It’s that time of year again. People in the US who sometimes e-file stuff at the International Bureau at WIPO will have memorized exactly what the local time is that works out to being midnight in Switzerland … and for the next three weeks, the answer to this question will be different from the usual answer. Continue reading “e-filing at WIPO – you get an extra hour”
US patent prosecution boot camp – Philadelphia in May
There are only a few good ways for a new US patent practitioner to get training. One of these ways is the AIPLA Patent Prosecution Boot Camp, which will take place May 13-15, 2019 in Philadelphia.
Your truly will once again have the honor of serving with the other faculty members of this boot camp. I know, having served on the faculty of this boot camp for many years now, that the other practitioners who give their time and energy to this program are among the most skilled, experienced, and generous as any in the patent profession.
To find out more, or to register, click here.
Surface Phenomena
I’m going to reveal a practice tip that I had been keeping to myself for the past thirty years of patent practice. The practice tip is to be alert to the possibility that some important thing about a client’s invention may turn on “surface phenomena”. My main point being that as far as I can tell, nobody actually knows how most surface phenomena work, and so you can use the phrase in some client/inventor discussions, and the client/inventor will think you are very smart regardless of whether you are actually very smart. Continue reading “Surface Phenomena”
PAIR still vulnerable to the Java licensing problem
It is recalled that to log in at PAIR or EFS-Web using an EPF file (what USPTO calls PKI), you are required to have Java installed in your web browser.
For many years USPTO customers had been telling USPTO that it needed to scrap the dreaded “java applet” method of logging in which is the method that uses the EPF file. USPTO failed to act upon these suggestions and complaints from customers.
What finally pushed USPTO to devise a new way for logging in (the “MyUSPTO” approach) was not customer complaints but something else, namely that Oracle, the provider of Java, finally got around to announcing that it would start charging money for Java.
And indeed until a few weeks ago, it was all set that by February 15, 2019, USPTO would pull the plug on the EPF way of logging in.
It might be thought that this was the end of java applets for USPTO tasks. But no. Java is needed not only for the logging-in task, but also for the downloading of cited US patents and US patent publications from PAIR. What we are talking about is the ePatent reference program, which USPTO launched in 2004. USPTO launched ePatent reference at the time that USPTO ceased providing paper copies of cited US patents and cited US patent publications with paper-mailed Office Actions.
So if you are going to download cited US patents and cited US patent pubs from PAIR, you still need Java. And as of a month ago, you will need to pay a licensing fee to Oracle to be able to use Java.
I suspect that nobody at USPTO gave a moment’s thought to the fact that Java is needed for more than one task in PAIR. Not only for EPF logins, but also for downloading cited US patents and pubs.
Revised on March 18, 2019 to note that there is an advisory in PAIR that says:
Advisory (13FEB2019): Due to technical difficulties, users may not be able to complete downloads using ePatent Reference. USPTO technical teams are working to correct the issue.
The PAIR Announcements page does not provide any further explanation of this advisory. I cannot tell from what USPTO posted whether this February 13 Advisory is linked to the cutoff of the Java-based EPF login procedure that was previously scheduled to happen on February 15.
Today is a snow day at the USPTO
Today, Wednesday, February 20, 2019 is a snow day. This means that any document that you needed to file today at the USPTO will be timely if you file it by tomorrow, Thursday, February 21.
(This might be as good a time as any to subscribe to this blog.)
Filing a Demand if no ISR has been established?
I recently blogged about an imminent PCT rules change. The rules change, which will take effect July 1, 2019, changes the timing of when an International Preliminary Examining Authority (“IPEA”) will commence its preliminary examination activity after receiving a Demand from an applicant.
- The present situation is that the IPEA will put the activity “on ice” until the last possible date (P+22 or ISR+3, whichever is later) unless the applicant makes an express request for the activity to be commenced sooner.
- The situation on and after July 1, 2019 will be that the IPEA will commence the preliminary examination right away unless the applicant makes an express request that the activity be postponed.
Which naturally enough raises the question of what exactly counts as “right away”? And as I explained in the blog post, “right away” is defined as the date upon which the IPEA is for the first time in possession of all of the following:
- the Demand;
- the Preliminary Examination fee and the handling fee (and late fee if applicable); and
- the ISR/WO (or declaration of non-establishment).
Every now and then someone will suggest that the PCT has the potential to be a bit dry. And whenever that happens, others will point out particularly fascinating aspects of the PCT that show how wrong that suggestion could be. And so it is today, as one alert reader on the PCT listserv (which of course you should join if you have not already done so) reminded listserv members a few minutes ago. She wondered why one would ever file a Demand if one had received a Declaration of non-establishment of an international search report. Her comment was informed by the fact that as a general rule, IPEAs usually will not carry out preliminary examination for any subject matter for which an international search has not been carried out.
Indeed why, despite having received a declaration of non-establishment, might one nonetheless feel the need to file a Demand? Continue reading “Filing a Demand if no ISR has been established?”
Important PCT rule change effective July 1, 2019
Each year, July 1 is very often the date upon which PCT rules changes will take effect, and 2019 is no exception. There is a rule change regarding PCT Demands that will come into force on July 1, 2019.
The single most important thing to keep in mind about this rule change will be the importance of making sure to get one’s Article 34 Amendment (or instructions to take into account one’s Article 19 Amendment) filed with the IPEA no later than the date upon which one hands in the Demand itself and the associated fees. Continue reading “Important PCT rule change effective July 1, 2019”
Receiving Offices that need to join DAS
(Update: A letter got sent on February 22, 2020 to the Commissioner for Patents at the USPTO, asking the RO/US to become a Depositing Office in the DAS system. See blog post. The Commissioner for Patents answered. See blog post.)
(Updated to reflect that RO/EP, RO/GE, RO/IL and RO/NO joined the trendy, modern and up-to-date club.)
One of the important ways that a patent office can participate in the DAS program is as a Depositing Office. This means that the Office makes applications which have been filed at that Office available to the DAS system so that other Offices can retrieve the applications.
A particular way that a patent office can participate in DAS is in its role as a Receiving Office. The idea is that an applicant may have filed a PCT application in that Receiving Office, and may later find the need to claim priority from that PCT application with respect to some later-filed patent application. When such a situation arises, the normal expectation of the applicant would be that of course the Receiving Office will be a Depositing Office in the DAS system.
Such a Receiving Office would, of course, deserve the accolade of being termed “trendy, modern, and up-to-date.”
Which then raises the natural question “which Receiving Offices are trendy, modern, and up-to-date?” Here is the list of patent offices whose Receiving Offices are trendy, modern, and up-to-date:
- Australia
- Brazil
- Chile
- China
- Denmark
- Eurasian Patent Organization
- European Patent Office
- Finland
- Georgia
- India
- Israel
- Morocco
- Netherlands
- Norway
- Spain
- Sweden
- WIPO
One might then wonder, which Receiving Offices are not trendy, modern, and up-to-date? And in particular, one might wonder, if we rank the Receiving Offices in order by the number of filings at those Offices, which of the top-ranked Receiving Offices are not yet trendy, modern, and up-to-date? Well, one need wonder no longer. Here I provide the answer.
Here are the top-ranked Receiving Offices by number of PCT filings. These five Receiving Offices, taken together, account for something like 85% of all PCT applications filed in the world. Next to each of these five Receiving Offices I have indicated whether (as of April 2020) it has or has not become a Depositing Office in the DAS system:
- RO/US (USPTO) – not trendy, modern, and up-to-date
- RO/CN (China) – yes trendy, modern, and up-to-date
- RO/JP (Japan) – not trendy, modern, and up-to-date
- RO/EP (European Patent Office) – yes trendy, modern, and up-to-date
- RO/KR (Korean Intellectual Property Office) – not trendy, modern, and up-to-date
Participation as a Depositing Office is clearly an action item for RO/US, RO/JP, and RO/KR.
Let’s hope that the USPTO, the JPO, and the KIPO will soon join the DAS system as Receiving Offices.
Please USPTO no more foot-dragging on retrieving certified copies from DAS
(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. See blog post.)
The other day I taught another webinar about PDX and DAS. And the usual gripe about the USPTO came up — why does USPTO actively age the DAS retrieval attempts? Why doesn’t USPTO simply suck it up and carry out the retrieval of an electronic certified copy when asked to do so?
I blogged about this in 2014, urging the USPTO stop the aging of such requests. Now in 2019 the USPTO continues its policy of aging the retrieval attempts. So now, dear reader, you are treated to another rant. Continue reading “Please USPTO no more foot-dragging on retrieving certified copies from DAS”
Register now for PCT Seminar in San Jose April 4
It is by now a well-known annual event for which I told you to save the date. The patent firm Schwegman Lundberg Woessner hosts an all-day seminar on the Patent Cooperation Treaty. This year it will be in San Jose. Last year it was in Minneapolis. The year before it was in San Jose. This one-day PCT seminar is presented by yours truly.
But what I point out to the reader is the really remarkable thing, namely that the Schwegman firm, working together with the World Intellectual Property Organization as a co-sponsor, provides this event free of charge to the patent community. Continue reading “Register now for PCT Seminar in San Jose April 4”