Bluesky: @oppedahl.com
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:
Comments are due by March 30. Twenty-one patent practitioners filed this comment.
(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”
On January 1, 2020 I invited everyone (blog post) to get your numbers in for the 2019 Tote Boards. This includes:
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?
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:
(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.
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”
(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”
When the time comes to pay an Issue Fee, one item on your checklist is to look in the Display References tab in PAIR to see if there are any not-yet-considered IDSs, right?
The USPTO itself has a similar workflow task when an Issue Fee gets paid — some clerk at the USPTO looks to see if there are any not-yet-considered IDSs and bounces the case back to the Examiner if there are any found in this workflow. Does that clerk rely upon the Display References tab in PAIR to look for not-yet-considered IDSs? Maybe the answer is “yes”.
When a patent Examiner at the USPTO picks up a case to examine it, the Examiner is supposed to consider the IDSs that have been filed. Does the Examiner rely upon the Display References tab in PAIR to look for not-yet-considered IDSs? Maybe the answer is “yes”.
I was astonished recently to learn that there is a category of IDS that the USPTO fails to include in the Display References tab. This defect in PAIR (and there is a corresponding defect in the Display References tab in Patentcenter) requires urgent repair by the USPTO. Between now and whenever (or if) the USPTO gets around to repairing this defect, the situation represents a trap for the unwary practitioner.
Do you, loyal reader, already know what category of IDS I am talking about here?
Continue reading “A defect in USPTO’s “Display References” tab”
Back on about November 17 we migrated our listserv server from a shared-hosting server to a dedicated server. This means that our listserv postings are coming from a different IP address now than they used to.
It seems that some email service providers have hair-trigger spam fighting systems that react in a very strong way to email traffic emanating from a new IP address. Some of the members of our listservs have have found that some or even all of our listserv messages are failing to reach them.
if this has happened to you, there are several things that you can do to help. Continue reading “What to do if your email service provider is blocking our listserv postings”
Readers will recall my blog article about “Super Patents” and how to get them. The idea is to file a PCT application and be fortunate enough that it gets accepted into the Collaborative Search and Examination (“CS&E”) pilot program.
This is a pilot program created by the five biggest patent offices (China, Europe, Japan, Korea, US) in which an applicant gets to have its claims searched and examined by all five patent offices. The pilot program began about a year and a half ago and will wrap up in 2020.
The way that the pilot program was set up, each of the five Offices was willing to take on the role of ISA for purposes of CS&E in one hundred PCT applications. Doing the math, this means that all told, five hundred PCT applicants would be so lucky as to get their applications into this program.
Each Office, in its role as ISA, was thus necessarily keeping track of the number of PCT applications that it had accepted into the CS&E program. Each Office would stop accepting new cases once it hit the limit of one hundred.
One of the offices hit its limit of one hundred a couple of weeks ago, and another office hit its limit just yesterday. Which raises the natural question, right now in January of 2020, how many slots are still open? I’ll tell you. Continue reading “Only 103 “Super Patent” slots remaining out of 500″