When you file a PCT application, of course one of the things that you will do is take steps so that you can view your PCT application in ePCT. Once the newly 
filed PCT application is visible to you in ePCT, then there is a Best Practice to be followed, namely proofreading the preview of the PCT publication. Continue reading “Best Practice when filing a PCT application – “pub preview””
Best Practice for getting a priority document to the IB?
A member of the PCT-L listserv recently asked:
For a PCT application filed with the RO/IB, what is the Best Practice for getting a certified copy of my priority document to the IB?
The Best Practice is to use WIPO’s Digital Access Service. Continue reading “Best Practice for getting a priority document to the IB?”
US PCT filers can soon pick Japan as ISA and IPEA
(Note the follow-up posting that this ISA choice is now available to US filers.)
Filers of PCT applications who file in RO/US will soon have the option to pick the Japanese Patent Office as their International Searching Authority and International Preliminary Examining Authority. Continue reading “US PCT filers can soon pick Japan as ISA and IPEA”
Revisions to Best Practice for filing a PCT application in RO/US
Yesterday I posted Best Practice for filing a PCT application in RO/US. Shortly thereafter, a very nice person at WIPO sent half a dozen suggestions for making the posting better. So I have revised the posting. Be sure to use the revised version as it is better.
Best Practice for filing a PCT application in RO/US
In this article I will describe the Best Practice for filing a Patent Cooperation Treaty patent application in the Receiving Office at the USPTO.
(Note on June 12, 2015 — a nice person at WIPO offered suggestions for improvement of this article, all of which were very helpful, so I have updated this article.)
Continue reading “Best Practice for filing a PCT application in RO/US”
What’s the Best Practice for 92bis changes?
One of many nice things about the PCT (Patent Cooperation Treaty) system is that you can do one-stop shopping for changes in the bibliographic data. (In a somewhat similar way, the Madrid Protocol and Hague Agreement systems provide one-stop shopping for assignments and owner address changes.) By filing a so-called Rule 92bis request, you can update the inventor list, the name of the applicant, and/or addresses and citizenships thereof.
When I say “one-stop shopping” I mean that you do the change once and it covers multiple countries or Offices around the world.
But there are better and worse ways to carry out your 92bis request, and that’s the point of this blog posting.
Continue reading “What’s the Best Practice for 92bis changes?”
A reminder of an AIA trap for the unwary – “checking the box”
The America Invents Act took effect on September 16, 2012 and on March 16, 2013. Well over two years ago. So we don’t have to keep worrying about it nowadays, right?
Wrong, very wrong. We have to worry about it now even more than ever.
Here’s one example for the practitioner who is asked by foreign counsel to enter the US national phase from a PCT application. Continue reading “A reminder of an AIA trap for the unwary – “checking the box””
Register now for AIPLA PCT Seminar in July
You will recall that last February I told you to save the date for the Nineteenth Annual AIPLA Patent Cooperation Treaty Seminars. Registration is now open for the Seminars:
- July 20 and 21 (Monday and Tuesday) in San Francisco
- July 23 and 24 (Thursday and Friday) in Alexandria, Virginia
The AIPLA PCT Seminars are the best way to learn about the PCT and to bring yourself up to date about recent changes and developments in the PCT.
Registration for the Seminar also entitles you to attend a webinar, at no additional charge, on July 14. The webinar is a PCT primer, providing an overview of the PCT system and the basics of filing a PCT application.
Continue reading “Register now for AIPLA PCT Seminar in July”
Sometimes the USPTO gets it right
What happens so often is that the USPTO gets things wrong about the PCT process. For example the USPTO seems so often to go out of its way to avoid giving any credit, let alone full faith and credit, to the work done by the International Searching Authority when it searches and examines a patent application. So here is a refreshing example of the USPTO getting it right.
A new category of walking-corpse US patents?
(Update: USPTO is doing a very customer-friendly thing about this, as I report here.)
One of the scariest things for a US patent practitioner is the thought of being held responsible for a patent that turns out to have been a “walking corpse”. A patent that everybody thought was a normal patent and it turns out that there is some defect that means it was never actually a patent at all.
My favorite category of “walking-corpse” patent had, until now, been the patent that was granted on a patent application in which the applicant made a non-publication request, and then did foreign filing, and failed to timely rescind the non-publication request. The rules say that such a patent application is deemed abandoned some 46 days after the foreign filing happened. But probably nobody involved at the time knew that the status of the application was “abandoned”. Not the Examiner, not the USPTO employee who cheerfully collected the Issue Fee and mailed out the ribbon copy of the granted patent. Least of all the practitioner who forgot about rescinding the non-pub request and who triumphantly handed the ribbon copy of the patent to the client. Likely as not, the first time this defect would get noticed is at litigation time.
Anyway until now that was my favorite example of a “walking corpse” US patent. But it looks like maybe there’s now a new category of walking-corpse US patents. Continue reading “A new category of walking-corpse US patents?”