Category: Patents

(Updated June 25 to correct the list of presenters.)

The twenty-third annual AIPLA PCT Seminar will take place just a month from now, on Monday and Tuesday, July 22 and 23, 2019.  Yours truly will be among the presenters. Continue reading “AIPLA PCT Seminar – July 22-23”

One question that comes up often when I am teaching a PCT class is “how do I send money to ISA/KR?”  The usual way that this question comes up is that you might select ISA/KR and then receive an Invitation to pay additional fees (“ITPAF”).  This blog article describes a quite easy and inexpensive way to send money to ISA/KR. Continue reading “How to send money to ISA/KR or IPEA/KR”

If you have not already done so, you should of course subscribe to the PCT Newsletter published by WIPO.  (To sign up, click here.)  The PCT Newsletter comes out monthly and it is very for anyone who uses the PCT.   The newsletters have several kinds of very helpful information.  For example …

Upcoming PCT Seminars.  Each issue has a calendar of upcoming PCT Seminars, and this lets you plan ahead for your PCT training opportunities.  As you can see in the current issue, I will be teaching about PCT several times in the next few months, including:

• Glendale, California on June 6
• Atlanta, Georgia on September 19
• Des Moines, Iowa on October 3-4
• Philadelphia, Pennsylvania on November 7
• Cary, North Carolina on November 21-22

Practical Advice.  A particularly helpful section of each PCT Newsletter is the Practical Advice column.  This column will pick some topic in PCT practice and will discuss it in depth, often pointing out a way to be really smart about some step in the PCT process, or a trap for the unwary.

The current issue has a Practical Advice column entitled Possible implications of submitting informal drawings when filing the international application which was prompted by my blog article Filing informal drawings in a PCT application.  The Practical Advice column is written better than what I wrote!  The overall tone of the column is nicer and more friendly to the reader than what I wrote, and the column mentions the ePCT preview function which I did not think to mention.

WIPO also provides a very helpful search function to look up past Practical Advice articles.

The main point here is that if you have not already done so you should subscribe to WIPO’s PCT Newsletter.

The Twentieth Annual Patent Prosecution Boot Camp is underway just now in Philadelphia.  I have the honor to serve on a faculty with thirty-six other extremely experienced practitioners who spend their own money for air travel and hotels, and of course they take a hit on their professional billings for a couple of travel days as well as the teaching day.  Decades ago, when I had the good fortune that my employer paid for it, I attended a similar seminar organized by the Practicing Law Institute.  And as I sat there in the Roosevelt Hotel in Manhattan those decades ago I lacked even a bit of a clue as to the economic hit being taken by astonishing generosity of the faculty members.  I learned so much, and even now from time to time I make use of this or that nugget of practitioner wisdom that someone passed along during that seminar, so many years ago.  As just one example if I manage now to draft a decent patent claim, the earliest credit goes to Evelyn Sommer (1925-2016), who taught one of the small-group claim-drafting classes at that seminar.

The only thing one can do is to try, of course, to pay it forward as best we can, and I expect that is exactly why the thirty-six other faculty members are there just like me.

The Boot Camp started yesterday morning and will finish tomorrow.  I am headed to Philadelphia now, and my segment (yeah, take a guess, it is about the Patent Cooperation Treaty!) will be tomorrow.

Who taught you how to draft a patent claim?  Will you give that person some credit in a comment below?

In ordinary domestic US utility patent practice, every practitioner is accustomed to the fact that you can get away with filing your patent application with informal drawings.  And later when you get around to it, you can prepare formal drawings and file them in your application and it will almost never be a problem.

As I discuss at some length in this blog post, it is the exact opposite situation with PCT applications.  The general rule is that if you try to hand in formal drawings after filing day in a PCT application, you will not succeed.

What should practitioners keep in mind about formal and informal drawings so far as PCT applications are concerned? Continue reading “Filing informal drawings in a PCT application”

W.C. Fields famously joked about a sweepstakes in which first prize was a week in Philadelphia … and second prize was two weeks in Philadelphia.  Well, here the second prize is listening to me drone on via Youtube for 5¾ hours about the Patent Cooperation Treaty.  Free of charge, other than the risk of nodding off. Continue reading “5¾ hours of Patent Cooperation Treaty!”

For many years the Best Practice for filing in RO/US has been to use a ZIP file as the way to provide the PCT Request to EFS-Web.  Originally the only way create the ZIP file was PCT-SAFE.  Three years ago WIPO announced that ePCT would be available starting on June 1, 2016 as a second way to create the ZIP file.  Shortly after this announcement, USPTO published a Federal Register notice that put a cloud over the use of ePCT in this way.  WIPO has made a change to ePCT that obviates concerns raised in that notice.  Hopefully now the USPTO will publish a “cloud removal” Federal Register notice that expressly cites the previous notice and that expressly removes the cloud.

In this blog article I explain that at this point ePCT is now without question the Best Practice for creating the ZIP file.  And I offer proposed language for a “cloud removal” Federal Register notice. Continue reading “USPTO can now publish a new Federal Register notice about ePCT”