Category: Patents

It will be recalled that on January 12, 2017 the USPTO published a Federal Register notice proposing to discontinue the Accelerated Examination program.  I blogged about the Federal Register notice here in February of 2017.  Members of the public filed comments in response to the Federal Register notice, as I discussed here in April of 2017.  It is now October of 2017 and one might wonder, what happened to USPTO’s proposal to discontinue AE?   Continue reading “Did Accelerated Examination go away?”

We all know that two-factor authentication is a Good Thing.  Having said that, we have all known from the moment (thirteen years ago) when USPTO rolled out its awkward Entrust java applet approach for access to PAIR and EFS-Web, that it was a Bad Thing.  Yes it provides two-factor authentication.  But it provides the two-factor authentication in a very poorly designed way.  Every year or so I have blogged (over and over and over again) about the need for USPTO to scrap that Entrust java applet approach in favor of any of a number of much more user-friendly types of two-factor authentication.

Having said all of this, the plain fact is that for thirteen years now, USPTO has stubbornly stuck with this poorly designed Entrust java applet approach for PAIR and EFS-Web that it adopted in 2004.  The approach is tied to an all-important “EPF file” which is the second of the two factors (in addition to a password).  If you don’t have your EPF file with you at the computer where you are trying to log in, or if you misplace the EPF file, or if it expires (which almost always happens without warning) then it is impossible to log in to PAIR or EFS-Web.

Which prompted a member of the PAIR listserv to ask this question:

Is there any reason I can’t store the EPF file on a USB thumb drive? That way I can put it on a physical keychain, use it at any computer, and if it is renewed (whenever that is), I am always using the most recent certificate?

The answer, as I will discuss, is sort of “yes” but with drawbacks.   Continue reading “Can you put your EPF file on a thumb drive?”

It will be recalled (see blog article) that on October 1, the USPTO shut down its PDX relationship with the Japanese Patent Office and migrated the certified-copy traffic from PDX to DAS.

This was a welcome development for practitioners because as compared with PDX, the DAS system offers many benefits:

• it is more secure (protected by authorization codes)
• It permits the practitioner to test ahead of the time of actual need, to make sure that the electronic document will be available when needed
• in the event of a problem with transmittal of an electronic certified copy, it permits the practitioner to troubleshoot and pinpoint the source of any difficulty

As I mentioned in that blog article, the natural next step would be for USPTO to do the same for its PDX relationships with the Chinese patent office (SIPO) and the Korean patent office (KIPO).  The natural next step would be for USPTO to migrate its electronic-certified-copy relationships involving China and Korea from PDX to DAS.  This would offer the many benefits of DAS to practitioners handling cases connected with China and Korea.

From the technical point of view such a migration ought to be easy and painless.  It would only be a matter of turning off the PDX mechanism and the document flow should easily proceed within the existing DAS connections.

Maybe USPTO was holding back a bit on such a migration to see how the Japan migration went.  If that was USPTO’s reason for holding back on the China and Korea migrations, then USPTO might as well proceed.   Continue reading “Next steps for USPTO and PDX (China and Korea)”

A week ago I blogged about the good news that the Eurasian Patent Office will soon be joining DAS.  (It will be recalled that DAS is the sophisticated system for exchanging electronic copies of priority documents, and that it is much more user friendly and more secure than the PDX system.)

In that blog article I bemoaned that EPO had said it would join in 2015 or 2016, but had not yet done so.  See this excerpt from a presentation made by EPO:

Now there is good news.   Continue reading “Good news about EPO and DAS”

Listserv members will all recognize Rick Neifeld’s name. He is a regular contributor to the listservs on many topics including PTAB topics.  Rick lives and breathes the world of the PTAB.

We are all used to the idea that an Inter Partes review proceeding before the PTAB can be very scary for a patent owner — much more scary than a trip to a federal district court.  The IPR proceeding moves along super-fast and almost before you can sneeze, the patent has been destroyed.  From the beginnings of the IPR system in 2013, there was supposedly a mechanism by which the patent owner might possibly amend the claims and preserve at least some portion of the patent scope rather than losing everything.  But the brief window of time during which the patent owner might try to do this would come and go in the blink of an eye.  This and other aspects of the IPR system led some observers to characterize the PTAB as a “patent death squad”.

On October 4, 2017 the Federal Circuit handed down a decision (Aqua Products v. Matal, read the opinion here) that talks about how the PTAB is supposed to do its job.  Among other things the decision shifts the burdens among the players in a PTAB proceeding as to whose job it is to establish the patentability or unpatentability of claims presented during an IPR claim amendment.

This might seem like a super-picky narrow topic that could only be interesting to the small handful of practitioners (of whom Rick is one) who live and breathe the world of the PTAB.  But Aqua’s impact extends to all types of patent disputes, including strategy and tactics related to court proceedings and USPTO proceedings.

Rick will be moderating two webinars which are intended to explore the impact of Aqua.  Here are signup links to the two webinars:

• October 27 – noon to 1PM Eastern Time
• December 4 – 1PM to 2PM Eastern Time

Here is a quotation from an email that one of my colleagues sent to a client today:

We received a telephone call from the Examiner in the subject application.

The Examiner confirmed that the mention of a rejection under 35 U.S.C. 101 in the recent office action was a typographical error.

Wow, it would be so nice to receive more such phone calls!  I do think that such telephone calls would promote science and the useful arts.