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Oddity about making a patent application “special”

A couple of years ago I taught a webinar called Get Patents Fast!  The point of this webinar was to enumerate and compare and contrast the various initiatives at the USPTO for getting a patent fast.

Last week a colleague at a New England patent firm asked if she could get her patent application made “special” by filing a petition under 37 CFR § 1.102 showing that the invention would “contribute to the … conservation of energy resources.”  She’s right that Rule 102 says that you can do that.  But as it turns out, you can’t really do that, as I will explain.  Oddly, in a few months it may once again be possible to do that, as I will also explain. Continue reading “Oddity about making a patent application “special””

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Whither Accelerated Examination?

As I mentioned in a February 18, 2017 blog post, USPTO has proposed to scrap the Accelerated Exam (AE) program (see the January 12, 2017 Federal Register notice).  There’s an oddity about how the USPTO went about implementing AE in the first place that means that scrapping AE would have a peculiar consequence, namely to bring back three ways of making applications “special” that had been unavailable (from a practical point of view) for the past decade.  I will explain.  As best I can see, nobody at the USPTO, nor any of the handful of commenters in response to this Federal Register notice, has thought about this peculiarity. Continue reading “Whither Accelerated Examination?”

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Four seats left for Denver trademark roundtable

There are four seats left for the USPTO trademark roundtable in Denver on Friday, April 21.  This is a unique opportunity to talk face-to-face with important people from the trademark office at the USPTO, including:

  • Meryl Hershkowitz, Deputy Commissioner for Trademark Operations, and
  • Wendy Cohen, Interlocutory Attorney, Trademark Trial and Appeal Board.

You will also get to meet important people from the Denver regional patent office, including Molly Kocialski, the Director of the office.

For more information, see the USPTO web site page for the roundtable here.  Don’t get left out.  Register today.

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Please attend Meet the Bloggers XIII in Barcelona!

The place and time for Meet the Bloggers XIII is now set.  Perhaps the best non-INTA event ever devised by woman or man, MTB XIII will be held on Monday, May 22nd, 7:30 – 9:30 PM, at Xup Xup in Barcelona (map). Come and meet some of the best trademark attorneys in the world, and while you’re at it say hello to the sponsors of this year’s event.

To learn more or to RSVP, click here.

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What does TYFNIL mean?

Recently in the Design Listserv a Paris Convention question arose.  The question was, under Article 4 of the Paris Convention, could a design application claim priority from an earlier utility application?  It’s a good question and if you have any thoughts about this, I urge you to join that listserv and share your thoughts.

But what prompts this blog article is the initialism “TYFNIL”.  (It is not an acronym.)  A listserv member pointed out that even if the Office examining the design application were to find nothing wrong with such a priority claim, the owner of the design protection would never really know for sure where they stood until TYFNIL.  What does that mean?   Continue reading “What does TYFNIL mean?”

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USPTO wrongly bouncing inventor declarations

Over on the EFS-Web listserv (the email discussion group for patent filers at the USPTO) there was an interesting discussion recently.  A number of USPTO customers (frequent patent filers at the USPTO) were talking about USPTO’s bad habit of bouncing inventor declarations that have nothing wrong with them.

It would not be so bad if USPTO were to do its bouncing promptly after the inventor declaration is filed.  In that case, if indeed there were actually something wrong with the inventor declaration, it would be a realistic goal to round up a fresh signature from the inventor.

Instead, the USPTO waits until allowance to mail the “Notice Requiring Inventor’s Oath or Declaration” (Form PTOL-2306).  The Notice states that there is some real or imagined defect in the inventor declaration that was filed back when the patent application was filed in the first place.  In a very large percentage of cases, there is not actually anything wrong with the inventor declaration. Continue reading “USPTO wrongly bouncing inventor declarations”

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Past April Fool’s Day articles

Here are some of my past April Fool’s Day blog articles:

As for the second article (USPTO relocates its “contingency” EFS-Web server) what is particularly sad is that it should not have been an April Fool’s article at all.  As many have pointed out over the course of many years, there is an ongoing need for USPTO to relocate its contigency patent e-filing server to a geographic location distant from the main e-filing server.  There have been many system outages at the USPTO over the years in which both the main server and the “contingency” server were both out of service.  It is just common sense that the two servers should not be in the same building, connected to the Internet through the same single connection point, powered by the same source of electrical power.