Category: PCT

For more than three years now, there has been an urgent need for USPTO to fix a problem with its FFL rules, 37 CFR § 5.11 et seq.  See my blog article USPTO needs to update its Foreign Filing License rule (October 29, 2016).  After three years of being repeatedly reminded of this, USPTO has done the right thing and has published a proposed revision to its FFL rules.  You can read about it here:

Facilitating the Use of WIPO’s ePCT System To Prepare International Applications for Filing With the United States Receiving Office, 85 FR 5362, January 30, 2020.

Comments are due by March 30.  Twenty-one patent practitioners filed this comment. 

Readers will recall my blog article about “Super Patents” and how to get them.  The idea is to file a PCT application and be fortunate enough that it gets accepted into the Collaborative Search and Examination (“CS&E”) pilot program.

This is a pilot program created by the five biggest patent offices (China, Europe, Japan, Korea, US) in which an applicant gets to have its claims searched and examined by all five patent offices.  The pilot program began about a year and a half ago and will wrap up in 2020.  

The way that the pilot program was set up, each of the five Offices was willing to take on the role of ISA for purposes of CS&E in one hundred PCT applications.  Doing the math, this means that all told, five hundred PCT applicants would be so lucky as to get their applications into this program.

Each Office, in its role as ISA, was thus necessarily keeping track of the number of PCT applications that it had accepted into the CS&E program.  Each Office would stop accepting new cases once it hit the limit of one hundred.

One of the offices hit its limit of one hundred a couple of weeks ago, and another office hit its limit just yesterday.  Which raises the natural question, right now in January of 2020, how many slots are still open?  I’ll tell you. Continue reading “Only 103 “Super Patent” slots remaining out of 500″

The PCT enters into force today for Samoa. 

Samoa already belongs to Madrid Protocol.  The Hague Agreement also enters into force for Samoa today.  Samoa has thus achieved the trifecta for international filing mechanisms.

The two-letter code for Samoa is “WS”.

Update:  The book is now finalized and you can see it here and here.

I’m working on a new book.  It’s entitled Oppedahl on PCT Forms and PCT Docketing.  Right now it is in what I might term beta testing.  The book is version 0.8.  I am providing copies of the book to some folks free of charge in the hopes that they will take a look at the book and maybe make suggestions or corrections.  Then I will finalize the book and release it for general sale. Continue reading “New book: PCT Forms and PCT Docketing”

Here I offer the slides from today’s PCT Update.  Slide 8 talks about the July 1, 2019 rules change which I covered in this blog article.

 

(Update:  three years later it seems the DO/EO/US people need to be reminded about PCT Declaration Number 4.  See blog article.)

I am providing some training material free of charge to the USPTO.  The training material, which relates to PCT Declaration Number 4 under PCT Rule 4.17, is prompted by a mistake that a nameless person at the USPTO made in one of our cases today.  Continue reading “Training material for the USPTO”

(You can see the slides here.)

(Updated to include some of the topics.)

It has just now been announced that in just about 24 hours, Matthias Reischle-Park of WIPO will deliver a free-of-charge webinar entitled:

The PCT in 2019: end of the year update

I have learned informally what some of the topics will be:

• Rule changes (in force and coming next year)
• color drawings
• best ways to contact the IB without relying on fax
• collaborative search
• WIPO IP Portal

I gather it will last about an hour.  My guess is that if you are a PCT enthusiast or power user, you should attend.  I plan to attend.

To register for the webinar, click here.

Readers will recall my article about Super Patents.  If you want to try to get a Super Patent, you have to file a PCT application in one of the participating Receiving Offices and you have to select one of the participating International Searching Authorities (ISAs) and you have to file a form requesting acceptance into the Collaborative Search & Examination (CS&A) pilot program.  And you have to get incredibly lucky to get one of the very small number of slots open for applicants in this pilot program.

Which raises the very interesting question — if you do all of these things, how do you find out if you got accepted into the pilot program?  How do you find out whether your PCT application will receive an International Search Report and Written Opinion that resulted from the collaborative effort of five International Searching Authorities?  

Just now I was delighted to learn that one of our firm’s clients got one of the small number of coveted slots in CS&E.  But how did we learn this good news?  How, as a general matter, does one learn that one has been accepted into this pilot program?  Maybe you already knew the answer, but I did not.  I was astonished at the answer. Continue reading “How you learn that your case has been accepted into Collaborative Search & Examination?”

Every two years, WIPO surveys its users.  WIPO’s goal is to help determine which areas of the PCT services provided by the International Bureau could be improved.  If you would like to make sure that you receive this year’s questionnaire when WIPO has it ready, follow the instructions in this article from the November 2019 PCT Newsletter.