Category: Patents

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Figuring out whether to file an Interim Copy of a priority application

(Update:  A letter got sent on February 22, 2020 to the Commissioner for Patents at the USPTO, asking the USPTO to stop its foot-dragging on retrieval of electronic certified copies from DAS and PDX.  See blog post.)

Here is the setup for today’s hypothetical question.  Your docket desk has contacted you to let you know that:

  • the crucial 4-and-16 date is imminent for one of your recently filed US utility patent applications in which you have made a Paris Convention priority claim, and
  • the PDX/DAS people at the USPTO have not yet retrieved an electronic certified copy of your priority application from the foreign patent office.  

You must now figure out whether to file an Interim Copy of the priority application at the USPTO.

This blog article offers a summary of Best Practices comments about this from some very experienced patent practitioners. Continue reading “Figuring out whether to file an Interim Copy of a priority application”

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How some people get prompt Filing Receipts from DO/EO/US

If you are going to try to get a US patent from a PCT application, there are two possible paths — US national phase entry (also called “a 371 case”), and the filing of a bypass continuation.  How does this choice affect how long you have to wait to get a Filing Receipt?  If you pick the bypass route, the work gets done by the same folks who handle other ordinary patent applications.  It is OPAP (Office of Patent Application Processing).  These days OPAP often mails a Filing Receipt very promptly.  On the other hand, if you pick the national-phase-entry route, the work gets done by DO/EO/US.  And this office often takes a very long time to mail a Filing Receipt.  But some people have figured out how to get a very prompt Filing Receipt from DO/EO/US.  It is with some reluctance that I will now reveal how they do it. Continue reading “How some people get prompt Filing Receipts from DO/EO/US”

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The 2019 Toteboards are published

It is my honor to post the 2019 Toteboards.  These are:

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

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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