Category: Patents

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Oddity about making a patent application “special”

A couple of years ago I taught a webinar called Get Patents Fast!  The point of this webinar was to enumerate and compare and contrast the various initiatives at the USPTO for getting a patent fast.

Last week a colleague at a New England patent firm asked if she could get her patent application made “special” by filing a petition under 37 CFR § 1.102 showing that the invention would “contribute to the … conservation of energy resources.”  She’s right that Rule 102 says that you can do that.  But as it turns out, you can’t really do that, as I will explain.  Oddly, in a few months it may once again be possible to do that, as I will also explain. Continue reading “Oddity about making a patent application “special””

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Whither Accelerated Examination?

As I mentioned in a February 18, 2017 blog post, USPTO has proposed to scrap the Accelerated Exam (AE) program (see the January 12, 2017 Federal Register notice).  There’s an oddity about how the USPTO went about implementing AE in the first place that means that scrapping AE would have a peculiar consequence, namely to bring back three ways of making applications “special” that had been unavailable (from a practical point of view) for the past decade.  I will explain.  As best I can see, nobody at the USPTO, nor any of the handful of commenters in response to this Federal Register notice, has thought about this peculiarity. Continue reading “Whither Accelerated Examination?”

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What does TYFNIL mean?

Recently in the Design Listserv a Paris Convention question arose.  The question was, under Article 4 of the Paris Convention, could a design application claim priority from an earlier utility application?  It’s a good question and if you have any thoughts about this, I urge you to join that listserv and share your thoughts.

But what prompts this blog article is the initialism “TYFNIL”.  (It is not an acronym.)  A listserv member pointed out that even if the Office examining the design application were to find nothing wrong with such a priority claim, the owner of the design protection would never really know for sure where they stood until TYFNIL.  What does that mean?   Continue reading “What does TYFNIL mean?”

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USPTO wrongly bouncing inventor declarations

Over on the EFS-Web listserv (the email discussion group for patent filers at the USPTO) there was an interesting discussion recently.  A number of USPTO customers (frequent patent filers at the USPTO) were talking about USPTO’s bad habit of bouncing inventor declarations that have nothing wrong with them.

It would not be so bad if USPTO were to do its bouncing promptly after the inventor declaration is filed.  In that case, if indeed there were actually something wrong with the inventor declaration, it would be a realistic goal to round up a fresh signature from the inventor.

Instead, the USPTO waits until allowance to mail the “Notice Requiring Inventor’s Oath or Declaration” (Form PTOL-2306).  The Notice states that there is some real or imagined defect in the inventor declaration that was filed back when the patent application was filed in the first place.  In a very large percentage of cases, there is not actually anything wrong with the inventor declaration. Continue reading “USPTO wrongly bouncing inventor declarations”

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Past April Fool’s Day articles

Here are some of my past April Fool’s Day blog articles:

As for the second article (USPTO relocates its “contingency” EFS-Web server) what is particularly sad is that it should not have been an April Fool’s article at all.  As many have pointed out over the course of many years, there is an ongoing need for USPTO to relocate its contigency patent e-filing server to a geographic location distant from the main e-filing server.  There have been many system outages at the USPTO over the years in which both the main server and the “contingency” server were both out of service.  It is just common sense that the two servers should not be in the same building, connected to the Internet through the same single connection point, powered by the same source of electrical power.

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Time of day returns to normal for US filers filing at the International Bureau

Readers will recall my blog post of two weeks ago in which I described that an American filer would (for a limited time of two weeks) have an extra hour during which to file a same-day filing at the IB.  Well, now it’s back to normal.  Now the drop-dead time for e-filing (or fax filing) is the usual 4PM (Mountain Time).

So for your PCT filing at the RO/IB, or your direct filing of a Hague Agreement design application, or your payment of a renewal for a Madrid Protocol international trademark registration, or an Article 19 amendment, or a PCT Demand … it’s back to normal.

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USPTO thinks there is such a thing as a “provisional patent”?

I guess probably a dozen times a day I go to the USPTO web site.  I go to the home page, and then I click around until I find what I need (for example Private PAIR).

Now we all know there is no such thing as a “provisional patent”, right?  Yes there is such a think as a “provisional patent application”.  But there is no such thing as a “provisional patent:.

I just now noticed an astonishing thing about the main page of the USPTO.  The home page of the USPTO invites the visitor to search for information on a “provisional patent”.

Continue reading “USPTO thinks there is such a thing as a “provisional patent”?”

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ISA/RU search fee to increase on May 1

For a US filer who is filing a PCT application and who is picking the Russian patent office, the search fee will increase on May 1, 2017.  The search fee, presently $449, will increase to $482.

If you rank ISAs in order by the size of the search fees, the Russian patent office will still be the least expensive searching authority available to US filers after May 1, just as it is now.

The formal name of the Russian patent office is Federal Service for Intellectual Property but the nickname is Rospatent.  Which gives us an opportunity to brush up on our knowledge Cyrillic.  As you can see in the logo at the upper right, in Cyrillic the “P” is what we English speakers would voice as an “r”.  The “C” is what we would voice as an “s”.  The Π (like a Greek letter π) is what we would voice as a “p”.  And the “H” is what we would voice as an “n”.

Which brings me to a fun old classic mystery movie in which this Cyrillic H played a part.  In the movie, a handkerchief is found with an “H” embroidered on it.  This implicates a person whose name is pronounced starting with an “h”.  But a clever person in the movie realizes that the “H” might be sounded as an “n”, implicating a person with a Russian name.

The first person to post a comment identifying this movie will win a super spiffy digital voltmeter from Oppedahl Patent Law Firm LLC.