(There is a followup posting.)
Let’s say you filed a PCT application and picked the USPTO to be your International Searching Authority. Suppose further that ISA/US decided the claims are patentable. When you enter the US national phase from that PCT application, may you safely assume that the USPTO will allow the application?
Continue reading “Urging USPTO to “drink its own Champagne””
It’s a few months ago that I looked at one of our trademark cases — a Madrid Protocol case that had come in from foreign counsel on behalf of a foreign applicant — and pronounced to anyone who would listen that the case was never going to be approved for publication. I was convinced that the Examining Attorney’s grounds for refusal were impossible to overcome. I figured it was only a matter of time before it would go abandoned. I figured the sole remaining necessary lawyering skill would be communicating a gentle let-down to foreign counsel — an exercise in expectations management.
One of my associates was handling the case. The other day I was astonished to learn that my associate had completely overcome the refusal. I asked her how she accomplished this seemingly impossible result. She smiled and explained what had happened.
Continue reading “Clever associate’s trademark advocacy secret weapon revealed”
Last year the Intellectual Property Law Section of the State Bar of Michigan invited me to speak at their Spring Seminar 2014 in East Lansing, Michigan. It was a delightful event, well organized and well attended. From the point of view of a speaker, what’s nice is when an audience has lots of good questions. This was such an audience. I am delighted that they have invited me back to speak at this year’s Spring Seminar 2015.
You can see the program and brochure. It will be Monday, March 16, again in East Lansing. Fellow intellectual property bloggers Martin Schwimmer (The Trademark Blog) and Eugene Quinn (IPWatchdog) will also be presenting, each of them in a plenary session.
If you have not already seen it, you might want to look at the video documentary “Inventing to Nowhere”. It talks about the importance of the patent system. It is quite well done.
The arrival of a new year prompts every blogger to look back to see which postings in the previous year reached a lot of eyeballs.
Well, by far the most-read posting for all of 2014 in Ant-like Persistence was “A little-known USPTO initiative to reduce the backlog“. This posting, dating from early April of 2014, might be of great interest to patent practitioners who missed the original posting.
In second place was “USPTO is closed today, Monday, March 17“. This was the posting that told readers that it was a snow day in Washington. It meant that anything that needed to be filed in the USPTO on Monday March 17 could be postponed until Tuesday March 18 and still be timely.
The people who subscribe to this blog are likely to hear of such USPTO closings in the future. So if you have not already done so, subscribe to the blog. And if you have a friend or colleague who would like to hear about it when the USPTO has a snow day, encourage them to subscribe to the blog.
As you will recall from this posting, I will be publishing a report in February of 2015 listing patent firms and the numbers of US design patents they obtained for clients in 2014. In that posting I invited each firm to submit its count of US design patents obtained in 2014 (and 2013, and 2012). As of right now, five patent firms have responded. Between them, those five firms obtained 418 US design patents in 2014, 443 US design patents in 2013, and 432 US design patents in 2012.
There are 29 days left for submissions. There are perhaps a hundred or so patent firms that did significant numbers of US design patent filings that issued in 2014, meaning that there are perhaps 95 or so submissions still to come. If you are with a firm that obtained US design patents for clients in 2014, I encourage you to read the original posting to see an easy way to do the database search to count your US design patent grants, and to send in your submission.
And if you know someone who is with a firm that obtained US design patents for clients in 2014, I encourage you to pass this posting along to that person so that they will know about the opportunity to respond.
We all need to redouble our efforts to warn clients about unscrupulous fee requests. Four recent examples reminded me how insidious these fee requests can be. The first one asks me to wire $2322.30 to a bank in Slovakia. The second one asks me to wire $2738 to a bank in Czech Republic. The third one asks me to wire $2548.25 (where do they get these amounts?) to a bank in Slovakia. And the fourth asks me to wire $2327 to a bank in Czech Republic.
Continue reading “The importance of warning clients about unscrupulous fee requests”
How many US design patents did your firm handle in 2014? The last ones for 2014 issued yesterday, Tuesday, December 30. So now you can figure out how many you filed in 2014, and send in your submission for our ranking. Here is the questionnaire for you to complete and submit.
I will publish the results in February of 2015.
Continue reading “Submit your design patent total for the 2014 US design patent rankings”
Effective December 29, 2014, US citizens traveling to Germany have an opportunity to speed their entry into Germany, using Germany’s EasyPASS system. 
German citizens traveling to the US likewise have an opportunity to speed their entry into the US using the US’s Global Entry system.
Continue reading “New reciprocal trusted traveler program – US and Germany”
We are all accustomed by now to the very important trick of “aging the preliminary amendment”. When we file a transition application (an application filed on or after March 16, 2013 which is tied to some application filed before that date) the usual mistake is to file the preliminary amendment on filing day. The reason it is usually a mistake is that years later in litigation, the infringer will howl that the preliminary amendment added new matter, and that that new matter had been claimed, and that the “new” law of patentability should have been applied to the case rather than the “old” law of patentability that was actually applied to the case (because you refrained from “checking the box” in the ADS).
So the malpractice-avoiding strategy for many fact patterns is the by now very familiar practice of “aging the preliminary amendment”. We file the transition case, and then wait for midnight to pass in Virginia. Only then do we file the PA. Later the Examiner will determine whether or not the PA contains new matter. If the Examiner enters the amendment, this counts as an express determination by the Examiner that the PA must not have contained new matter. This denies the infringer, in litigation, any opportunity to howl about the case having supposedly been examined using the “wrong” law of patentability.
Which gets us to the latest trap for the unwary.
