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.

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.

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.

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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Japanese PCT search fee increases today

The search fee for ISA/JP will increase today for US PCT filers.  For a US PCT filer whose PCT application is filed in English, the search fee was previously $1378.  Starting today, it will be $1530.

 

A new WIPO chemical structure searching tool

structureWhen I was first in practice some thirty years ago, the way that you kept abreast of any and all developments in IP law was … you paid $1000 per year to subscribe to BNA’s PTC Journal.  This came out every two weeks, if I recall correctly, and told its readers about rulemakings, important court cases, and other developments.  Some years later it became commonplace for professional organizations like AIPLA and the ABA/IPL to send out an email newsletter reporting important events maybe a week after the event occurred.

How things have changed.  Nowadays if I want to know whether something important happened, the way I find out is that one of the IP bloggers blogged about it (see Patently-O and TTABlog and the other bloggers who sponsor “Meet the Bloggers“).  Or I learn about it from one or another of the listservs for IP professionals (see some of the listservs here).  Or if, like me, you are an adjunct professor on an IP subject, you can benefit from the IP Profs listserv.  Generally if something interesting or important has happened, I can be pretty sure that I will hear about it from one of these valuable resources.  And I will likely hear about it from one of these resources much sooner than from any of the legacy sources.

Which brings me to today’s posting.  Alert listserv member Rick Neifeld posted an article to the PAIR listserv.  He wrote:

WIPO is launching a structure search functionality early in October.

By which he means a functionality for searching chemical structures.

Now there have always been resources for searching chemical structures.  The ones I have known about over the years were fee-for-service resources from providers such as Orbit and Dialog.  I don’t really know but I have to assume that USPTO and the other major patent offices must have always had internal resources for searching chemical structures.

I like to think that I keep on top of many if not most outreach efforts and initiatives from WIPO.  And I had never heard that WIPO is launching a structure search functionality, let alone that it would be launched early in October.  How did I hear about it?  From Rick in the PAIR listserv.  Bless his heart he also posted his notes and comments and excerpts from the WIPO presentation slides.  You can see them here.  It seems that WIPO gave an outreach presentation today, and Rick attended, and later the same day he provided his very helpful notes.

As I understand it from Rick’s notes, this will be an add-on to the existing search functionalities of Patentscope.

Thank you Rick!

Oh by the way, the first poster to correctly identify the chemical in the structure quoted above will receive a piece of swag, namely an official OPLF voltmeter.

US Patent Prosecution Boot Camp – October 25-26 in Washington DC

Anyone who is relatively new to US patent prosecution will benefit froaipla-logom AIPLA’s Patent Prosecution Boot Camp.  Now in its eighteenth year, this boot camp offers the opportunity to learn from experienced patent practitioners.  From the brochure:

This two-day seminar, also referred to as “boot camp,” is tailored to new practitioners (those having less than two years of experience), or others who want to learn the basics of patent application preparation and prosecution. This comprehensive CLE-accredited seminar includes instructional sessions, hands-on claim drafting, and responding to office actions workshops taught by highly skilled, experienced private and corporate practitioners.  At the program’s conclusion, attendees may choose to participate in one of three hands-on claim drafting and responding to office actions workshops in these areas:

  • Biotechnology/Chemical
  • Electrical/Software
  • Mechanical

Where: Marriott Wardman Park Hotel, 2660 Woodley Road NW, Washington, DC 20008-4106.

Yours truly will be one of the presenters.

To learn more, or to register, click here.