Category: PCT

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US PCT filers get yet another option for International Searching Authority

Until now a US filer of a PCT application had the ability to choose from any of a list of seven International Searching Authorities — ISA/US (the USPTO’s contractors), ISA/EP (the European Patent Office), ISA/KR (the Korean patent office), ISA/AU (the Australian patent office), ISA/RU (the Russian patent office), ISA/IL (the Israeli patent office), and ISA/JP (the Japanese Patent Office).  Starting a week from now, on April 1, 2016, US filers will be able to choose from a longer list of eight International Searching Authorities.

Continue reading “US PCT filers get yet another option for International Searching Authority”

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Paying attention to Daylight Saving Time and RO/IB for the next two weeks

Most PCT filers know that there are always a minimum of two Receiving Offices (and sometimes more than two) available to any PCT applicant that is entitled to use the Patent Cooperation Treaty.  For example for a US-based PCT applicant, the ROs available are (at a minimum) at least RO/US and RO/IB.  And most PCT filers also know that there can sometimes be very good reasons to use RO/IB rather than RO/US.  Indeed there are some fact situations where it is tantamount to malpractice to fail to use RO/IB rather than RO/US.

Given all of this, it is very important to keep in mind that for the next two weeks, the drop-dead time of day for filing in the RO/IB will be different than it is for most of the year.

Normally the drop-dead time of day for filing in the RO/IB is 4:00 PM (for filers in the Mountain Time Zone).  That is, the time in Switzerland is eight hours different from the time in Denver.

But for the next two weeks, the drop-dead time of day for filing in the RO/IB will be 5:00 PM (for filers in the Mountain Time Zone).  Said differently, for the next two weeks you could file in the RO/IB an hour later than usual and still receive a same-day filing date.

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How to file PCT applications despite the USPTO’s massive system crash

Both of the EFS-Web servers (the main one and the “contingency” one) are crashed, and have been crashed since December 22.  This means that if you are going to file a PCT application in RO/US, you are stuck doing it by hand-carrying it on paper to the USPTO or running a paper application down to the post office.

So what’s the smart way to file your PCT application just now?

I am indebted to alert reader Rick Neifeld who reminded me that the smart way is to file in RO/IB.  And the smart way to file in RO/IB is of course to do it by means of ePCT.

The only thing to watch out for is the Foreign Filing License (FFL) situation.  You need to make sure either to already have an FFL or not need one.

The way to not need an FFL is to have an invention that was not made in the US.

The easy way to already have an FFL is to have filed a priority application in the USPTO more than six months in the past (so that you will have received an automatic FFL just because six months passed).  Or check your filing receipt on the priority application and hopefully it will say that you have an express FFL.

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USPTO chips away at auto-loading of bib data into Palm

When EFS-Web was new, the USPTO tried to be smart about bibliographic (bib) data.  USPTO designed Form PTO/SB/14 which was an enormous (one megabyte) PDF form.  The user could paste the bib data into the form.  This included things such as “who are the inventors” and “what are their residences” and “what is the priority claim” and “what domestic benefit claim is being made to a provisional application”.  The form was entitled “Application Data Sheet” (ADS).

This was a lot of work for the user, but USPTO dangled a reward.  If the user were to include this ADS in the initial EFS-Web submission, the USPTO would promise to auto-load all of the bib data into Palm.  From there it would propagate into PAIR and it would be used in preparing the official Filing Receipt.  I will now describe how this reward gradually changed into a hoax.   Continue reading “USPTO chips away at auto-loading of bib data into Palm”

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How USPTO could handle bib data changes better

(On December 21, USPTO released a new functionality called Corrected Web-based Application Data Sheet.  I have posted a followup blog article about this new functionality.)

Sometimes a filer needs to update bibliographic (bib) data in a pending patent application.  In a recent blog post I talked about how USPTO’s preferred way of receiving requests for bib data changes is ill-conceived and wastes the valuable time of USPTO personnel and valuable time of the filer.  In that blog post I described how USPTO’s rules actually permit the use of a “smart procedure” in which the filer only lists the items being changed.  Items that are not being changed could be omitted in this “smart procedure”.  But the USPTO actually recommends that the “smart procedure” not be followed.

Having said all of this, the constructive thing to do is to describe how the USPTO could handle bib data changes better.  Which I will now do.   Continue reading “How USPTO could handle bib data changes better”

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Disappointing news about PPH petitions

In September of 2015 I posted a blog article celebrating some exciting news about PPH petitions.  In that article (“Unexpectedly fast PCT-PPH decisions at USPTO“) I noted that we had gotten some cases onto the Patent Prosecution Highway a mere three weeks after filing the PCT-PPH petition.  This was very good news given that previously it was taking anywhere from four to seven months for the Office of Patent Petitions to get around to examining PPH petitions.  The letters communicating the three-week grants of Highway status came from a different part of the USPTO (not the Office of Patent Petitions) namely the Office of International Patent Legal Administration (the former Office of PCT Legal Administration).

At our firm we use PPH a lot.  We try to track our PPH cases pretty closely.  When we saw this good news in September of 2015, we figured USPTO had gotten a clue and had changed its workflow so that PCT-PPH petitions were going to OIPLA instead of going to OPP.  And OIPLA was deciding such petitions fairly promptly after filing.

Well, it turns out I was wrong about this.   Continue reading “Disappointing news about PPH petitions”

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Global Dossier public access now functioning

(See followup article here.)

Weeks and months ago USPTO delivered webinars and other outreClipboard01aches in which it demonstrated the soon-to-be-functioning Global Dossier public access system.  Today the system got released.  You can see it here.  Its chief advantage for US filers will be that it will provide English-language access to information in the Japanese, Korean, and Chinese patent office databases.

I will explain a bit about how it works and what you can do with it.   Continue reading “Global Dossier public access now functioning”

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How to receive PCT communications electronically?

A member of the PCT listserv asks:

A colleague recently filed a PCT application with the USPTO and we’ve been receiving the notifications (such as the “Notification of the International Application Number and of the International Filing Date”, Form PCT/RO/105) by hard copy.
Is it possible to receive electronic versions of notifications concerning a PCT application?  If yes, how do I set it up to do so?
The answer is “yes” as I will now explain.email

 
Continue reading “How to receive PCT communications electronically?”

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Is a PCT protest worthwhile?

A member of the PCT listserv posed a question earlier today:

I’d like to protest a lack of unity of invention finding from the ISA/US where the authorized officer has indicated that the first and second inventions share technical features known in the art at the time of the invention, and thus cannot be considered special technical features that would otherwise unify the groups.  The art used to support this finding is suspect and I will indicate the reasoning for my position in my protest.  I will also be paying the second search fee.

Has any listmate successfully protested such a finding from ISA/US?  If so, would you be willing to share your protest document?  I am debating how detailed to make my response.  How seriously can these protests be reviewed when they are free of charge?

I’ll talk a bit about PCT protests and I will try to answer this list member’s questions as best I can. Continue reading “Is a PCT protest worthwhile?”