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How to change bib data at the USPTO

(After I blogged on November 22 about how USPTO could do better in receiving updated bib data, on December 21 USPTO announced a new system for receiving updated bib data.  Please see my blog article about USPTO’s new system.)

About once a week in our office we find the need to update, change, or add bibliographic (bib) data in a pending patent application at the USPTO.  In general what we find is that the USPTO does not follow its own rules for such changes.  The USPTO’s procedures are ill-conceived, making poor use of the time of applicant and Office personnel alike.  In a later blog post I will describe what USPTO should do instead.  But for this blog post I will detail what the USPTO rules actually say about how to accomplish bib data changes, in the hope that this might be helpful to others.   Continue reading “How to change bib data at the USPTO”

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Disappointing news about PPH petitions

In September of 2015 I posted a blog article celebrating some exciting news about PPH petitions.  In that article (“Unexpectedly fast PCT-PPH decisions at USPTO“) I noted that we had gotten some cases onto the Patent Prosecution Highway a mere three weeks after filing the PCT-PPH petition.  This was very good news given that previously it was taking anywhere from four to seven months for the Office of Patent Petitions to get around to examining PPH petitions.  The letters communicating the three-week grants of Highway status came from a different part of the USPTO (not the Office of Patent Petitions) namely the Office of International Patent Legal Administration (the former Office of PCT Legal Administration).

At our firm we use PPH a lot.  We try to track our PPH cases pretty closely.  When we saw this good news in September of 2015, we figured USPTO had gotten a clue and had changed its workflow so that PCT-PPH petitions were going to OIPLA instead of going to OPP.  And OIPLA was deciding such petitions fairly promptly after filing.

Well, it turns out I was wrong about this.   Continue reading “Disappointing news about PPH petitions”

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Global Dossier public access now functioning

(See followup article here.)

Weeks and months ago USPTO delivered webinars and other outreClipboard01aches in which it demonstrated the soon-to-be-functioning Global Dossier public access system.  Today the system got released.  You can see it here.  Its chief advantage for US filers will be that it will provide English-language access to information in the Japanese, Korean, and Chinese patent office databases.

I will explain a bit about how it works and what you can do with it.   Continue reading “Global Dossier public access now functioning”

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Amazon scraps its Local Register service

Used to be that to accept credit cards, a business had no choice but to open a “merchant account” through a bank.  The merchant account had a monthly service fee of at least $30 and required purchase of a card reader costing $500 or more.

A couple of years ago, startup Square offered a new way that a business could process credit card payments.  An inexpensive card swipe reader would plug into the user’s smart phone.  With no monthly service fee and no signup fee, Square became very popular among small businesses.  Close on its heels, Paypal launched its own very similar service.  Then a year ago, Amazon decided to take over the market with its Amazon Local Register service.  Amazon promised a smaller commission (a mere 1.75% compared with 2.5 to 2.7% for Square and Paypal) and backed the system with its well-known brand name and market clout.

Then October of 2015 kept getting closer and closer, and this was important because in October of 2015, there was going to be a “liability shift” in which a merchant would have to absorb the losses from credit card fraud if the store failed to use the “chip” in a credit card.  Square sent out new card readers to its users, card readers that could read a chip as well as swipe a magnetic stripe.  And Paypal rolled out a super-sophisticated card reader that would read a chip, swipe a card, or even accept a contactless payment such as Android Pay or Apple Pay (and that cost $150).  Industry watchers watched Amazon to see what it would do for its users of Local Register.  Would Amazon mail out small and inexpensive chip card readers to its users as Square had done?  Would it invite its users to purchase super-sophisticated $150 readers as Paypal had done?  Or would it move to the head of the pack by rewarding its loyal customers with free-of-charge super-sophisticated card readers?

I was astonished to learn today that Amazon has given up.  It will not do anything to make it possible for its users to read chip cards.  Amazon stopped signing up new Local Register accounts today, and users with existing accounts will only be able to use them until February 1, 2016.  Amazon is abandoning the merchant credit card processing business.

What should existing users of Amazon Local Register do about this? Continue reading “Amazon scraps its Local Register service”

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Why it costs money to record a trademark assignment at USPTO?

Used to be you had to pay a $40 fee to record an assignment at the USPTO.  Adding a second property to the recordation cost $40 if you were recording a patent assignment but cost $25 if you were recording a trademark assignment.

I never understood why that second or third property cost one price for trademarks and a different price for patents.

Almost two years ago the USPTO cut the fee for recording a patent assignment to zero.  This was welcome news.  When that price cut happened, I recall wondering why this fee did not drop to zero for trademark assignments.

Today I got my chance.  I am the vice-chair of AIPLA’s Patent Cooperation Treaty Issues committee, so I was present at a meeting of committee chairs, vice-chairs, and board members.  Mary Boney Denison, the Commissioner for Trademarks, was a special guest.  When she finished her prepared remarks, she asked if anybody had any questions.  So I raised my hand and asked why it is that we have to pay money to record a trademark assignment when we don’t need to pay money to record a patent assignment. Continue reading “Why it costs money to record a trademark assignment at USPTO?”

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The software in your car

Readers may recall that some months ago I blogged that I had replaced the (incandescent) brake lights in my Subaru car with LEDs.  Readers will also recall that Volkswagen is in the news for having included software in the engine computer of some diesel cars that would detect when an emissions test was going on, and at such times would adjust the engine to greatly reduce the emissions.  All of this reminds me of the DMCA (Digital Millenium Copyright Act) which generally forbids reverse engineering of software in consumer electronic products.  So how do my LED brake lights fit into this story? Continue reading “The software in your car”

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USPTO gets it right — new way to pay issue fees

Note:  I was mistaken that USPTO did something right this time.  See my followup blog post.

USPTO gets credit for doing something right this time.

First a bit of background.  For many years, as many readers know, the process of paying an Issue Fee has been cumbersome and error-prone.  You take Form 85B and you copy and paste the various pieces of information onto the form.  (In our office we use the “typewriter” function of paid-for Acrobat to fill in the various fields.)  What happens then is that somebody at the USPTO hand-types the various pieces of information into USPTO systems for use in typesetting the to-be-issued patent.

We track this stuff pretty closely for our clients’ patents, and over the course of twenty years we have seen USPTO fat-finger the Form-85B information no less often than 2.8% of the time.  When this happens we often feel we must ask USPTO to issue a Certificate of Correction.  And what’s very unfortunate is that USPTO does not update its Full-Text database to reflect the the CofC.  In practical terms this means that a search in the Full-Text database that failed before the CofC (because USPTO misspelled, say, the assignee name) will still fail even after the issuance of the CofC.

So what is it that the USPTO got right this time? Continue reading “USPTO gets it right — new way to pay issue fees”