Category: Patents

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USPTO will be closed on December 24, will reopen as usual on December 26

The President has signed an executive order dated December 19, 2018 closing most federal government offices (including the USPTO) on Monday, December 24, 2018.  This of course raises the usual question whether or not the closure constitutes “a federal holiday in the District of Columbia”.  To answer this question, Director Iancu has issued a statement dated Friday, December 21, 2018 deeming the closure to be such a federal holiday.

This means that any response that would be due at the USPTO on December 22, 23, 24, or 25, 2018 will be timely if it is filed on Wednesday, December 26, 2018.

The US entered a partial shutdown of the federal government a few hours ago, and it would thus be natural to wonder whether this might affect the USPTO, for example when the Office would be scheduled to reopen on Wednesday, December 26.  Here is what the USPTO web site says:

… the USPTO remains open for business as normal. This is possible because the agency has access to prior-year fee collections, which enables the USPTO to continue normal operations for a few weeks. Should the USPTO exhaust these funds before a partial government shutdown comes to an end, the agency would have to shut down at that time, although a small staff would continue to work to accept new applications and maintain IT infrastructure, among other functions.

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The importance of SAOSIT

Those who file patent applications relying upon Article 4 of the Paris Convention should pay attention to the requirement that the second application needs to have its applicant be the same applicant or successor in title with respect to the applicant in the first application.  This gives rise to the initialism SAOSIT.  (It’s not an acronym — see this blog article.)

And there are some patent offices that take the position that the “cleanup” paperwork that brings about the “or successor in title” situation is paperwork that needs to have been executed chronologically prior to the filing of that second application.  I am told by practitioners in the UK and in EPO that this time relationship needs to be satisfied for either of those Offices.

One of the places where this comes up is with the filing of a provisional as discussed here.

Oh, yes, and if anybody wonders, I am the person who coined the initialism SAOSIT.  I think I coined it about six years ago.

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Today is the day – USPTO pulls the plug on PDX with respect to Korean patent office

As I blogged here, today is the day that USPTO has pulled the plug on PDX in connection with KIPO (the Korean patent office).

For US design filers whose cases claim priority from Korean cases, this is welcome news.  Simply use Form PTO/SB/38 to ask USPTO to retrieve your electronic certified copy from the KIPO.  Be sure to include the DAS access code provided to you by Korean counsel.

For any US case claiming priority from a Korean utility or design application, the Best Practice nowadays is to set up an “alert” in DAS for the application, and to obtain a Certificate of Availability in DAS for that application, all the while checking that US is listed among the Offices to which the application is available.

Can you pass the DAS quiz?

Now what remains is for USPTO to do the same (pulling the plug) for the PDX relationship with EPO.

Starting now, when you as US counsel send instructions to Korean counsel to file utility or design cases claiming priority from your US cases, be sure to pass along the DAS access code (which is the PAIR confirmation code).  Also set up an “alert” in DAS for the US priority application, and also send a Certificate of Availability to Korean counsel.

Starting now, when Korean counsel sends instructions to you to file utility or design cases in the US that are claiming priority from Korean cases, Korean counsel should pass along the DAS access code.  Korean counsel should also send a Certificate of Availability to you.

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Backlog at DO/EO/US

These days if you enter the US national phase you can expect to wait at least three months for your Filing Receipt.

We try to track this kind of thing pretty closely in our active files.  For a domestic filing receipt the delays these days are a mere 2-3 weeks.  But if the filing receipt that you are waiting for is a DO/EO/US filing receipt, you will have to wait three months.

This three months is, these days, the “best case”.  This assumes that you e-filed the case (not paper) and that you did not have any missing parts (no missing inventor declaration, no missing translation into English, no missing fees).  This assumes that you provided not only an ADS but also a computer-readable ADS but not only that, you provided it in the first EFS-Web submission meaning that the bibliographic data auto-loaded into Palm.  You also provided an Express Request for immediate national-phase entry if the other requirements were satisfied before the end of the 30 months.  Put plainly, you did everything that you possibly could to make as easy as possible the work of the DO/EO/US person.

With all of this, the waiting time for a Filing Receipt these is three months.

If, however, you do anything that requires the DO/EO/US person to do actual work, like not having paid all of the fees, not having provided the inventor declaration, etc. then the waiting time for the Filing Receipt will be much longer.

How long are you having to wait for your US national phase Filing Receipts?  Post a comment below.

 

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Date is set for USPTO to pull the plug on PDX for Korean patent office

I am delighted to learn that a date has been set for the USPTO to pull the plug on PDX for the connection between the USPTO and the Korean Intellectual Property Office.

As I blogged here, the Korean Intellectual Property Office (KIPO) recently became a Depositing Office in DAS for purposes of design applications.  This was of course welcome news but it did not help US filers, because:

  • until now USPTO and KIPO have had an available connection through PDX, and
  • PDX does not support designs, although DAS does, and
  • PDX trumps DAS, meaning that between any two Offices, if there is a DAS connection, it will not get used so long as there is a PDX connection.

USPTO has announced that the plug will get pulled on PDX on December 1, 2018.

For US design filers whose cases claim priority from Korean cases, this is welcome news.  Simply use Form PTO/SB/38 to ask USPTO to retrieve your electronic certified copy from the KIPO.  Be sure to include the DAS access code provided to you by Korean counsel.

For any US case claiming priority from a Korean utility or design application, the Best Practice nowadays is to set up an “alert” in DAS for the application, and to obtain a Certificate of Availability in DAS for that application, all the while checking that US is listed among the Offices to which the application is available.

Can you pass the DAS quiz?

Now what remains is for USPTO to do the same (pulling the plug) for the PDX relationship with EPO.

Starting now, when you as US counsel send instructions to Korean counsel to file utility or design cases claiming priority from your US cases, be sure to pass along the DAS access code (which is the PAIR confirmation code).  Also set up an “alert” in DAS for the US priority application, and also send a Certificate of Availability to Korean counsel.

Starting now, when Korean counsel sends instructions to you to file utility or design cases in the US that are claiming priority from Korean cases, Korean counsel should pass along the DAS access code.  Korean counsel should also send a Certificate of Availability to you.

 

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US filers and filing at WIPO and daylight saving time

Keep in mind that most locations in the US will turn off daylight saving time today, but today is not the day that Switzerland will turn off daylight saving time.  (Switzerland turned off DST a week ago.)

Those who are filing documents at the International Bureau — documents that need a same-day filing date — should check to make sure they know what time it is in Switzerland as of today.

The main point here is that for a US filer, everything is now “back to normal”.  Whatever time zone offset a US filer is accustomed to between his or her time zone and Geneva, that offset is back to normal.

ePCT will tell you what time it is in Switzerland.

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EPO now belongs to the DAS system

(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.)

Today is the day!  EPO now belongs to the DAS system.

As I blogged back on October 22, EPO had announced that November 1, 2018 was the day that it was going to join the WIPO DAS system.  And today is the day.

This is welcome news.  As of today, all members of the IP5 belong to DAS.

US patent applicants will not, however, be able to make use use of this system for their applications that claim priority from EP applications, because the USPTO and EPO are still connected by the legacy PDX system.  Eventually it is expected that USPTO will pull the plug on the PDX system with respect to EPO, and then US filers will be able to get the benefits of DAS for their applications that claim priority from EP applications.

There are many benefits to the use of DAS.  One benefit is that the filer can set up an “alert” which will let the filer know exactly when a particular Accessing Office has actually retrieved a particular electronic certified copy.  (PDX offers no such alerting function.)  Another benefit is that the filer can obtain a Certificate of Availability which removes any doubt as to whether a particular application is or is not available to any particular Accessing Office.

Are you fully familiar with the DAS system?  See if you can pass this simple quiz on the DAS system.

 

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Daylight saving time and WIPO

Keep in mind that Switzerland will turn off daylight saving time today.  Those who are filing documents at the International Bureau — documents that need a same-day filing date — should check to make sure they know what time it is in Switzerland as of today.

For US filers, keep in mind that the US will not turn off DST today.  The US will turn off DST a week from now.

US filers who are getting ready to file a document at the IB should thus pay close attention during this next week to what time it is in Switzerland.

The practical effect for most US filers is that for the next week, you get an extra hour to e-file.  For example if you are in the Mountain Time Zone, normally you rush to file by 4PM if need a same-day filing date at the IB.  But for the next week you can file as late as 5PM and you will still get a same-day filing date at the IB.

Those who are e-filing in ePCT can readily check any time to see what time it is in Geneva, because at the top of any ePCT user screen it says what time it is in Geneva.  Here is a screen shot.  For example right now it is 4:44 AM Mountain Time and as you can see it is 11:44 AM in Geneva.

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What filing date you get when you e-file at RO/IB?

What we are all accustomed to is that when we are picking a Receiving Office for the filing of a new PCT application, a substantial drawback of RO/IB is that we have to worry about the time zone.  For the US-based filer who is selecting between RO/US and RO/IB, the typical difference is six hours.  A filer in the Mountain Time Zone, for example, who is rushing to get a same-day filing date would need to e-file by 10PM if e-filing in RO/US but would typically need to e-file by 4PM if e-filing in RO/IB.

What I did not realize, until quite recently, is that things are quite different when one is e-filing a Hague application (in other words, an international design application rather than an international patent application). Continue reading “What filing date you get when you e-file at RO/IB?”