Category: Patents

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How to change bib data at the USPTO

(After I blogged on November 22 about how USPTO could do better in receiving updated bib data, on December 21 USPTO announced a new system for receiving updated bib data.  Please see my blog article about USPTO’s new system.)

About once a week in our office we find the need to update, change, or add bibliographic (bib) data in a pending patent application at the USPTO.  In general what we find is that the USPTO does not follow its own rules for such changes.  The USPTO’s procedures are ill-conceived, making poor use of the time of applicant and Office personnel alike.  In a later blog post I will describe what USPTO should do instead.  But for this blog post I will detail what the USPTO rules actually say about how to accomplish bib data changes, in the hope that this might be helpful to others.   Continue reading “How to change bib data at the USPTO”

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Disappointing news about PPH petitions

In September of 2015 I posted a blog article celebrating some exciting news about PPH petitions.  In that article (“Unexpectedly fast PCT-PPH decisions at USPTO“) I noted that we had gotten some cases onto the Patent Prosecution Highway a mere three weeks after filing the PCT-PPH petition.  This was very good news given that previously it was taking anywhere from four to seven months for the Office of Patent Petitions to get around to examining PPH petitions.  The letters communicating the three-week grants of Highway status came from a different part of the USPTO (not the Office of Patent Petitions) namely the Office of International Patent Legal Administration (the former Office of PCT Legal Administration).

At our firm we use PPH a lot.  We try to track our PPH cases pretty closely.  When we saw this good news in September of 2015, we figured USPTO had gotten a clue and had changed its workflow so that PCT-PPH petitions were going to OIPLA instead of going to OPP.  And OIPLA was deciding such petitions fairly promptly after filing.

Well, it turns out I was wrong about this.   Continue reading “Disappointing news about PPH petitions”

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Global Dossier public access now functioning

(See followup article here.)

Weeks and months ago USPTO delivered webinars and other outreClipboard01aches in which it demonstrated the soon-to-be-functioning Global Dossier public access system.  Today the system got released.  You can see it here.  Its chief advantage for US filers will be that it will provide English-language access to information in the Japanese, Korean, and Chinese patent office databases.

I will explain a bit about how it works and what you can do with it.   Continue reading “Global Dossier public access now functioning”

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USPTO gets it right — new way to pay issue fees

Note:  I was mistaken that USPTO did something right this time.  See my followup blog post.

USPTO gets credit for doing something right this time.

First a bit of background.  For many years, as many readers know, the process of paying an Issue Fee has been cumbersome and error-prone.  You take Form 85B and you copy and paste the various pieces of information onto the form.  (In our office we use the “typewriter” function of paid-for Acrobat to fill in the various fields.)  What happens then is that somebody at the USPTO hand-types the various pieces of information into USPTO systems for use in typesetting the to-be-issued patent.

We track this stuff pretty closely for our clients’ patents, and over the course of twenty years we have seen USPTO fat-finger the Form-85B information no less often than 2.8% of the time.  When this happens we often feel we must ask USPTO to issue a Certificate of Correction.  And what’s very unfortunate is that USPTO does not update its Full-Text database to reflect the the CofC.  In practical terms this means that a search in the Full-Text database that failed before the CofC (because USPTO misspelled, say, the assignee name) will still fail even after the issuance of the CofC.

So what is it that the USPTO got right this time? Continue reading “USPTO gets it right — new way to pay issue fees”

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How to receive PCT communications electronically?

A member of the PCT listserv asks:

A colleague recently filed a PCT application with the USPTO and we’ve been receiving the notifications (such as the “Notification of the International Application Number and of the International Filing Date”, Form PCT/RO/105) by hard copy.
Is it possible to receive electronic versions of notifications concerning a PCT application?  If yes, how do I set it up to do so?
The answer is “yes” as I will now explain.email

 
Continue reading “How to receive PCT communications electronically?”

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Is a PCT protest worthwhile?

A member of the PCT listserv posed a question earlier today:

I’d like to protest a lack of unity of invention finding from the ISA/US where the authorized officer has indicated that the first and second inventions share technical features known in the art at the time of the invention, and thus cannot be considered special technical features that would otherwise unify the groups.  The art used to support this finding is suspect and I will indicate the reasoning for my position in my protest.  I will also be paying the second search fee.

Has any listmate successfully protested such a finding from ISA/US?  If so, would you be willing to share your protest document?  I am debating how detailed to make my response.  How seriously can these protests be reviewed when they are free of charge?

I’ll talk a bit about PCT protests and I will try to answer this list member’s questions as best I can. Continue reading “Is a PCT protest worthwhile?”