Category: Patents

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Supreme Court says patent applications are difficult to draft

I am indebted to Louis Ventre, Jr. for pointing out this delightful quotation from the US Supreme Court in 1892:

The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy; and, in view of the fact that valuable inventions are often placed in the hands of inexperienced persons to prepare such specifications and claims, it is no matter of surprise that the latter frequently fail to describe with requisite certainty the exact invention of the patentee, and err either in claiming that which the patentee had not in fact invented, or in omitting some element which was a valuable or essential part of his actual invention.

Topliff v. Topliff, 145 U.S. 156, 12 S.Ct. 825, 36 L.Ed. 658.  

Maybe it should be standard procedure to send a copy of this quotation to each client when they complain about the cost to get a patent application drafted.

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fuliginous

Wow.  If you want to learn a new word now and again, hang out with the folks in the PCT Listserv.  Here’s a PCT Listserv posting of earlier today by list member Jim Boff:

I think you have said it all.

  • The requirements of the US are seen by the rest of the world as replete in fuliginous obscurity.
  • The requirements of the rest of the world are seen in like respect by the US.
  • The rest of the world is not in total harmony and look upon each other in suspicion.
  • Patents are property and people get difficult about property.
  • If there was such a thing as a form of patent assignment that was agreed valid in all jurisdictions and that required minimal formalities to be valid everywhere that would be a wonderful thing and devoutly to be wished for.

But you mention notarisation?

If you want it simple there has to be compromise everywhere on formalities, in the US as well as outside the US.

Jim Boff

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Unexpectedly fast PCT-PPH decisions at USPTO

Note:  what seemed like an improvement at the USPTO regarding PPH petitions turned out to be illusory.  Please see a followup article about this.

There are two ways to pursue US patent protection from a PCT patent apoiplaplication:

  • entry into the US national phase, and
  • filing of a bypass continuation application,

and there are many factors which might influence a particular filer’s choice of one approach or the other.  Now there is yet another factor, namely the speed with which a PPH petition might get granted.  If you pick “US national phase”, your PPH petition will nowadays likely get decided in a few days rather than a few months.  As I will describe below, a couple of weeks ago we filed about fifty PCT-PPH petitions, and we figured we would have to wait the usual four to seven months for USPTO to decide them.  We were astonished when seven of these fifty PCT-PPH petitions got decided in less than three weeks.  It turns out there is an easy explanation for this happy result. Continue reading “Unexpectedly fast PCT-PPH decisions at USPTO”

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Avoiding having to translate two documents into English

A question came in from a good friend:

A client from a non-US country wants to enter the United States at the end of the PCT which was filed in a non-English language. He is working on a CIP but won’t have it ready until another few months. He would like to try and avoid the cost of a double translation. Can you think of a way for him to enter into the US at the end of the 30 months with the non-English language version, and somehow avoid having to translate that application, and then in a few months when he has the CIP ready here he will file that in the US and translate that one into English. My concern is that without filing an English translation of the first application, is he able to get somehow a valid US filing date?

Here’s what I think the answer is. Continue reading “Avoiding having to translate two documents into English”

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USPTO can’t say it wasn’t warned about its Java applet problem

It is astonishing that even now, in August of 2015, despite many warnings and requests from users over the span of several years, USPTO has not scrapped its Java applet.  By this I mean the Entrust Java applet whichchrome USPTO forces customers to use to authenticate their logins at Private PAIR and EFS-Web.  The most recent reminder of all of this is USPTO’s oddly worded “Third Notice”, an email alert on August 18, 2015 from the USPTO warning customers that time is running out for users of Chrome browsers.  In September of 2015 (that is, during the next month) Chrome will stop supporting Java, meaning that users of Chrome will no longer be able to log in at Private PAIR or EFS-Web.

Until now I had sort of thought of Chrome as a relative newcomer among web browsers, and I had sort of assumed that most people still use Firefox and Microsoft Internet Exploder.  Which got me wondering, how many USPTO customers use Chrome anyway?  Continue reading “USPTO can’t say it wasn’t warned about its Java applet problem”

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No outgoing correspondence from USPTO this week?

Over on the patent practitioner’s listserv, alert listserv member Judith Szepesi asked:

I usually get 1-2 things via eOffice Action every day.  I haven’t gotten any emails in the last week.  Not a single one.  Logging in, the last item on PAIR Outgoing Correspondence has a mail room date of August 11, 2015.  I don’t think I have had a break this long since I set up the eOffice Action emails.  Is it just me?

Continue reading “No outgoing correspondence from USPTO this week?”