Bluesky: @oppedahl.com
The normal timetable for publication of a PCT application is about 18 months after the priority date. But you can request that it be published early. What does this cost? How does one decide whether or not to make such a request? Continue reading “Requesting early PCT publication”
US national phase entries in Patentcenter are assigned from a block of application numbers starting at 15/733,001. Our firm was the third ever to file a 371 case in Patentcenter, receiving application number 15/733,003.
By the end of 2019, there had been fifteen 371 cases filed. My firm had filed seven of those cases. Yes my firm had done about half of all of the US national-phase work in Patentcenter from the beginnings of alpha test until the end of 2019.
By now, with Patentcenter opening up for general use, there has been an uptick in national-phase filings in Patentcenter. Twenty of them have been filed just in the past eight days.
One of the reasons why filers need to start learning to use ePCT (if they have not done so already) is that some day PCT-SAFE will be gone. Yesterday, PCT-SAFE took one more step towards oblivion. Continue reading “PCT-SAFE — one more step towards oblivion”
Hello faithful readers. On March 30 WIPO announced that it was ceasing the mailing of paper relating to PCT applications due to the work-from-home challenges from Covid-19. On that day I announced that I would be presenting a webinar on how to become paperless with PCT. The webinar took place. There was a lot of very helpful audience participation and I think the webinar went well as a consequence.
You can download the slides here and you can view a recording of the webinar here.
Please post comments below.
(Followup: You can download the presentation slides and you can view a recording of the webinar. For more information see this blog article.)
Many readers of this blog are already set up to be paperless in all of their PCT activities. This blog article is directed specifically to those who had not, until now, gotten set up to be paperless with PCT. Such filers are affected by this announcement today from WIPO:
Due to the effects of the COVID-19 pandemic on the operations of the International Bureau and of postal systems worldwide, the International Bureau, also in its function as receiving Office, has suspended the sending of PCT documents (e.g. PCT Forms, letters) on paper.
If you are a filer who has not, until now, gotten set up to be paperless with PCT, then I strongly urge you to attend two free webinars which will take place on Wednesday, April 1 and Thursday, April 2. In these webinars, you will:
In your existing and pending PCT applications, maybe you have not already provided an email address which WIPO and the International Searching Authority and the International Preliminary Examining Authority can use to send you correspondence electronically rather than on paper. In this webinar, learn how to provide such an email address to WIPO for this purpose for your existing and pending PCT applications.
The ePCT system has a function that is similar to Private PAIR in that it permits you to see the content and status of your pending PCT applications even if they have not yet been published, just as Private PAIR lets you see the content and status of your pending US application. In this webinar, learn how to gain access to your pending PCT applications in ePCT. In other words, learn how to use the feature of ePCT that is similar to Private PAIR with your existing and pending PCT applications.
When you file a new PCT application tomorrow or next week, you simply must file it in such a way that you will be able to see it in the part of ePCT that is similar to Private PAIR. In this webinar, learn what you need to do when you are filing a new PCT application so that you will be able to see it in the part of ePCT that is similar to Private PAIR.
Going forward, you absolutely need to not send anything on paper to WIPO. In this webinar, learn how to use the DAS system to send electronic certified copies of priority applications to WIPO (instead of physical certified copies). Learn how to use ePCT to send other communications to WIPO. Learn the difference between “ePCT actions” and “ePCT uploads” and learn which is better for you to use.
Please understand that the Part-1 webinar is an absolute prerequisite for the Part-2 webinar. You absolutely must attend Part 1 if you are going to attend Part 2.
Your presenter is Carl Oppedahl. Carl has lectured frequently about Best Practices for e-filing of PCT applications.
On March 8 I blogged that US filers filing documents at the International Bureau needed to pay extra close attention to what time it is in Switzerland. The reason is that in the US, Daylight Saving Time happened on March 8. But did not happen on that day in Switzerland. This meant that for the past three weeks, a US-based filer in (for example) the Mountain Time zone would be able to e-file in the IB as late as 5PM and still get a same-day filing date. This differed from the usual drop-dead time of 4PM.
Today (March 29, 2020) is the day that Daylight Saving Time happens in Switzerland. Continue reading “Time of day at RO/IB returns to normal for US filers”
It’s that time of year again. The time of year when it is important to keep track of the fact that Daylight Saving Time is different in Switzerland from the way it is in the United States. This is important because you might be in the US, and you might be e-filing (or fax-filing) some document with the International Bureau of WIPO. Continue reading “Filing at the International Bureau and Daylight Saving Time”
(Update prompted by commenter Brooke: Yes the USPTO did what the Twenty-One Patent Practitioners asked. The did walk back the scary Federal Register notice. You can read about it here.)
On January 30, 2020 the USPTO published a Notice of Proposed Rulemaking to fix what it thinks is a problem with its Foreign Filing License rules, 37 CFR § 5.11 et seq.
The background to all of this is that in the spring of 2016, WIPO announced that soon its ePCT system would be available as a way to generate ZIP files for use in filing PCT applications in EFS-Web (at RO/US). Shortly after WIPO announced this imminent new feature of ePCT, on May 6, 2016 the USPTO published a Federal Register notice giving very scary warnings to patent practitioners about the use of the ePCT system to generate such ZIP files. The May 6, 2016 Federal Register notice had the unfortunate effect of scaring many US patent practitioners away from making any use at all of the ePCT system.
My best guess is that nobody will file any comment suggesting any change in the wording of the proposed rule change.
The main problem that needs fixing, I suggest, is not so much the wording of the FFL rules themselves, but rather the fact that this Federal Register notice dated May 6, 2016 has been dangling in front of US patent practitioners for more than three years now, continuing to give its very scary warnings about the use of the ePCT system in connection with filing PCT applications in EFS-Web. The main problem that needs fixing is that when the USPTO promulgates its new FFL rules some time after March 30, 2020, as it nearly surely will, USPTO needs to expressly walk back the May 6, 2016 Federal Register notice. The opportunity to do this will present itself when the USPTO publishes its Federal Register notice promulgating the Final Rule.
On February 8, a group of twenty-one patent practitioners filed a comment in this proceeding. You can see it here. A main point in that comment is to remind the USPTO of the need for this express walk-back of the May 6, 2016 FR notice.
A second point made in the comment is to urge the USPTO to make its procedure for updating of bibliographic data in pending US patent applications more user-friendly, for example along the lines of the Rule 92bis “action” in ePCT.
The comment period closes on March 30, 2020. My hope is that readers will file their own comments to the USPTO’s rulemaking proceeding, which you can do here. One easy way to comment, if you find yourself in agreement with the twenty-one patent practitioners, is simply to file a comment adopting the recommendations of that comment.
You might wonder which PCT Receiving Offices get selected most often by PCT filers. For many years the top Receiving Office was consistently RO/US (the USPTO). In 2019 this changed. Continue reading “Which Receiving Offices get picked most often?”
If you are going to try to get a US patent from a PCT application, there are two possible paths — US national phase entry (also called “a 371 case”), and the filing of a bypass continuation. How does this choice affect how long you have to wait to get a Filing Receipt? If you pick the bypass route, the work gets done by the same folks who handle other ordinary patent applications. It is OPAP (Office of Patent Application Processing). These days OPAP often mails a Filing Receipt very promptly. On the other hand, if you pick the national-phase-entry route, the work gets done by DO/EO/US. And this office often takes a very long time to mail a Filing Receipt. But some people have figured out how to get a very prompt Filing Receipt from DO/EO/US. It is with some reluctance that I will now reveal how they do it. Continue reading “How some people get prompt Filing Receipts from DO/EO/US”