Category: Patents

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Errors in USPTO patent application filing receipts

The EFS-Web listserv is a place where US patent practitioners discuss problems and sometimes help each other to solve problems.  (To learn more or to join the listserv, click here.)  Here was a question posed today by one of the members of the listserv:

Apologies for the interruption/venting, but I’ve reached somewhat of a breaking point with errors in official Filing Receipts. My understanding was that fillable ADS forms were being used to expedite entry of data by the Office. However, based on the number of typos and missing information we are seeing on an ongoing basis, I imagine someone is manually typing this information in Office side. Is this still the case?

Sure we have a form request for obtaining a corrected filing receipt, we say the original ADS had the correct information, we show the corrections on the receipt, etc., but addressing Office errors is becoming a time sink.  This is separate from the time we take to cross-check every receipt that comes in, which is redundant of the time we take in reviewing the original ADS to begin with.

Is there something that I am missing?

If it matters, these are 371 filings and I confirm that fillable forms are submitted via EFS, i.e., they are not scans/images. Any insight is much appreciated.

This listserv member is right, of course.  USPTO mistakes in official Filing Receipts impose a substantial cost upon patent practitioners.  In this blog article I will talk about some of the sources of USPTO mistakes and what the patent practitioner can do to try to reduce the number of such mistakes.

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Real Party in Interest – a rulemaking that went away

Back in January of 2014, the USPTO published a Notice of Proposed Rulemaking which might have led to rules requiring each patent applicant to go to quite a lot of trouble regarding a disclosure to the USPTO of any “real party in interest” connected with a patent or patent application.  I filed comments explaining why I thought the proposed rules were ill-advised.  My comments concluded with this:

The United States Supreme Court, in the case of Dastar Corp. v. Twentieth Century Fox Film Corp. et al., 539 US 23 (2003), considered one litigant’s suggestion as to the supposed need to give attribution to everyone who was connected with a literary work. The Court said:
We do not think the Lanham Act requires this search for the source of the Nile and all its tributaries.
I do not think the aims of this rulemaking package justify imposing upon each patent applicant the burden of investigating the source of the Nile and all its tributaries, and repeating that investigation every three months.

 

I don’t know whether my comments made a difference.  I like to think that maybe they did.  But anyway the practical consequence is that the USPTO seems to have abandoned this rulemaking effort.

Readers of this blog are invited to print out the comments that I filed.  Keep them handy for use when insomnia strikes.

Comments welcome.

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USPTO needs to accept “due care” restoration requests

The USPTO needs to be willing to consider requests for the restoration of the right of priority based upon the “due care” standard.  This will help US filers who missed the 12-month priority period, and whose foreign-filing plans include the European Patent Office or any of twenty-eight other patent offices that apply the “due care” standard.

US practitioners (including yours truly) have been asking USPTO to make this change for several years now.  in January of 2015, AIPLA asked USPTO make this change.  It is now October of 2016 and USPTO has still not made this change.  It is hoped that this blog article will serve as a reminder to the USPTO that this change is needed.  I will explain.

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For the next week, an extra hour available for WIPO filings

dstExperienced filers in the Patent Cooperation Treaty, Madrid Protocol, and Hague Agreement systems (utility patents, trademarks, and industrial designs) know that it is important to keep always in mind when midnight will arrive in Geneva, where WIPO is located.

For a PCT filer, this matters because to get a same-day filing date, a PCT application being filed in RO/IB will need to be filed by 4 PM Mountain Time.  The same is true for filing an Article 19 amendment.  The same is true if you are using ePCT to file a Demand and Article 34 amendment.

For a Madrid filer, this matters among other things for the payment of decade renewal fees.

For a Hague filer, this matters for the the filing of an international design application at the IB.

The point of today’s post is that starting today, and for the next week, you get an extra hour to get a same-day filing date.  The reason is that Europe and the US carry out their daylight saving time transitions on different days that are a week apart.

This means that you could file as late as 5 PM Mountain Time (instead of the usual 4 PM) and still get a same-day filing date.

Things will return to normal a week from now, on November 6, 2016.

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USPTO needs to update its Foreign Filing License rule

The USPTO has known for a couple of years now that it needed to update its rule (37 CFR § 5.15) that spells out what you can and cannot do when you have a Foreign Filing License.  Things came to a head in May of 2016 and one would have hoped that USPTO would have taken action at that time.  Even now in October 2016, USPTO has not taken action.  This blog article will hopefully serve as a reminder to USPTO that the update continues to be needed.  What is needed is an update to the rule making clear that a PCT filer can use ePCT to generate a PCT Request for e-filing in EFS-Web.  I will explain.

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What it’s like if your country joins the PCT

The other day I was teaching the international-filing session of the AIPLA’s twentieth annual Patent Prosecution Boot Camp.  (By the way I highly recommend this boot camp for anyone who is just getting started in patent prosecution.)  One of the 110 or so attendees at the boot camp was a very nice fellow named Emilio Berkenwald who is with a patent firm in Argentina.  Well, I did what I always do when I meet someone from Argentina — I said I sure hoped his country would soon join the Patent Cooperation Treaty!

This reminded me, however, of the perspective that a patent practitioner might have when contemplating one’s country possibly joining the PCT.  The perspective might not be completely favorable, as I will discuss.

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A seminar at John Marshall Law School

jmls-pct-2

Today I finished co-teaching a two-day seminar about the Patent Cooperation Treaty at John Marshall Law School.  I had the pleasure for the first time of serving on the dais with Matthias Reischle, Director and Head at WIPO.  This program was sponsored by the John Marshall Law School Center for Intellectual Property, Information and Privacy Law (“the Center”).

(Click on the photograph to see a larger copy of the photograph.)  From left, Josh Sarnoff of DePaul Law School;  Daryl Lim, Director of the Center; Matthias Reischle;  yours truly;  and Vangelis Economou, director of the JMLS Patent Clinic.

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Cambodia joins the PCT

cambodiaCambodia deposited its instrument of accession to the PCT on September 8, 2016.  This event brings the number of PCT members to 151.

The Treaty will enter into force on December 8, 2016.

The two-letter code for Cambodia is KH.

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Examiners discover a new RCE trick

We’ve become aware of a new trick that Examiners at the USPTO use to force an aotdp-1pplicant to file an RCE.  I hesitated for a while to blog about this, fearing that this blog article would educate any Examiners that did not already know about this trick.  But hopefully the powers-that-be at the USPTO will read this blog article and will take appropriate steps to block the trick.  And anyway maybe the word had gotten around the Examining Corps about this trick some time ago, and maybe there aren’t any Examiners that don’t already knew about this trick.

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