Category: Patents

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One month remaining to sign up for PCT seminar in Silicon Valley

One month remains, folks, to sign up for my PCT seminar that will take place in Silicon Valley, California, on October 16-18, 2018.

This will be a unique learning opportunity for practitioners and paralegals alike who wish to learn about the Patent Cooperation Treaty, or who wish to refresh their knowledge of the PCT, or who wish to learn how to use ePCT, or who wish to bring themselves up to date about PCT developments. Continue reading “One month remaining to sign up for PCT seminar in Silicon Valley”

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Are you a practitioner in Silicon Valley? Did you not receive this post card?

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Recently I mailed post cards to nearly all of the people in Silicon Valley who are admitted to practice before the USPTO.  This was about 4000 post cards.

By  now, about 400 of these post cards have been returned to sender as undeliverable.   Ten percent!

For each of these mailing addresses, it means the practitioner’s address with the Office of Enrollment and Discipline is undeliverable.  As I flip quickly through this stack of several hundred returned cards, I see names of very well known law firms and very well known high-tech companies.

So the point of this post is that if you did not receive one of these post cards, you might want to look in the the OED database to see if your mailing address with the OED is out of date.

If you are located outside of Silicon Valley and you know someone who is a registered practitioner in Silicon Valley, you might want to ask them if they did not receive the post card, in which case they might want to look in the OED database to see if they need to update their address.

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Winding down PDX – an action step for the USPTO

This past Saturday was a big day for DAS for US design filers and for US utility patent filers, in cases that claim priority from Chinese design and utility applications.  The big development was USPTO “pulling the plug” on PDX with respect to the Chinese patent office (blog article on utility patents and blog article on design patents).

The previous “pulling the plug” for PDX was last November 2017 when USPTO pulled the plug on PDX for Japan (blog article).

Now there is more plug-pulling to do.  Eventually PDX will be a thing of the past. Continue reading “Winding down PDX – an action step for the USPTO”

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How to get your $400 paper-filing penalty refunded

When the America Invents Act became law, it established a statutory penalty of $400 for the practitioner who failed to e-file a new patent application.  ($200 for small entities.)  This might best be understood as a Congressional mandate to the USPTO to do whatever was needed to ensure that a backup e-filing server would always be available even if the main e-filing server were to crash.

It will be recalled that there was a massive system outage at the USPTO starting on August 15, 2018.   Despite numerous reminders in 2014, 2015, and 2016 to the USPTO to take steps to move the backup server physically away from the main server, USPTO failed to do so, and as a consequence the system outage took down the backup server as well as the main server.  During the massive system outage, practitioners thus had no choice but to file their new patent applications on paper.  These applications were filed by Priority Mail Express (Rule 10) or were hand-carried to the USPTO.  Each such application thus incurred the $400 penalty.

Of course one wishes that USPTO would refund the penalty given that it was USPTO’s fault, not that of the practitioner, that the filer failed to e-file.  But during the previous outages, the USPTO had taken the position that because the $400 was statutory, not rule-based, then its hands were tied and it was impossible to refund the $400.  During the August 2018 outage, however, Director Iancu posted a message that the USPTO was working on a way to give back the $400.  I wondered (blog article) how the USPTO would finesse this.

Now USPTO has posted a Federal Register notice that establishes a policy for getting the $400 back.  This blog article discusses the notice and explains how to actually get the money back. Continue reading “How to get your $400 paper-filing penalty refunded”