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Most-read postings in “Ant-like Persistence” for 2014

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.

 

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29 days remaining to submit your design patent count for 2014

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.

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The importance of warning clients about unscrupulous fee requests

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”

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Submit your design patent total for the 2014 US design patent rankings

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”

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Yet another AIA trap for the unwary

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.

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How to know whether USPTO has recognized your patent Power of Attorney?

There are lots of situations where USPTO will refuse to do what you want if USPTO thinks that you are not the “attorney of record”.  Filing any of a variety of EFS-Web auto-granted actions such as a Terminal Disclaimer.  When you try to do any of these things in an application file, the EFS-Web system asks you to type in your registration number and will look up that number in the Palm database for the application file.  If EFS-Web thinks you aren’t the attorney of record, it will halt and refuse to let you move forward.

As another example it is impossible to get the auto-granted petition to withdraw as attorney, unless the Palm system thinks you are the attorney.

You never know when one of these situations might come up without warning, and you would need to get such a filing done.  Which means that as a general rule you should be filing a Power of Attorney in each case.  And as a general rule you should docket carefully to check to make sure the USPTO actually recognizes the Power of Attorney.  Then when a crunch time comes, such as the need to urgently file a Terminal Disclaimer, or get yourself withdrawn as attorney, you will actually be able to get the task done.

And as it turns out, at least two of USPTO’s ways for you to supposedly learn whether or not the USPTO recognizes the Power of Attorney are flawed and can’t be trusted.

Continue reading “How to know whether USPTO has recognized your patent Power of Attorney?”

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USPTO will be closed Friday, December 26

The USPTO will be closed Friday, December 26, 2014.  Any action or fee due on Friday, December 26, 2014, would be considered timely if filed on the next succeeding business day, specifically, Monday, December 29, 2014.  You can see this on the USPTO web site here and here.

A big thank you goes to Bryan Wheelock and Matthew Hintz who provided the citations to the items on the USPTO web site.

Yet another nice person (Scott Barrett) points out that apparently this closure was announced by the White House on December 5, 2014.