Category: Patents

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Where to send a USPTO patent petition?

In the old days (meaning, before e-filing at the USPTO became possible), the practitioner who was filing a petition would simply drop the petition in the mail, directed to the USPTO generally.  Someone in the USPTO mail room would look at each petition, and would pick where exactly within the USPTO to direct the petition so that it might be considered and decided.

Then the Internet happened and a decade later, the USPTO reacted to the Internet by setting up EFS-Web.  In EFS-Web the burden of figuring out where exactly within USPTO a patent-related petition would be directed got shifted away from USPTO mail room personnel and onto the e-filer.  The choices from which the patent e-filer might pick include:

    • Petition for review by the Office of Petitions
    • Petition for review by the PCT legal office
    • Petition for review by the Technology Center SPRE

When you are e-filing a petition, how should you pick where to send your petition?

Continue reading “Where to send a USPTO patent petition?”

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A new category of walking-corpse US patents?

(Update:  USPTO is doing a very customer-friendly thing about this, as I report here.)

One of the scariest things for a US patent practitioner is the thought of being held responsible for a patent that turns out to have been a “walking corpse”. A patent that everybody thought was a normal patent and it turns out that there is some defect that means it was never actually a patent at all.

My favorite category of “walking-corpse” patent had, until now, been the patent that was granted on a patent application in which the applicant made a non-publication request, and then did foreign filing, and failed to timely rescind the non-publication request. The rules say that such a patent application is deemed abandoned some 46 days after the foreign filing happened. But probably nobody involved at the time knew that the status of the application was “abandoned”. Not the Examiner, not the USPTO employee who cheerfully collected the Issue Fee and mailed out the ribbon copy of the granted patent. Least of all the practitioner who forgot about rescinding the non-pub request and who triumphantly handed the ribbon copy of the patent to the client. Likely as not, the first time this defect would get noticed is at litigation time.

Anyway until now that was my favorite example of a “walking corpse” US patent. But it looks like maybe there’s now a new category of walking-corpse US patents.  Continue reading “A new category of walking-corpse US patents?”

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“Walk through time” at the USPTO

There’s a curious temporary display in the atrium at the USPTO.  Called “Walk through time”, it is a windingparis path with large printed labels on the floor, portraying various events in the history of the USPTO.  It starts with the founding of the patent office and proceeds through some sixty or so events to the present.  pct

My personal favorites are the 1887 event (the US joins the Paris Convention) and the 1970 event (the US joins the Patent Cooperation Treaty).

 

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Six-month-old PPH petition granted — coincidence?

Saturday, March 21, 2015 is the day that I blogged about a PPH petition that had been outstanding in the Office of Petitions since September 12, 2014.  I don’t know if it is sheer coincidence … but the Office of Petitions considered the petition on Monday, March 23 (and granted it).

So as of now our oldest not-yet-ruled-upon PPH petitions were filed November 5 and November 13.  This is still an unreasonable delay within the Office of Petitions, but not as bad as the six-month-plus delay in the case that just got its petition granted.

 

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Six months and counting …

We have a case in which we filed a PCT-PPH petition on September 12, 2014.  We are now into our seventh month of waiting for the Office of Petitions to rule on the petition.  I’ve blogged about this problem at the USPTO before, here and here and here and here.  It does not promote science and the useful arts to have PPH petitions sitting untouched for such a long time.  Nor does it serve the goals of the PCT-PPH programs to have petitions sitting untouched for such a long time.

Continue reading “Six months and counting …”

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Is it copending if you filed it on the day the parent issued?

[As noted in the comments below, the Court of Appeals for the Federal Circuit reversed.  Same-day filers are safe.]

I’ve always assumed that if I manage to get my continuation or divisional application filed on the very day that the parent application issues, that’s good enough.  The domestic benefit under 35 USC § 120 will work.  Right?

Alert reader David Berry drew my attention to a February 11, 2015 ruling by Judge Richard G. Andrews in the U.S. District Court for the District of Delaware in a summary judgment motion in the case of Immersion Corp. v. HTC Corp. civil action 12-259.  The ruling suggests that when the USPTO grants a patent, it does so at about 12:01 AM on the Tuesday, and that a would-be continuation or divisional application filed after 12:01 AM on that Tuesday would lack copendency under 35 USC § 120.

Continue reading “Is it copending if you filed it on the day the parent issued?”

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What it costs to prepare a US provisional patent application?

A potential client will sometimes ask:

what’s your fee for filing a provisional patent application?

or sometimes the question will be:

what does it cost to apply for a provisional patent?

Or, by far the worst telephone call to receive in this general category is the potential client who cheerfully explains that he or she has prepared a draft provisional patent application, that the subject matter is “simple” and so the document should not require very long to review, and can I please just “touch it up” and file it with the USPTO?  The caller makes clear that whatever bargain-basement price I would have charged to draft a provisional patent application, the caller expects me to quote a still smaller price to merely “touch up” the document.

When this happens, generally I politely refer the potential client elsewhere, but when pressed I will sometimes answer along these lines …

Continue reading “What it costs to prepare a US provisional patent application?”