Category: PCT

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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”

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Avoiding having to translate two documents into English

A question came in from a good friend:

A client from a non-US country wants to enter the United States at the end of the PCT which was filed in a non-English language. He is working on a CIP but won’t have it ready until another few months. He would like to try and avoid the cost of a double translation. Can you think of a way for him to enter into the US at the end of the 30 months with the non-English language version, and somehow avoid having to translate that application, and then in a few months when he has the CIP ready here he will file that in the US and translate that one into English. My concern is that without filing an English translation of the first application, is he able to get somehow a valid US filing date?

Here’s what I think the answer is. Continue reading “Avoiding having to translate two documents into English”

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Nice feature in ePCT – fee payments

There’s a nice new feature in ePCT.  It used to be that if you were to file a new PCT application in RO/IB, and if you were to say that you plan to pay by means of a credit card, that what would happen is later (some days later) you would receive an email message with a link to a web page inviting you to pay the fees.

Now the ePCT system takes care of everything all at once.  When you click “submit” to e-file the PCT application, and when you say you would like to pay the fee by credit card, then a new screen appears that permits you to type in the credit card number and other information.  You can finish the e-filing session with the knowledge that you have indeed taken care of the fee payment.

This is good for several reasons.

First, it saves you having to docket to check for the arrival of the several-days-later email to pay the fee.  (We estimate that every time we have to set and clear a docket, we incur an internal cost of something like $50.)

Second, it gets the fees into the RO’s hands sooner.  Which means that the search fee gets into the hands of the ISA sooner.  Which means the International Search Report and Written Opinion arrive sooner.

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Filing a PCT application at the USPTO with no US applicants?

A member of the PCT listserv asked:

On a US application filed yesterday with non-US inventors (no US assignee) and a PCT filing deadline of today, we filed through the USPTO and got a PCT application number, we just could not upload it as a PCT-Safe Zip file.   The USPTO PCT Helpline said it was okay to file through the USPTO, just a $240 transmittal charge.  We uploaded the PCT-101 request as a separate document.  Will this be enough to secure a PCT filing date?

The answer is “maybe yes”, depending on the detailed situation. Continue reading “Filing a PCT application at the USPTO with no US applicants?”

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Maximizing patent term (was “certified copy needed?”)

A member of the EFS-Web listserv, an email discussion group for patent practitioners, posed this question:

We filed a US continuation application claiming priority to a PCT application filed in the EP receiving office.  (The PCT application had no priority claim.)  We filed the application by the 12-month convention deadline at the client’s request.

I do not think we need to provide a certified copy of the PCT, but can anyone confirm?

The question as presented turns out to be easy to answer — no, if you don’t want to provide a certified copy, you could avoid having to do so.  But it would be at the cost of a year of patent term.  The real question is “how may I avoid flushing a year of patent term down the drain?” Continue reading “Maximizing patent term (was “certified copy needed?”)”