Category: PCT

(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”

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.