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:
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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.
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.
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.
If we have a PCT application filed in a receiving office other than the USPTO, will the USPTO record an assignment against that PCT application in advance of US national phase entry?
For example: For PCT/CN2019/123456, I have an executed English language assignment. If I file it via EPAS with the CN PCT number, will the USPTO record it?
The USPTO will record any document affecting title with respect to any US patent application. And any PCT application that designates the US counts as a US patent application (35 USC § 363) regardless of whether or not the US national phase has been entered. From this it follows automatically that the USPTO will record any document affecting title with respect to any PCT application that designates the US. (Socrates is a man, all men are mortal, therefore Socrates is mortal, that kind of thing.) You get the same answer to this question no matter which Receiving Office happens to have been selected by the filer. And it is the same answer regardless of whether the US national phase has or has not been entered. Such a recording may be carried out before the US national phase has been entered, and may be carried out even if the US national phase entry never actually happens. Such a recording may be carried out even after the international phase has ended (in other words, it can happen after the end of the 30-month period).
Actually nobody at the USPTO, no computer system at the USPTO, ever actually checks to see whether the PCT application actually designates the US. Thus actual observed behavior is that the USPTO will record any document affecting title with respect to any PCT application no matter whether or not it designates the US.
And of course the recordation is free of charge — no government fee.
And of course anyone can carry out the recordation — there is no requirement that the filer be a registered practitioner or have an address in the US.
Which then brings us to 35 USC § 261, which reminds that it is a Best Practice (indeed almost malpractice avoidance) to record any assignment within three months of its date of execution. So for example if a PCT application (designating the US) were to be assigned, it would be a Best Practice to record it at the USPTO within three months. This would be the case regardless of the Receiving Office in which it had been filed.
The alert reader might wonder, if we record against the PCT application number, and later enter the US national phase, will the recordation automatically cover the US application number? You can see the answer here.
Suppose that there were a computerized system operated by a government agency where the paying customer pastes text characters into the system. Suppose the text were really important text that needs to appear at a later time in a prominent place on an official government document that bears a gold seal and the signature of the Undersecretary of Commerce.
The normal sensible thing would be for the text characters to get auto-loaded into the system that prints the official government document, right?
If you were going to make up a hypothetical example of what would be really stupid, your hypothetical example might be that after the customer pastes the text characters into the government system, the government agency flattens the text characters into a TIF image. And then the government agency carries out OCR (optical character recognition) to recover the text characters for the system that prints the official government document. And then the document gets printed, and the gold seal is applied, and then the Undersecretary of Commerce signs the document. In your hypothetical example it would be stupid to do it that way because the Office already was in possession of the actual characters, and anyway the OCR workflow costs money, and every now and then the OCR system might make a mistake. Of course it would be better to auto-load the text from the first computer system into the second computer system.
Well, you can’t make this stuff up. What the USPTO actually does is actually stupider than what you would make up. Yes, several hundred times per day, every time somebody pays an Issue Fee using the web-based issue fee payment system, the customer pastes text characters for the assignee name, the city of the assignee, and the “attorney, agent or firm” into a special page in EFS-Web. These text characters are all to be printed on the front page of the issued patent. And yes, after the customer clicks “submit” in EFS-Web, the USPTO flattens the information into a TIF imagein IFW. But what you wouldn’t be able to make up is that USPTO does not even use OCR on those images. Just a few days after USPTO flattened the text into image format, a human being views the TIF image on a screen and hand-keys the information into the system for printing the US patent.
No, you can’t make this stuff up.
The way that the TIF image got generated by EFS-Web is that it was vector-rendered by a computer from text character information. This means the OCR would in fact be very close to 100% accurate if the USPTO were to use that path for recovering the characters. But USPTO does not even use OCR to recover the text from the images. The USPTO uses hand-keying by a human being to recover the text from the images.
Oh and the amount of time that passes during which this character information is temporarily stored in image format? Only a few days. The customer pays the issue fee on some particular day, and the Final Data Capture happens maybe a week later.
Let’s look at some real-life examples. The map above shows Radom, Poland, which I understand to be the fourteenth-largest city in Poland, having a population of over two hundred thousand people. Radom is also the home of a company (my client) that has over the years paid to the USPTO well over a quarter of a million dollars in Filing Fees, Search Fees, Examination Fees, Issue Fees, and Maintenance Fees relating to its inventions.
A few months ago I paid yet another Issue Fee to the USPTO on behalf of this client. I used the web-based Issue Fee system in EFS-Web. Here are the characters that I pasted into USPTO’s web-based form 85B:
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And here is what USPTO printed on the front page of the patent that the USPTO issued a couple of weeks ago:
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Yes, some human being saw the five letters “Radom” on a computer screen and typed the six letters “Random” into a keyboard.
Long-time readers of this blog will recall that I blogged with some enthusiasm about it when the USPTO first launched this web-based issue fee payment system in September of 2015. In November of 2015, I blogged with disappointment that it had become clear that USPTO was hand-keying the 85B information from the web-based Issue Fee form rather than auto-loading it.
During the four years that have passed, I would have hoped that maybe my November 2015 blog article would have prompted (or shamed) the USPTO into doing the non-stupid thing with the web-based Issue Fee payment form. The non-stupid thing would be to start auto-loading the text characters from the first computer system into the second computer system.
But even now in 2019, four years later, USPTO continues to take the text characters provided by the customer in the web-based form, and flatten them to TIF images, and then just a few days laterthe USPTO has a human being hand-key those same characters into a second computer system.
It pains me to have to say that this is not the first time that the USPTO caused this exact harm to this exact customer. In 2017 I paid an Issue Fee for this same client, and I used the web-based Issue Fee form. I pasted the five characters “Radom” into the web-based form. And the USPTO human being hand-keyed the six characters “Random” into the system for printing the US patent.
We will, of course, ask the USPTO to provide a corrected patent with the front-page information spelled correctly (not a mere certificate of correction) pursuant to 37 CFR § 1.322(b).
(Update: Maybe prompted by this blog article, it seems that somehow the USPTO found the third page of IDS and got it into IFW. Everything is okay now with this three-page IDS.)
How’s this for a nightmare situation in a pending US patent application? You e-file three pages of Information Disclosure Statements. But only two of the pages find their way into IFW.
TYFNIL we all realize what an adversary could do with this!
Ladies and gentlemen of the jury. The applicant filed three pages of information disclosure statements. You can see that from the Acknowledgment Receipt that is right here in the application file. But only two of the pages got considered by the Examiner. There were twenty US patents listed on that missing page.
Just imagine, ladies and gentlemen of the jury, what a difference it would have made for the Examiner, if the Examiner had had an opportunity to consider those twenty US patents when deciding whether or not to grant this patent!
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Here’s a real-life example. Ten minutes ago I e-filed three pages of Information Disclosure Statements. You can see it right here in this quotation from the ack receipt.
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Then I did what we all do. I looked in IFW to see what I just e-filed. And this is what I see. Yes, only two of the pages of the IDS are visible in IFW.
And it’s the same in the “display references” tab in PAIR.
This is a trap for the unwary. The USPTO e-filing system lost one of the pages of my IDS. Fortunately I noticed that USPTO screwed this up. We will docket to watch closely to see if anyone at USPTO fixes the screwup.
The FOAP (first office action prediction) in this case is 15 months. So hopefully we have a little time to spare for pestering the USPTO to fix this problem.
The USPTO needs to fix EFS-Web so that pages don’t get lost like this.
The moral of the story? Always check IFW very carefully to see whether USPTO lost any pages of whatever you e-filed. And don’t just look for the items listed in IFW. Look at them. You would want to know if, for example, USPTO corrupted the images on those pages or turned them into blank pages.
Have you run into problems like this? Post a comment below.
