Category: Patents

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The Patent Office absolutely trying to Do the Right Thing – IDSs in child cases

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”

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Today is the last day to get your numbers in for the Tote Boards

On January 1, 2020 I invited everyone (blog post) to get your numbers in for the 2019 Tote Boards.  This includes:

  • the Eighth Annual US Design Patent Top Filers Tote Board
  • the Fifth Annual US Trademark Registration Top Filers Tote Board
  • the Fifth Annual US Utility Patent Top Filers Tote Board
  • the Third Annual US Plant Patent Top Filers Tote Board

These Tote Boards will rank the top patent and trademark firms for carrying out filings in 2019 in these categories.  The 2019 Tote Boards will join the previous fifteen Tote Boards which go back as far as 2012.

Today, January 31, is the last day to get your numbers in.

How many responses do we have so far?

  • As for the 2019 Trademark Tote Board, we have more than seventy firms responding, that have between them obtained more than eight thousand trademark registrations in 2019
  • As for the 2019 Utility Patent Tote Board, we have more than sixty firms responding, that have between them obtained more than forty thousand utility patents in 2019
  • As for the 2019 Design Patent Tote Board, we have more than sixty firms responding, that have between them obtained more than seven thousand design patents in 2019

Every year, some firm misses out by failing to get its numbers in by the closing date.  Don’t be that firm!  Get your numbers in before closing day which is today, January 31.  Click here for the:

  • response form for the 2019 (eighth annual) US design patent top filers tote board
  • response form for the 2019 (fifth annual) US trademark registration top filers tote board
  • response form for the 2019 (fifth annual) US utility patent top filers tote board
  • response form for the 2019 (third annual) US plant patent top filers tote board

 

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USPTO hosts PAIR forum, doesn’t invite PAIR users

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(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.

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USPTO proposes to fix its Foreign Filing License rules

For more than three years now, there has been an urgent need for USPTO to fix a problem with its FFL rules, 37 CFR § 5.11 et seq.  See my blog article USPTO needs to update its Foreign Filing License rule (October 29, 2016).  After three years of being repeatedly reminded of this, USPTO has done the right thing and has published a proposed revision to its FFL rules.  You can read about it here:

Facilitating the Use of WIPO’s ePCT System To Prepare International Applications for Filing With the United States Receiving Office, 85 FR 5362, January 30, 2020.

Comments are due by March 30.  Twenty-one patent practitioners filed this comment. 

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USPTO dragging its feet on unplugging PDX

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(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”

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Getting your numbers in for the Tote Boards

On January 1, 2020 I invited everyone (blog post) to get your numbers in for the 2019 Tote Boards.  This includes:

  • the Eighth Annual US Design Patent Top Filers Tote Board
  • the Fifth Annual US Trademark Registration Top Filers Tote Board
  • the Fifth Annual US Utility Patent Top Filers Tote Board
  • the Third Annual US Plant Patent Top Filers Tote Board

These Tote Boards will rank the top patent and trademark firms for carrying out filings in 2019 in these categories.  The 2019 Tote Boards will join the previous fifteen Tote Boards which go back as far as 2012.

The closing date for getting in your numbers will be Friday, January 31, 2020.

How many responses do we have so far?

  • As for the 2019 Trademark Tote Board, we have more than forty-six firms responding, that have between them obtained more than eight thousand trademark registrations in 2019
  • As for the 2019 Utility Patent Tote Board, we have more than forty firms responding, that have between them obtained more than eleven thousand utility patents in 2019
  • As for the 2019 Design Patent Tote Board, we have more than forty-three firms responding, that have between them obtained more than three thousand design patents in 2019

Every year, some firm misses out by failing to get its numbers in by the closing date.  Don’t be that firm!  Get your numbers in before closing day which is January 31.  Click here for the:

  • response form for the 2019 (eighth annual) US design patent top filers tote board
  • response form for the 2019 (fifth annual) US trademark registration top filers tote board
  • response form for the 2019 (fifth annual) US utility patent top filers tote board
  • response form for the 2019 (third annual) US plant patent top filers tote board
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SAOSIT and CRISPR in the News

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”

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Norway is now as trendy, modern and up-to-date as Australia

I had previously identified IP Australia as the Office that was the most trendy, modern and up-to-date so far as DAS participation is concerned.  Of the 25 Offices participating in DAS, IP Australia stood alone as the only Office participating in every way that it is possible to participate.

But now a second Office has joined this high status.  The Norwegian Industrial Property Office now stands as a second Office that participates in DAS in every way that it is possible to participate. Continue reading “Norway is now as trendy, modern and up-to-date as Australia”

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Eventually every patent and trademark firm will have a TransferWise account

click to go to TransferWise web site

(Update:  TransferWise has changed its name to Wise Business.)

I have a prediction to make.  My prediction is that within a year or two, every patent and trademark firm around the world that has a substantial international practice will have a TransferWise account.  What prompts me to predict this? Continue reading “Eventually every patent and trademark firm will have a TransferWise account”