Category: PCT

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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?”

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fuliginous

Wow.  If you want to learn a new word now and again, hang out with the folks in the PCT Listserv.  Here’s a PCT Listserv posting of earlier today by list member Jim Boff:

I think you have said it all.

  • The requirements of the US are seen by the rest of the world as replete in fuliginous obscurity.
  • The requirements of the rest of the world are seen in like respect by the US.
  • The rest of the world is not in total harmony and look upon each other in suspicion.
  • Patents are property and people get difficult about property.
  • If there was such a thing as a form of patent assignment that was agreed valid in all jurisdictions and that required minimal formalities to be valid everywhere that would be a wonderful thing and devoutly to be wished for.

But you mention notarisation?

If you want it simple there has to be compromise everywhere on formalities, in the US as well as outside the US.

Jim Boff

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Unexpectedly fast PCT-PPH decisions at USPTO

Note:  what seemed like an improvement at the USPTO regarding PPH petitions turned out to be illusory.  Please see a followup article about this.

There are two ways to pursue US patent protection from a PCT patent apoiplaplication:

  • entry into the US national phase, and
  • filing of a bypass continuation application,

and there are many factors which might influence a particular filer’s choice of one approach or the other.  Now there is yet another factor, namely the speed with which a PPH petition might get granted.  If you pick “US national phase”, your PPH petition will nowadays likely get decided in a few days rather than a few months.  As I will describe below, a couple of weeks ago we filed about fifty PCT-PPH petitions, and we figured we would have to wait the usual four to seven months for USPTO to decide them.  We were astonished when seven of these fifty PCT-PPH petitions got decided in less than three weeks.  It turns out there is an easy explanation for this happy result. Continue reading “Unexpectedly fast PCT-PPH decisions at USPTO”