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Where to send a USPTO patent petition?

In the old days (meaning, before e-filing at the USPTO became possible), the practitioner who was filing a petition would simply drop the petition in the mail, directed to the USPTO generally.  Someone in the USPTO mail room would look at each petition, and would pick where exactly within the USPTO to direct the petition so that it might be considered and decided.

Then the Internet happened and a decade later, the USPTO reacted to the Internet by setting up EFS-Web.  In EFS-Web the burden of figuring out where exactly within USPTO a patent-related petition would be directed got shifted away from USPTO mail room personnel and onto the e-filer.  The choices from which the patent e-filer might pick include:

    • Petition for review by the Office of Petitions
    • Petition for review by the PCT legal office
    • Petition for review by the Technology Center SPRE

When you are e-filing a petition, how should you pick where to send your petition?

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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?”

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MTB XI – the photographs

Last night was Meet the Bloggers XI.  Yes, the eleventh annual reception.  Henry’s Pub, the same restaurant in San Diego where the first and original Meet the Bloggers took place ten years ago, was closed to the public for the night for this special event.  Meet the Bloggers XI In this exterior shot of the restaurant you can see maybe half of the people who attended this reception.

20150504_211441 In this shot you can see Erik Pelton giving out some of the door prizes.

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“out of the office until May 8th”?

Send an email today to a trademark practitioner located anywhere in the world, and likely as not you will receive an automatic reply like this:

Hello. I am out of the office until May 8 with limited access to email.  If this matter is urgent please contact my assistant so-and-so …

The reason, of course, is that the email recipient is in San Diego right now.  As am I.  If you are in San Diego and want to see me this week, the best way to do it is to drop by one of these two receptions.

 

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OTT (over-the-top) media programming is on the way

We will all be affected by the inevitable growth of OTT (over-the-top) distribution of entertainment, both as intellectual property practitioners serving clients and as consumers watching the stuff.189-17-s

A Nielsen report from May of 2014 says that in 2013 the average American household got 189 channels from their cable television or satellite television provider, and actually watched only 17 channels.  One way to look at this is that in 2013, the cable or satellite provider bundled about 112 channels that you didn’t want along with the 17 channels that you did want.

“Over-the-top” or OTT is the effort by some content providers to bypass the cable and satellite television providers and to reach consumers directly.  I’ll discuss some of the OTT initiatives.

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How Madrid ten-year trademark renewals work

US trademark practitioners are just now starting to get asked by foreign clients to do a kimadrid-ren-4nd of filing that never existed before about September of 2014.  The filing is a ten-year Statement of Use for a US Madrid registration.  This blog article tries to explain such filings and how they are similar to and different from other US trademark maintenance and renewal filings.  If you already understand everything about the figure at right, you can skip reading this blog article!

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Can a US design application still be filed?

A member of one of the listservs asked these questions:

A design was disclosed in May 2014, with a registration granted December 2014 in The European Community based on an application filed towards the end of October 2014 (within the last six months).

 Is it still possible to file a design application in the US?  Does the statutory bar for design patents run one year or six months from initial disclosure?  Can a US design application still be filed within six months of priority, even though the priority application has already been registered?

The questions remind us that Article 4 of the Paris Convention sets a twelve-month period for filing a second patent application that was intended to claim priority from a first patent application, but that the twelve-month period applies only to utility patents, not (US) design patents.  For design filings, Article 4 sets a six-month period.  When we do the mental gear change from utility to design, there is the number “six” that pops up in our heads as well as the notion that the number “twelve” no longer applies.

The questions remind us that before the America Invents Act (AIA) happened, there was a twelve-month grace period.  You could disclose your invention 11 months ago, and file your US patent application, and it was no problem.  Indeed a third party could independently invent the same invention 11 months ago, and disclose it 11 months ago, and still even that disclosure did not have to be a problem.  You would merely “swear behind” the activity of the third party and the problem would go away.  By this we mean establishing that your date of invention predated the third-party disclosure that happened 11 months ago.

So the listserv member may have been wondering, does the “twelve becomes six” change from utility to design (in Article 4 of the Paris Convention) make a difference in this fact pattern?  But probably the main thing troubling the listserv member was the AIA itself, which sort of eliminated the twelve-month grace period and sort of did not eliminate it.

Still another thing that the listserv member may have been thinking about is (pre-AIA) 35 USC § 102(d) that says that if a foreign filing resulted in a foreign patent issuing before the US filing date, then under certain circumstances the US filing is statutorily barred.  Here we have a granted design registration in OHIM that would be chronologically prior to the proposed US design patent filing date.  Is it a statutory bar?

If you’d like to test yourself, work out what you think the answer is, and then read on.

Continue reading “Can a US design application still be filed?”