Category: PCT

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.

Continue reading “USPTO needs to update its Foreign Filing License rule”

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”

Today I finished co-teaching a two-day seminar about the Patent Cooperation Treaty at John Marshall Law School.  I had the pleasure for the first time of serving on the dais with Matthias Reischle, Director and Head at WIPO.  This program was sponsored by the John Marshall Law School Center for Intellectual Property, Information and Privacy Law (“the Center”).

(Click on the photograph to see a larger copy of the photograph.)  From left, Josh Sarnoff of DePaul Law School;  Daryl Lim, Director of the Center; Matthias Reischle;  yours truly;  and Vangelis Economou, director of the JMLS Patent Clinic.

Cambodia deposited its instrument of accession to the PCT on September 8, 2016.  This event brings the number of PCT members to 151.

The Treaty will enter into force on December 8, 2016.

The two-letter code for Cambodia is KH.

The search fee for ISA/JP will increase today for US PCT filers.  For a US PCT filer whose PCT application is filed in English, the search fee was previously $1378.  Starting today, it will be $1530.

John Marshall Law School is sponsoring a PCT Seminar on Thursday and Friday, October 20-21, 2016.  From the brochure:

This two-day seminar offers an examination of current practice with regard to the PCT system for patent professionals.  A half-day session will focus on an overview of the PCT system, the most recent and future developments in the PCT system as well as covering some of the most important strategic decisions that need to be taken when using the PCT system.  This will be followed by a day and a half looking at a detailed analysis of the PCT system, covering best practices and sophisticated tips about the procedural aspects of the PCT.  It will cover the process from start to finish including the filing of the applications, preparing the international search, the preliminary examination, and eventually entering the national phase before designated Offices.  This course will also offer a platform for the participants to discuss more complex and unusual scenarios and to discuss particularly interesting real-live cases put forth by the instructors or by the attendees’ own experience.

The location is John Marshall Law School, 315 South Plymouth Court, Chicago, IL (map).

The presenters are Matthias Reischle, Deputy Director, PCT Legal Division, WIPO, and yours truly.

To learn more or to register, click here.

We remember those bad old days when DO/EO/US was taking a year and a half to get around to mailing a Filing Receipt in a newly filed entry into the US national phase.  The backlog of unattended-to US national-phase filings had gotten so bad that DO/EO/US had to set up a special processing queue for cases in which the applicant had filed a PCT-PPH petition.  The idea was that a case deserving of “special” status should not languish for a year or more just because DO/EO/US had fallen so far behind.

Within the past year or two DO/EO/US has managed to be much more prompt about this important task of mailing Filing Receipts.  And along with this improvement, DO/EO/US had dropped the special processing queue for cases in which the applicant had filed a PCT-PPH petition.

And indeed in recent months we have seen stretches of time during which many cases were receiving their Filing Receipts a mere two or three weeks after the date that the applicant has perfected the entry into the US national phase.

What’s a bit baffling, however, is to see that there is now more of a spread in the period of delay at DO/EO/US.  While a large plurality of cases recently do receive their Filing Receipts promptly (within two or three weeks), an ever-growing fraction of cases sit for some months, untouched by DO/EO/US.

For a case that was not going to get examined any time soon, this is perhaps not a big deal.  But for a case in which a Highway petition has been filed, the lack of attention by DO/EO/US goes against USPTO’s policy reasons for supporting the Patent Prosecution Highway in the first place.

What shines a bright light on this is the recent super improvement by the Office of Patent Petitions which, after falling terribly behind, has in recent months done much better in handling of Highway petitions.  A year ago it was commonplace to see Highway petitions that had languished for six or seven months untouched by the Office of Patent Petitions.  But nowadays the OPP gets kudos for granting Highway petitions in just two to four weeks.

So back to the promptness of DO/EO/US to mail Filing Receipts.  As I say, these days a large plurality of cases recently do receive their Filing Receipts promptly (within two or three weeks).  But we have cases with granted Highway petitions that still do not have a Filing Receipt despite having the national phase perfected as long ago as May 25 (about four months ago).

One wishes that the managers of DO/EO/US would generate a report from time to time that lists old cases that lack Filing Receipts, and that somebody would try to figure out why the old cases don’t get worked on.  Are the laggard cases all assigned to particular laggard workers, for example?  I assume that many workers in DO/EO/US work from home.  Are the laggard cases all assigned to people who work from home?