’t have much experience.

There is a pending office action, in which the Examiner found some art in the US that wasn’t in the original search report, and I think our best way forward is to amend the claims.

PPH requests appear to require that all claim amendments be within the scope of the claims held allowable in the PCT application.

What’s the procedure if I am going to add a claim limitation that’s not in the original claim set?

Here’s what I answered. Continue reading “How broadly can you amend claims in a PPH case?”

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Argentina indeed has joined DAS

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Right on schedule, the National Institute of Industrial Property of Argentina (“INPI-AR”) has indeed today joined the DAS system.  INPI-AR is now operating as an Accessing Office in DAS with respect to patents and utility models and industrial designs.  Here is an excerpt from an exemplary Certificate of Availability from DAS showing availability of a design application:

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Readers will recall that I blogged about this on August 19, 2019.

This welcome development brings the number of participating DAS Offices as of October 1, 2019 to twenty-four.

 

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Seventy-Three Patent Practitioners

About forty-six comments have been filed in response to USPTO’s recent notice of proposed rulemaking regarding patent fees.  One of the comments is filed by “Seventy-three patent practitioners”.  Here is the opening paragraph of their letter:

We write as patent practitioners to comment on a Notice of Proposed Rulemaking (NPRM), Setting and Adjusting Patent Fees During Fiscal Year 2020.  The signatories are members of several email listserv groups, a community of patent practitioners. The signatories taken together filed about 20,000 patent applications at the PTO during the past ten years, and paid about $50 million in fees to the PTO in the past ten years.

I am honored to be among the signers of that letter.

On a quick skim, it appears that every comment to this NPRM (including the comment cited above) that touches in any way on the non-DOCX surcharge is critical of USPTO’s effort to try to force applicants to file patent applications in DOCX format through imposition of a $400 penalty for failure to do so.  

In future blog articles I will try to excerpt and summarize some of the views expressed in the comments.

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Argentina is getting ready for a PCT Receiving Office?

(Update on March 1, 2020:  since the date of this blog article, WIPO has updated its Participating Offices web page to say that INPI’s participation that will commence on March 2, 2020 is only as to national patent applications, not also as to PCT applications.)

I am fascinated to see the following information on the DAS page of the WIPO web site:

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What this says is that starting on March 2, 2020 (a mere five months from now), the RO/AR will be a Depositing Office for the WIPO DAS system.  What is interesting about this is that for RO/AR to be a Depositing Office, the RO/AR would have to exist by March 2, 2020.  And for RO/AR to exist, Argentina would have to join the PCT by March 2, 2020.  So I guess the DAS people at WIPO know something that I don’t about Argentina’s plans to join the PCT.