Category: Patents

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”