As a reminder, many PCT searching authorities will have fee changes taking effect today. You can read about them in my blog posting from a month ago.
Searching Authority fee changes effective January 1, 2017
The fees payable in US dollars for the services of various International Searching Authorities will change on January 1, 2017. The following table lists the ISAs that are available to applicants filing in RO/US, ranked in descending order of cost for the first invention.
| before January 1, 2017 US$ | effective January 1, 2017 US$ | second through nth inventions | approximate US$ | |
| ISA/EP | 2097 | 2103 | € 1875 | 1985 |
| ISA/US (large entity) | 2080 | 2080 | US$ 2080 | 2080 |
| ISA/AU | 1674 | 1688 | AU$ 2200 | 1637 |
| ISA/SG | 1578 | 1641 | SG$ 2240 | 1567 |
| ISA/JP | 1530 | 1536 | ¥ 126000 | 1115 |
| ISA/KR | 1120 | 1177 | ₩ 225000 | 191 |
| ISA/US (small entity) | 1040 | 1040 | US$ 1040 | 1040 |
| ISA/IL | 912 | 938 | ₪ 3529 | 911 |
| ISA/US (micro entity) | 520 | 520 | US$ 520 | 520 |
| ISA/RU | 420 | 449 | руб 28000 | 433 |
Continue reading “Searching Authority fee changes effective January 1, 2017”
ISA/US work product gets you on the Highway in the USPTO?
This email came in today from someone (let’s call him “PY”) asking about PCT-PPH:
I watched your 2011 Youtube video on this subject and found it very useful. Thank you for sharing your expertise.
I have a question: If the favorable written opinion is from the USPTO in the PCT international phase, can you still use the PCT-PPH in a patent application pending in the USPTO?
PY’s question is actually a very smart question. First I will explain why this is a very smart question, and then I will offer a practical answer to the question.
Continue reading “ISA/US work product gets you on the Highway in the USPTO?”
WIPO’s PCT distance learning course
WIPO offers a distance learning course called Introduction to the Patent Cooperation Treaty. The course is free of charge. My suggestion is that any person who is involved in providing services to clients relating to the PCT ought to take this course, pass the quizzes, and obtain the certificate of completion. My suggestion extends to patent practitioners, paralegals, and administrative assistants. I took the course just today and here is my certificate of completion.
To learn more or to register for the course, click here. You can see more information about the course below. Continue reading “WIPO’s PCT distance learning course”
Speaking on PCT today in Boulder
I’ll be speaking today with a 2016 PCT update. This is for the Boulder County Bar Association. It is at noon, at the offices of Lathrop & Gage, 4845 Pearl East Circle, Boulder, CO 80301. (map)
Topics include Best Practices for carrying out e-filing, filing Demands, making changes in bibliographic data, and picking a Searching Authority.
You can register here.
Midnight at WIPO returns to normal
A week ago I blogged that filers filing things at WIPO would have an extra hour to get a same-day filing date. As of a week ago, you could file as late as 5 PM Mountain Time and still get a same-day filing date.
Now today things return to normal. To get a same-day filing date at WIPO, you will need to file by 4 PM.
USPTO needs to accept “due care” restoration requests
The USPTO needs to be willing to consider requests for the restoration of the right of priority based upon the “due care” standard. This will help US filers who missed the 12-month priority period, and whose foreign-filing plans include the European Patent Office or any of twenty-eight other patent offices that apply the “due care” standard.
US practitioners (including yours truly) have been asking USPTO to make this change for several years now. in January of 2015, AIPLA asked USPTO make this change. It is now October of 2016 and USPTO has still not made this change. It is hoped that this blog article will serve as a reminder to the USPTO that this change is needed. I will explain.
Continue reading “USPTO needs to accept “due care” restoration requests”
For the next week, an extra hour available for WIPO filings
Experienced filers in the Patent Cooperation Treaty, Madrid Protocol, and Hague Agreement systems (utility patents, trademarks, and industrial designs) know that it is important to keep always in mind when midnight will arrive in Geneva, where WIPO is located.
For a PCT filer, this matters because to get a same-day filing date, a PCT application being filed in RO/IB will need to be filed by 4 PM Mountain Time. The same is true for filing an Article 19 amendment. The same is true if you are using ePCT to file a Demand and Article 34 amendment.
For a Madrid filer, this matters among other things for the payment of decade renewal fees.
For a Hague filer, this matters for the the filing of an international design application at the IB.
The point of today’s post is that starting today, and for the next week, you get an extra hour to get a same-day filing date. The reason is that Europe and the US carry out their daylight saving time transitions on different days that are a week apart.
This means that you could file as late as 5 PM Mountain Time (instead of the usual 4 PM) and still get a same-day filing date.
Things will return to normal a week from now, on November 6, 2016.
USPTO needs to update its Foreign Filing License rule
The USPTO has known for a couple of years now that it needed to update its rule (37 CFR § 5.15) that spells out what you can and cannot do when you have a Foreign Filing License. Things came to a head in May of 2016 and one would have hoped that USPTO would have taken action at that time. Even now in October 2016, USPTO has not taken action. This blog article will hopefully serve as a reminder to USPTO that the update continues to be needed. What is needed is an update to the rule making clear that a PCT filer can use ePCT to generate a PCT Request for e-filing in EFS-Web. I will explain.
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What it’s like if your country joins the PCT
The other day I was teaching the international-filing session of the AIPLA’s twentieth annual Patent Prosecution Boot Camp. (By the way I highly recommend this boot camp for anyone who is just getting started in patent prosecution.) One of the 110 or so attendees at the boot camp was a very nice fellow named Emilio Berkenwald who is with a patent firm in Argentina. Well, I did what I always do when I meet someone from Argentina — I said I sure hoped his country would soon join the Patent Cooperation Treaty!
This reminded me, however, of the perspective that a patent practitioner might have when contemplating one’s country possibly joining the PCT. The perspective might not be completely favorable, as I will discuss.
Continue reading “What it’s like if your country joins the PCT”