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?”

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?”)”

Last chance to attend AIPLA PCT Seminar

Tomorrow and Friday are you last chance to attend the Nineteenth Annual AIPLA PCT Seminar.  This will be at the Hilton in old town Alexandria.  Walk-in registrations are welcome.  See details here.

The previous Seminar, which took place this past Monday and Tuesday, was in San Francisco.  It went quite well.

USPTO gets it wrong on petitions to revive

We’ve had reason to review half a dozen cases in the past year in which, so far as we can see, the USPTO was completely wrong to dismiss a Petition to Revive.  In some cases the USPTO bounced the petition on the grounds that the statement that the delay was unintentional was not signed by the applicant, and in one case the USPTO bounced the petition on the grounds that the statement that the delay was unintentional was not signed by all of the applicants.  As I say, it appears the USPTO was completely wrong in its handling of the petitions to revive. Continue reading “USPTO gets it wrong on petitions to revive”

Someone changed the title of my PCT application?

A member of the PCT Listserv (which you should join) asked:

WIPO (or the ISA) changed the title of my PCT application. But I can’t work out when/where/how/why it was done. The A2 publication has one title (the one we gave it). The A3 publication has a slightly different title. Interestingly, the change narrowed the title in a similar way to the way the Written Opinion said that the claimed invention should be narrowed. Any suggestions?

Continue reading “Someone changed the title of my PCT application?”

Best Practices for docketing PCT

Here are a few thoughts about Best Practices for docketing and the Patent Cooperation Treaty.

(Thanks to alert reader Lynn F. McMiller who pointed out a typo in the article.  Lynn will be receiving a free copy of the Bodenhausen book.)

(By the way, if you have not already done so, I suggest you sign up for the Nineteenth Annual AIPLA PCT Seminar, which is a week and a half from now.  See this blog article for details.) Continue reading “Best Practices for docketing PCT”

Yet another reason to sign up for the AIPLA PCT Seminar later this month

There’s yet one more reason to sign up for the AIPLA PCT Seminar later this month.  (July 20-21 in San Francisco, July 23-24 in Alexandria, Virginia.)  If you sign up for the Seminar, this includes admission to a “primer” webinar on Tuesday, July 14.  The primer provides an introduction to the PCT system so that attendees are better prepared for the Seminar itself which is a bit more advanced.  You can see more information here.