Category: Patents

Posted on

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”

Posted on

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:

  1. RO/US (USPTO) – not trendy, modern, and up-to-date
  2. RO/CN (China) – yes trendy, modern, and up-to-date
  3. RO/JP (Japan) – not trendy, modern, and up-to-date
  4. RO/EP (European Patent Office) – yes trendy, modern, and up-to-date
  5. 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.

Posted on

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”

Posted on

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”

Posted on

Examiner’s Statement of Reasons for Allowance – why we care?

The other day we received a Notice of Allowance in one of our US patent cases.  In the Notice, the Examiner provided an Examiner’s Statement of Reasons for Allowance (ESORFA).  We did what we usually do in such situations — we reported the Notice to the client, along with a suggestion that the client may wish to consider whether it is comfortable with the ESORFA.

(Yes, yet another six-letter initialism being coined.  You saw it here first, folks!  You might think it is an acronym but it’s not.  See this blog article.)

Often the reporting of the Notice of Allowance is the end of it.  The client never offers any comment one way or the other about the ESORFA, we pay the Issue Fee, the patent issues, and no one ever give’s another moment’s thought about the ESORFA.

But in this case I was absolutely delighted when the inventor responding by saying he was not sure what he should be looking for, and wondering how or why he would be uncomfortable.  It is always welcome news when an inventor makes the time and the energy to get involved in the details of the patent process, whether it be the drafting of the claims at the outset or a review of ESORFA at the conclusion, or at points in between.

How does one explain to an inventor how to react to an ESORFA?  I gave it a try. Continue reading “Examiner’s Statement of Reasons for Allowance – why we care?”

Posted on

Setting up a tripwire for new filings in EFS-Web and Patentcenter

(Note:  this tripwire feature is feature request FR7.  The “last 30 ack receipts” feature is feature request FR4.)

(Update:  Ideascale does not seem to work any more.  For example this very suggestion by the person mentioned below is no longer to be seen in the Ideascale system.)

In this posting I will talk about three things — a feature that USPTO ought to implement in EFS-Web and in Patentcenter alpha — and a reminder of the existence of the Ideascale system which USPTO has set up for receiving suggestions — and a thanks to a member of the patent community who used Ideascale to offer up the feature that I am now going to write about.

The feature is, USPTO ought to set it up in EFS-Web and in Patentcenter so that it is possible to set up tripwires.  By tripwire I mean a function so that in an automatic way, any new filing of a document by a filer would get communicated to some particular pre-established email address. Continue reading “Setting up a tripwire for new filings in EFS-Web and Patentcenter”

Posted on

Wow I am an Ideascale Occupier!

click to enlarge

(Update:  More than a year has passed and few, if any, of the Patentcenter bug reports that I posted to Ideascale have been acted upon by USPTO.  So I have stopped posting to Ideascale.)

USPTO uses a system called Ideascale as a way to collect suggestions and comments from users of PAIR and EFS-Web and the alpha-test of Patentcenter (which will eventually replace PAIR and EFS-Web).

There is a small but fairly dedicated community of USPTO customers who are users of these systems, who regularly post things to Ideascale.  I am one of them.  And I am astonished to learn that I have been awarded the status of “Occupier” in the Ideascale system at the USPTO. Continue reading “Wow I am an Ideascale Occupier!”