Category: Patents

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Save the date: PCT Seminar in San Jose on April 4

The Schwegman firm, carrying on a tradition of many years now, will offer a full-day live PCT Seminar in San Jose, California on Thursday, April 4, 2019.  Schwegman provides a wonderful service to the patent community with these seminars, which it provides free of charge.

Yours truly will be teaching this all-day seminar which will take place at the San Jose Marriott hotel.

Save the date!

Not only does this seminar provide a full day of training on the Patent Cooperation Treaty, but it offers invaluable networking opportunities during the breaks.

New topics since last year’s Schwegman PCT seminar will include a discussion of the five types of PCT Declarations, and best use of the DAS system.

When the registration web page becomes available, I will post the link in this blog. This seminar always sells out!  So you don’t want to miss the opportunity to register for this seminar.

If you want to make sure that you hear about the availability of the registration web page right away, make sure you are subscribed to this blog.

 

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USPTO will be closed Monday January 14, 2019

The USPTO will be closed on Monday, January 14, 2019 because of a dusting of snow.  (OPM announcement.)

The small amount of snow giving rise to this closure would not even be noticed in other parts of the US such as the high altitudes of Colorado where Oppedahl Patent Law Firm LLC is located.  (Oppedahl Patent Law Firm LLC will be open as usual on Monday, January 14, 2019.)

The closing of the USPTO means that any response that would be due on Monday, January 14, 2019 will be considered timely if it is filed by Tuesday, January 15, 2019.

 

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Enjoying a patent wall

click to enlarge

Let me tell you about a recent delightful experience.  I was in Manhattan, got to the building where my client Sendyne is located, and  stepped out of the elevator when I reached the floor that I wanted.  I was greeted by Sendyne’s Patent Wall (photograph above, click to enlarge).  What a treat!  You can see how important patents are to this company.  And if you get up close to the plaques, you can see that each patent lists my firm as the “attorney, agent or firm”.  Very gratifying!

I then had the pleasure of sitting down with two of Sendyne’s inventors to discuss some of their most recent inventions.  Barring some surprise, within a year or two we will probably add a few more plaques to this Patent Wall.

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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.