Ant-Like Persistence

July 3, 2015

Update on USPTO’s provisions for Japanese searching authority

Yesterday I blogged about how the choice of the Japanese searching authority for filers in RO/US seemed not to be well supported by USPTO in EFS-Web. The EFS-Web page for payment of search fees did not list a choice for ISA/JP. I reported that the USPTO’s Electronic Business Center (EBC) agreed it was missing and suggested that the way to pay the fee was to fax in Form 2038.

Now there is news from a nice person at the USPTO. Continue reading “Update on USPTO’s provisions for Japanese searching authority”

July 2, 2015

USPTO foot-dragging on implementation of ISA/JP

(Followup article has been posted. Although the EBC did not know about it, there is a way to pay the ISA/JP fee in EFS-Web.)

Supposedly as of yesterday, PCT filers filing in RO/US were able to pick ISA/JP as their searching authority. You can see the press release that says this. And I blogged about this option back on June 19. But it looks like USPTO is dragging its feet on this. Continue reading “USPTO foot-dragging on implementation of ISA/JP”

July 1, 2015

Register now for AIPLA PCT Seminar later this month

Later this month are the AIPLA PCT Seminars. You need to sign up if you have not already done so. You can see the details here. It’s Monday and Tuesday, the 20^th and 21^st, in San Francisco. And it’s Thursday and Friday, the 23^rd and 24^th, in Alexandria, Virginia.

There are plenty of PCT seminars around, taught by people from USPTO and/or WIPO. The way that the AIPLA PCT Seminars are different is that they have a seasoned faculty that includes speakers from USPTO and WIPO but also includes actual practitioners. These people draw upon diverse backgrounds and provide an interactive discussion that teach things you won’t get anywhere else. Continue reading “Register now for AIPLA PCT Seminar later this month”

June 27, 2015

Best Practice when filing a PCT application – “pub preview”

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””

June 27, 2015November 11, 2024

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?”

June 26, 2015

USPTO and Asian family names

There are many cultures, including those in Hungary, China, Japan, Korea, Singpore, and Vietnam, where the family name comes first and the given name comes after the family name. For example Park Geun-hye, the president of South Korea, is the daughter of Park Chung-hee. Park, the president’s first name, is her family name. Geun-hye, the president’s last name, is her given name.

Unfortunately all too often the USPTO doesn’t get this. Continue reading “USPTO and Asian family names”

June 25, 2015

Guest post: attorney liable for bad-faith C&D letter?

Prompted by a spirited discussion in the E-Trademarks listserv, I blog ged th e other day asking whether the signer of a bad-faith Cease-and-Desist letter might risk personal liability for it. Here is a guest posting from listserv member Michael E. Hall about this.

Continue reading “Guest post: attorney liable for bad-faith C&D letter?”

June 24, 2015

Why we never use “micro entity” status

We are all accustomed to “large entity” and “small entity” USPTO fees. A small entity gets to pay half price for most USPTO fees, as compared with what a large entity would have to pay.

Micro entity status has been available since the AIA happened in about 2012. A micro entity gets to pay half price for most USPTO fees, as compared with what a small entity would have to pay. That amounts to one-fourth of what a large entity would have to pay.

In the three or so years that have passed, our firm has never even once made use of “micro entity” status for a patent applicant in the USPTO. Why? Continue reading “Why we never use “micro entity” status”

June 24, 2015

An entity can be both large and small

It is all too easy to get into a rut, (a) telling clients that the way to figure out whether an entity is large or small is by counting the employees and (b) proceeding on the assumption that if a client was small in its previous patent application, then of course the client will likewise be small in its next patent application.

But an entity can be simultaneously large and small.

Continue reading “An entity can be both large and small”

June 23, 2015

IP torts and natural persons as defendants

A longstanding member of the E-trademarks listserv offered up an all-too-familiar fact pattern:

Scenario: In-house counsel sends a cease-and-desist letter asserting non-existent trademark rights. Assume the letter is sent in bad faith and constitutes unfair competition.

Question: Since unfair competition is a tort and in-house counsel is acting within the scope of employment, I would assume this person is jointly and severally liable with the employer. Thoughts? Case law?

So can you go after the person who signed the letter? Continue reading “IP torts and natural persons as defendants”