Bluesky: @oppedahl.com
WIPO provides a very nice statistics lookup tool on its web site. I used that tool to make this pie chart showing the International Searching Authorities that were chosen in 2018 by filers in RO/US. Continue reading “Which ISAs do US filers choose?”
For US filers, many International Searching Authority fees will change in the next few weeks. Continue reading “Many ISA fees changing in a few weeks”
ROROP is Restoration of the Right of Priority. Continue reading “What is ROROP?”
A loyal reader asks:
If we have a PCT application filed in a receiving office other than the USPTO, will the USPTO record an assignment against that PCT application in advance of US national phase entry?
For example: For PCT/CN2019/123456, I have an executed English language assignment. If I file it via EPAS with the CN PCT number, will the USPTO record it?
The USPTO will record any document affecting title with respect to any US patent application. And any PCT application that designates the US counts as a US patent application (35 USC § 363) regardless of whether or not the US national phase has been entered. From this it follows automatically that the USPTO will record any document affecting title with respect to any PCT application that designates the US. (Socrates is a man, all men are mortal, therefore Socrates is mortal, that kind of thing.) You get the same answer to this question no matter which Receiving Office happens to have been selected by the filer. And it is the same answer regardless of whether the US national phase has or has not been entered. Such a recording may be carried out before the US national phase has been entered, and may be carried out even if the US national phase entry never actually happens. Such a recording may be carried out even after the international phase has ended (in other words, it can happen after the end of the 30-month period).
Actually nobody at the USPTO, no computer system at the USPTO, ever actually checks to see whether the PCT application actually designates the US. Thus actual observed behavior is that the USPTO will record any document affecting title with respect to any PCT application no matter whether or not it designates the US.
And of course the recordation is free of charge — no government fee.
And of course anyone can carry out the recordation — there is no requirement that the filer be a registered practitioner or have an address in the US.
Which then brings us to 35 USC § 261, which reminds that it is a Best Practice (indeed almost malpractice avoidance) to record any assignment within three months of its date of execution. So for example if a PCT application (designating the US) were to be assigned, it would be a Best Practice to record it at the USPTO within three months. This would be the case regardless of the Receiving Office in which it had been filed.
The alert reader might wonder, if we record against the PCT application number, and later enter the US national phase, will the recordation automatically cover the US application number? You can see the answer here.
The Korean Intellectual Property Office has quietly rolled out several very nice features in its ISA and IPEA service. PCT filers who pick ISA/KR or IPEA/KR will want to familiarize themselves with these very nice features. Continue reading “Making smart use of ISA/KR and IPEA/KR”
I still vividly recall the first time a hotel annoyed me by charging a package fee. It was a Hyatt hotel in downtown Chicago; I was attending a professional meeting about twenty years ago. I had arranged for some courier package to be sent to me, and I had to pay a $15 ransom to get the package. Continue reading “Amazon lockers in hotels”
(Updated June 25 to correct the list of presenters.)
The twenty-third annual AIPLA PCT Seminar will take place just a month from now, on Monday and Tuesday, July 22 and 23, 2019. Yours truly will be among the presenters. Continue reading “AIPLA PCT Seminar – July 22-23”
One question that comes up often when I am teaching a PCT class is “how do I send money to ISA/KR?” The usual way that this question comes up is that you might select ISA/KR and then receive an Invitation to pay additional fees (“ITPAF”). This blog article describes a quite easy and inexpensive way to send money to ISA/KR. Continue reading “How to send money to ISA/KR or IPEA/KR”
If you have not already done so, you should of course subscribe to the PCT Newsletter published by WIPO. (To sign up, click here.) The PCT Newsletter comes out monthly and it is very for anyone who uses the PCT. The newsletters have several kinds of very helpful information. For example …
Upcoming PCT Seminars. Each issue has a calendar of upcoming PCT Seminars, and this lets you plan ahead for your PCT training opportunities. As you can see in the current issue, I will be teaching about PCT several times in the next few months, including:
Practical Advice. A particularly helpful section of each PCT Newsletter is the Practical Advice column. This column will pick some topic in PCT practice and will discuss it in depth, often pointing out a way to be really smart about some step in the PCT process, or a trap for the unwary.
The current issue has a Practical Advice column entitled Possible implications of submitting informal drawings when filing the international application which was prompted by my blog article Filing informal drawings in a PCT application. The Practical Advice column is written better than what I wrote! The overall tone of the column is nicer and more friendly to the reader than what I wrote, and the column mentions the ePCT preview function which I did not think to mention.
WIPO also provides a very helpful search function to look up past Practical Advice articles.
The main point here is that if you have not already done so you should subscribe to WIPO’s PCT Newsletter.
The Twentieth Annual Patent Prosecution Boot Camp is underway just now in Philadelphia. I have the honor to serve on a faculty with thirty-six other extremely experienced practitioners who spend their own money for air travel and hotels, and of course they take a hit on their professional billings for a couple of travel days as well as the teaching day. Decades ago, when I had the good fortune that my employer paid for it, I attended a similar seminar organized by the Practicing Law Institute. And as I sat there in the Roosevelt Hotel in Manhattan those decades ago I lacked even a bit of a clue as to the economic hit being taken by astonishing generosity of the faculty members. I learned so much, and even now from time to time I make use of this or that nugget of practitioner wisdom that someone passed along during that seminar, so many years ago. As just one example if I manage now to draft a decent patent claim, the earliest credit goes to Evelyn Sommer (1925-2016), who taught one of the small-group claim-drafting classes at that seminar.
The only thing one can do is to try, of course, to pay it forward as best we can, and I expect that is exactly why the thirty-six other faculty members are there just like me.
The Boot Camp started yesterday morning and will finish tomorrow. I am headed to Philadelphia now, and my segment (yeah, take a guess, it is about the Patent Cooperation Treaty!) will be tomorrow.
Who taught you how to draft a patent claim? Will you give that person some credit in a comment below?