Bluesky: @oppedahl.com
USPTO says that if you check this box, the second authentication factor will not be not needed during signin for the next 24 hours.
This is, of course, false. Or more accurately, it is almost always false. The check box does occasionally save the USPTO customer from having to carry out two-factor authentication when logging in to a USPTO system. But usually it does not work. Continue reading “Does this check box ever actually work?”
There is a very helpful listserv (email discussion group) for US patent practitioners. it is called the EFS-Web listserv, originally created to help US practitioners survive the problems in the initial launch by the USPTO of the EFS-Web system. The charter of the listserv has now broadened to encompass US patent prosecution practice generally. Here’s a question that one loyal listserv member posted today:
I just had a case transferred in that was filed with a PPH request in the US, based on a PCT written opinion. I haven’t used PPH before, so don’t have much experience.
There is a pending office action, in which the Examiner found some art in the US that wasn’t in the original search report, and I think our best way forward is to amend the claims.
PPH requests appear to require that all claim amendments be within the scope of the claims held allowable in the PCT application.
What’s the procedure if I am going to add a claim limitation that’s not in the original claim set?
Here’s what I answered. Continue reading “How broadly can you amend claims in a PPH case?”
Right on schedule, the National Institute of Industrial Property of Argentina (“INPI-AR”) has indeed today joined the DAS system. INPI-AR is now operating as an Accessing Office in DAS with respect to patents and utility models and industrial designs. Here is an excerpt from an exemplary Certificate of Availability from DAS showing availability of a design application:
Readers will recall that I blogged about this on August 19, 2019.
This welcome development brings the number of participating DAS Offices as of October 1, 2019 to twenty-four.
About forty-six comments have been filed in response to USPTO’s recent notice of proposed rulemaking regarding patent fees. One of the comments is filed by “Seventy-three patent practitioners”. Here is the opening paragraph of their letter:
We write as patent practitioners to comment on a Notice of Proposed Rulemaking (NPRM), Setting and Adjusting Patent Fees During Fiscal Year 2020. The signatories are members of several email listserv groups, a community of patent practitioners. The signatories taken together filed about 20,000 patent applications at the PTO during the past ten years, and paid about $50 million in fees to the PTO in the past ten years.
I am honored to be among the signers of that letter.
On a quick skim, it appears that every comment to this NPRM (including the comment cited above) that touches in any way on the non-DOCX surcharge is critical of USPTO’s effort to try to force applicants to file patent applications in DOCX format through imposition of a $400 penalty for failure to do so.
In future blog articles I will try to excerpt and summarize some of the views expressed in the comments.
(Update on March 1, 2020: since the date of this blog article, WIPO has updated its Participating Offices web page to say that INPI’s participation that will commence on March 2, 2020 is only as to national patent applications, not also as to PCT applications.)
I am fascinated to see the following information on the DAS page of the WIPO web site:
What this says is that starting on March 2, 2020 (a mere five months from now), the RO/AR will be a Depositing Office for the WIPO DAS system. What is interesting about this is that for RO/AR to be a Depositing Office, the RO/AR would have to exist by March 2, 2020. And for RO/AR to exist, Argentina would have to join the PCT by March 2, 2020. So I guess the DAS people at WIPO know something that I don’t about Argentina’s plans to join the PCT.
WIPO provides a very nice statistics lookup tool on its web site. I used that tool to make this pie chart showing the International Searching Authorities that were chosen in 2018 by filers in RO/US. Continue reading “Which ISAs do US filers choose?”
For US filers, many International Searching Authority fees will change in the next few weeks. Continue reading “Many ISA fees changing in a few weeks”
ROROP is Restoration of the Right of Priority. Continue reading “What is ROROP?”
Today for the very first time I received an email from the MyUSPTO widget telling me that the status of one of my monitored files has changed. This is really a big deal.
I am delighted to report that somebody at the USPTO has made some progress in getting the Patent Docket widget in the MyUSPTO system working. As I say, today I actually received an an email notification that the status had changed in a case that I am monitoring in the widget. Whoever you are at the USPTO, thank you!
I blogged about this system and how it did not work at all well over the past two years. Now it seems to be working at least a little.
For readers, here is the encouraging news. You might be able to start using the MyUSPTO Patent Docket widget as an adjunct to your other mechanisms for monitoring status of US patent applications.
Continue reading “Monitoring status of US patent applications redux”
An earlier blog article discussed whether the USPTO will record an assignment of a PCT application even if it was filed in a Receiving Office other than RO/US (the answer is “yes”). In that article I also pointed out that if you are in possession of a signed assignment of a PCT application, you ought to record it within three months of when it was signed, and you ought not to postpone recordation until such time as the US national phase is entered (35 USC § 261). This prompted a loyal reader to ask:
Would you record an assignment for a PCT case, even if it has been signed, say, 5 or 6 months ago? Way more than the three months during which it “should” have been recorded?
One of my clients does have a standing procedure according to which a PCT assignment is signed right after filing, however, the assignment is merely kept in the file and never submitted during the International Stage. Only if/when National Phase is entered, will said assignment be sent to the various associates for recordation. Some accept it, others want new ones anyway.
So, during the course of some “housekeeping” I came across several signed PCT assignments which had never been recorded. Should I submit them now, even the three months have long gone?
The answer is yes.
First, even if the practitioner has failed to follow Best Practice by recording within three months, there is still an enormous benefit to recording rather than failing to record. Recordation, even if done tardy, still offers some of the benefits set forth in 35 USC § 261. It will still, for example, trump a later-recorded assignment on many fact patterns.
You mention that an associate might “want a new assignment anyway”. This is nuts. If the inventor previously signed some assignment, then as of that moment the inventor ceased to own anything. If you were to ask that inventor to sign “a new assignment anyway”, the new assignment would probably be a nullity.