Category: PCT

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.

Continue reading “Searching Authority fee changes effective January 1, 2017”

This email came in today from someone (let’s call him “PY”) asking about PCT-PPH:

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 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”

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.

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”

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.