Patents – Page 95 – Ant-Like Persistence

July 31, 2015

Maximizing patent term (was “certified copy needed?”)

A member of the EFS-Web listserv, an email discussion group for patent practitioners, posed this question:

We filed a US continuation application claiming priority to a PCT application filed in the EP receiving office. (The PCT application had no priority claim.) We filed the application by the 12-month convention deadline at the client’s request.

I do not think we need to provide a certified copy of the PCT, but can anyone confirm?

The question as presented turns out to be easy to answer — no, if you don’t want to provide a certified copy, you could avoid having to do so. But it would be at the cost of a year of patent term. The real question is “how may I avoid flushing a year of patent term down the drain?” Continue reading “Maximizing patent term (was “certified copy needed?”)”

July 24, 2015

Yet another kind of “walking corpse” US patent

(This article is a duplicate of a previous article.)

July 24, 2015

“Checking the box” now being litigated

Every time we file a US patent application we worry about getting the wrong answer when we figure out whether or not to “check the box”:

For anyone who has suppressed their memory of this unpleasantness, recall that you, the practitioner, are required to take a position on whether the correct law for the Examiner to use in deciding what is patentable and what is not patentable is the “old law” or the “new law”. And it is a certainty that ten years from now when your patent is being tested in litigation, the adversary will try to convince the judge and the jury that you told the USPTO the wrong answer on this point.

Alert reader Wayne Keown has pointed out that it did not take ten years. I learned from Wayne that there is now a pending federal court case in which an accused infringer has alleged that a patent applicant got the wrong answer on “checking the box.”

Continue reading ““Checking the box” now being litigated”

July 23, 2015

USPTO being less slow in deciding PPH petitions?

In our office we track our PPH cases pretty closely. Through most of 2014 and most of 2015, we had been seeing delays averaging six months. It was taking the USPTO an average of six months to get around to deciding whether to grant or dismiss a PPH petition. I blogged about this problem here and here and here and here and here. I faxed a letter to Director Lee about this on April 24. One or two recent data points suggest that maybe USPTO is being less slow about this. Continue reading “USPTO being less slow in deciding PPH petitions?”

July 22, 2015

EPAS gets smarter

In the old days it was not easy to know whether the recordation of an assignment against a PCT application number would count in Assignments On The Web (AOTW) as an assignment against the US national phase of that same PCT application number. But now EPAS (the electronic patent assignment system) seems to be smarter about this.

Continue reading “EPAS gets smarter”

July 22, 2015

Last chance to attend AIPLA PCT Seminar

Tomorrow and Friday are you last chance to attend the Nineteenth Annual AIPLA PCT Seminar. This will be at the Hilton in old town Alexandria. Walk-in registrations are welcome. See details here.

The previous Seminar, which took place this past Monday and Tuesday, was in San Francisco. It went quite well.

July 14, 2015

When is Private PAIR not Private PAIR?

When is Private PAIR not Private PAIR? Or, to rephrase the question, what’s wrong with this picture?

Continue reading “When is Private PAIR not Private PAIR?”

July 9, 2015

USPTO gets it wrong on petitions to revive

We’ve had reason to review half a dozen cases in the past year in which, so far as we can see, the USPTO was completely wrong to dismiss a Petition to Revive. In some cases the USPTO bounced the petition on the grounds that the statement that the delay was unintentional was not signed by the applicant, and in one case the USPTO bounced the petition on the grounds that the statement that the delay was unintentional was not signed by all of the applicants. As I say, it appears the USPTO was completely wrong in its handling of the petitions to revive. Continue reading “USPTO gets it wrong on petitions to revive”

July 9, 2015

Someone changed the title of my PCT application?

A member of the PCT Listserv (which you should join) asked:

WIPO (or the ISA) changed the title of my PCT application. But I can’t work out when/where/how/why it was done. The A2 publication has one title (the one we gave it). The A3 publication has a slightly different title. Interestingly, the change narrowed the title in a similar way to the way the Written Opinion said that the claimed invention should be narrowed. Any suggestions?

Continue reading “Someone changed the title of my PCT application?”

July 7, 2015

Best Practices for docketing PCT

Here are a few thoughts about Best Practices for docketing and the Patent Cooperation Treaty.

(Thanks to alert reader Lynn F. McMiller who pointed out a typo in the article. Lynn will be receiving a free copy of the Bodenhausen book.)

(By the way, if you have not already done so, I suggest you sign up for the Nineteenth Annual AIPLA PCT Seminar, which is a week and a half from now. See this blog article for details.) Continue reading “Best Practices for docketing PCT”