Category: PCT

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What does TYFNIL mean?

Recently in the Design Listserv a Paris Convention question arose.  The question was, under Article 4 of the Paris Convention, could a design application claim priority from an earlier utility application?  It’s a good question and if you have any thoughts about this, I urge you to join that listserv and share your thoughts.

But what prompts this blog article is the initialism “TYFNIL”.  (It is not an acronym.)  A listserv member pointed out that even if the Office examining the design application were to find nothing wrong with such a priority claim, the owner of the design protection would never really know for sure where they stood until TYFNIL.  What does that mean?   Continue reading “What does TYFNIL mean?”

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USPTO wrongly bouncing inventor declarations

Over on the EFS-Web listserv (the email discussion group for patent filers at the USPTO) there was an interesting discussion recently.  A number of USPTO customers (frequent patent filers at the USPTO) were talking about USPTO’s bad habit of bouncing inventor declarations that have nothing wrong with them.

It would not be so bad if USPTO were to do its bouncing promptly after the inventor declaration is filed.  In that case, if indeed there were actually something wrong with the inventor declaration, it would be a realistic goal to round up a fresh signature from the inventor.

Instead, the USPTO waits until allowance to mail the “Notice Requiring Inventor’s Oath or Declaration” (Form PTOL-2306).  The Notice states that there is some real or imagined defect in the inventor declaration that was filed back when the patent application was filed in the first place.  In a very large percentage of cases, there is not actually anything wrong with the inventor declaration. Continue reading “USPTO wrongly bouncing inventor declarations”

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Time of day returns to normal for US filers filing at the International Bureau

Readers will recall my blog post of two weeks ago in which I described that an American filer would (for a limited time of two weeks) have an extra hour during which to file a same-day filing at the IB.  Well, now it’s back to normal.  Now the drop-dead time for e-filing (or fax filing) is the usual 4PM (Mountain Time).

So for your PCT filing at the RO/IB, or your direct filing of a Hague Agreement design application, or your payment of a renewal for a Madrid Protocol international trademark registration, or an Article 19 amendment, or a PCT Demand … it’s back to normal.

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ISA/RU search fee to increase on May 1

For a US filer who is filing a PCT application and who is picking the Russian patent office, the search fee will increase on May 1, 2017.  The search fee, presently $449, will increase to $482.

If you rank ISAs in order by the size of the search fees, the Russian patent office will still be the least expensive searching authority available to US filers after May 1, just as it is now.

The formal name of the Russian patent office is Federal Service for Intellectual Property but the nickname is Rospatent.  Which gives us an opportunity to brush up on our knowledge Cyrillic.  As you can see in the logo at the upper right, in Cyrillic the “P” is what we English speakers would voice as an “r”.  The “C” is what we would voice as an “s”.  The Π (like a Greek letter π) is what we would voice as a “p”.  And the “H” is what we would voice as an “n”.

Which brings me to a fun old classic mystery movie in which this Cyrillic H played a part.  In the movie, a handkerchief is found with an “H” embroidered on it.  This implicates a person whose name is pronounced starting with an “h”.  But a clever person in the movie realizes that the “H” might be sounded as an “n”, implicating a person with a Russian name.

The first person to post a comment identifying this movie will win a super spiffy digital voltmeter from Oppedahl Patent Law Firm LLC.

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Opportunities to learn about the Patent Cooperation Treaty

There are quite a few upcoming opportunities to learn about the Patent Cooperation Treaty:

  • March 13, 2017 in San Francisco, California
  • April 5-7, 2017 in Orlando, Florida
  • June 8, 2017 in Minneapolis, Minnesota
  • July 24-25, 2017 in Alexandria, Virginia
  • September 21-22, 2017 in Cary, North Carolina

March 13, 2017 in San Francisco, California.  This one-day program is sponsored by WIPO and by the PCT Learning Center.  For more information, or to sign up, click here.

April 5-7, 2017 in Orlando, Florida.  This program is two and a half days long.  The program, entitled Comprehensive PCT Practice, is sponsored by WIPO and by the Patent Resources Group.  For more information, or to sign up, click here.  I will be the presenter for this program.

June 8, 2017 in Minneapolis, Minnesota.  This program, sponsored by WIPO and by the Patent Resources Group, is Patent Administration: A Foundation for Success.  For more information, or to sign up, click here.  I will be the presenter for the one-day PCT class that is part of this program.

July 24-25, 2017 in Alexandria, Virginia.  This program is sponsored by WIPO and by the the American Intellectual Property Law Association.  I will be one of the presenters for this program.

September 21-22, 2017 in Cary, North Carolina.  This program is sponsored by WIPO and by the North Carolina Bar Association.  I will be the presenter for this program.

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Jordan joins the PCT

On March 9, Ambassador Saja Majali of Jordan deposited the Instrument of Accession to the Patent Cooperation Treaty with the International Bureau of WIPO. This means that the PCT will come into force for Jordan on June 9, 2017.

This brings to 152 the number of member States for the PCT.

The two-letter code for Jordan is “JO”.

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Filing at the International Bureau and Daylight Saving Time

It’s that time of year again.  The time of year when it is important to keep track of the fact that Daylight Saving Time is different in Switzerland from the way it is in the United States.  This is important because you might be in the US, and you might be e-filing (or fax-filing) some document with the International Bureau of WIPO. Continue reading “Filing at the International Bureau and Daylight Saving Time”

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Some PCT search fees will change today

As a reminder some PCT search fees will change today for US PCT filers.

The ISA/EP fee will drop 5.3%, to $1992.  As of today, for the first time in thirty-eight years, this will be cheaper than ISA/US (for large entities).

The ISA/KR fee will drop 5.4%, to $1114.  As before, the real bargain at ISA/KR is the cost of the second through nth inventions will still only cost a couple of hundred dollars each.

The ISA/JP fee will drop 10.7%, to $1372.

The ISA/IL fee will drop 2.8%, to $911.

For a filer that counts the search fee price as a big factor in the selection of searching authority, these fee changes leave roughly unchanged the ranking of searching authorities by cost.

For a filer that uses EFS-Web or ePCT as the mechanism for e-filing of a PCT application, you do not need to worry about accidentally paying the wrong fee, because the e-filing system will automatically quote the correct fee.

There are still many other factors which might influence an applicant’s selection of International Searching Authority, as I summarize here.

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Learn about PCT in LA on March 7

Gary Smith of the PCT Learning Center will be teaching about the Patent Cooperation Treaty in Los Angeles on Tuesday, March 7.  You can sign up for the morning part only (“PCT Boot Camp”) or the afternoon part only (“PCT Strategies Session”) or both (“The Essential PCT”).

To learn more, or to register, click here.