Category: Patents

Over on the EFS-Web listserv, a list member asked:

Is anyone aware of any training materials, articles, guides, etc. providing best practices/strategies for claim drafting to avoid Alice issues in new patent applications?

Here’s what I think about that:   Continue reading “Best practices/strategies for claim drafting to avoid Alice issues?”

In a recent blog post I said “USPTO gets it right — new way to pay issue fees”.  Turns out I was mistaken.  USPTO did not get it right when implementing its new way to pay issue fees.  What a disappointment. Continue reading “Spoke too soon — USPTO did not get it right”

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”

Despite having been told many times to take corrective measures, USPTO has even now not moved its backup e-filing server to a redundant location.  This causes great harm to customers of the USPTO.  See, quoted above, the notice appearing today on USPTO’s web site. Continue reading “All USPTO patent e-filing systems are broken”

In our patent firm, every day somebody needs to obtain a US patent or published US patent application as a PDF.  We send the PDFs to clients and foreign agents and we save them to our own file servers for internal use.

For many years USPTO went out of its way to make it very difficult for a user to obtain a copy of a US patent or published application, providing only TIF images (not PDFs) and those only one page at a time.  Users wanting a PDF had to use software such as GetIPDL which would download the TIF images one by one and stitch them together into a PDF.  Another approach for a user was to draw upon any of a number of private web sites for a multipage PDF of a patent.  Some of these private web sites charged money for the PDFs, and one of them tacked an advertising message across the bottom of the first page of the PDF.

Now the USPTO has quietly changed its PatFT (patents full text) and AppFT (patent application full text) databases so that with the click of a mouse, the user can view a multipage PDF containing all pages of a patent or published application.  With another click of the mouse (see the “full pages” button above), the user can download the PDF and make normal use of it.

Refreshingly, USPTO has done this in a way that tacks the Certificate of Correction (if any) onto the back of the PDF.

What one wishes, of course, is that USPTO would provide a “constructable” link which would directly yield the PDF file.  The wish is that a link along the lines of https://www.uspto.gov/patents/7123456.pdf would retrieve a PDF of US patent number 7123456 and something similar for published US patent applications.  As far as I can see the new USPTO system does not provide such a constructable link.  Instead USPTO seems to have designed this new “full pages” link in a way that requires a human being to do the mouse clicks to obtain the PDF file.

Setting aside my disappointment about the lack of constructable links for the PDF files, the fact is that USPTO has moved closer toward actual user-friendliness in this area.  Kudos to the USPTO!

Readers will recall that in June 2015, the Patent Trial and Appeal Board announced its two-for-one sale.  Any filer that had two ex parte appeals pending as of June 19, 2015 could get one of the appeals decided right away by dropping the other appeal.  When the PTAB announced this program, I blogged about it.  I noted that this program was likely to be of interest only to sophisticated, high-volume corporate filers, since only such filers would (a) have two appeals pending and (b) be in a position to make a decision to drop an appeal in a case that previously seemed important enough to appeal.  I noted that few if any small or micro entities would be able to use this program because they would not have two appeals pending (one of which would have to be dropped to qualify for the two-for-one program).  I predicted that very few filers (large or small) would actually choose to use this two-for-one program, and my prediction turned out to be correct.

Now the PTAB has announced a second program for getting ex parte appeals decided fast.  This second program, fetchingly named S-EPAP for Small Entities, is described in a Federal Register notice dated September 15, 2015 and on an FAQ page.  This program permits a small entity or micro entity to get an ex parte appeal decided fast under certain conditions.

It is interesting to note USPTO’s explanation for setting up this second fast-appeals program:

Members of the public noted that small entities having only one appeal pending before the PTAB would not be able to take advantage of the EPAP program to secure expedited review of an ex parte appeal.

It seems I was one of those “members of the public”.

So how does this second, new fast-appeals program work? Continue reading “Fast appeals for Small Entities”

Readers will recall that in June 2015 the Patent Trial and Appeal Board announced its Expedited Patent Appeal Pilot.  This is the program in which, if you have two ex parte appeals pending, you could abandon one of them and the PTAB would decide the other one faster.  I blogged about this program and I predicted that very few applicants would choose to use this program.  How did my prediction turn out? Continue reading “PTAB’s two-for-one sale — three months on”