Ant-Like Persistence

Each year, July 1 is very often the date upon which PCT rules changes will take effect, and 2019 is no exception.  There is a rule change regarding PCT Demands that will come into force on July 1, 2019.

The single most important thing to keep in mind about this rule change will be the importance of making sure to get one’s Article 34 Amendment (or instructions to take into account one’s Article 19 Amendment) filed with the IPEA no later than the date upon which one hands in the Demand itself and the associated fees. Continue reading “Important PCT rule change effective July 1, 2019”

(Update:  A letter got sent on February 22, 2020 to the Commissioner for Patents at the USPTO, asking the RO/US to become a Depositing Office in the DAS system.  See blog post.  The Commissioner for Patents answered.  See blog post.)

(Updated to reflect that RO/EP, RO/GE, RO/IL and RO/NO joined the trendy, modern and up-to-date club.)

One of the important ways that a patent office can participate in the DAS program is as a Depositing Office.  This means that the Office makes applications which have been filed at that Office available to the DAS system so that other Offices can retrieve the applications.

A particular way that a patent office can participate in DAS is in its role as a Receiving Office.  The idea is that an applicant may have filed a PCT application in that Receiving Office, and may later find the need to claim priority from that PCT application with respect to some later-filed patent application.  When such a situation arises, the normal expectation of the applicant would be that of course the Receiving Office will be a Depositing Office in the DAS system.

Such a Receiving Office would, of course, deserve the accolade of being termed “trendy, modern, and up-to-date.”

Which then raises the natural question “which Receiving Offices are trendy, modern, and up-to-date?”  Here is the list of patent offices whose Receiving Offices are trendy, modern, and up-to-date:

• Australia
• Brazil
• Chile
• China
• Denmark
• Eurasian Patent Organization
• European Patent Office
• Finland
• Georgia
• India
• Israel
• Morocco
• Netherlands
• Norway
• Spain
• Sweden
• WIPO

One might then wonder, which Receiving Offices are not trendy, modern, and up-to-date?  And in particular, one might wonder, if we rank the Receiving Offices in order by the number of filings at those Offices, which of the top-ranked Receiving Offices are not yet trendy, modern, and up-to-date? Well, one need wonder no longer.  Here I provide the answer.

Here are the top-ranked Receiving Offices by number of PCT filings.  These five Receiving Offices, taken together, account for something like 85% of all PCT applications filed in the world.  Next to each of these five Receiving Offices I have indicated whether (as of April 2020) it has or has not become a Depositing Office in the DAS system:

1. RO/US (USPTO) – not trendy, modern, and up-to-date
2. RO/CN (China) – yes trendy, modern, and up-to-date
3. RO/JP (Japan) – not trendy, modern, and up-to-date
4. RO/EP (European Patent Office) – yes trendy, modern, and up-to-date
5. RO/KR (Korean Intellectual Property Office) – not trendy, modern, and up-to-date

Participation as a Depositing Office is clearly an action item for RO/US, RO/JP, and RO/KR.

Let’s hope that the USPTO, the JPO, and the KIPO will soon join the DAS system as Receiving Offices.

It is by now a well-known annual event for which I told you to save the date.  The patent firm Schwegman Lundberg Woessner hosts an all-day seminar on the Patent Cooperation Treaty.   This year it will be in San Jose.  Last year it was in Minneapolis.  The year before it was in San Jose.  This one-day PCT seminar is presented by yours truly.

But what I point out to the reader is the really remarkable thing, namely that the Schwegman firm, working together with the World Intellectual Property Organization as a co-sponsor, provides this event free of charge to the patent community. Continue reading “Register now for PCT Seminar in San Jose April 4”