Those who entered the US patent community only recently (within, say, the past decade) could be forgiven for being unaware of something called an “interference proceeding”. Continue reading “A helpful report from Chico Gholz on pending interferences”
Getting your streaming television onto IPv6
This blog article reports success (screen shot at right) at getting a particular smart television connected to the world through IPv6. But the more general goal of this article is to gently remind the reader that he or she may wish to tackle this project in his or her home as well. Continue reading “Getting your streaming television onto IPv6”
USPTO gives legal advice, and it’s flat wrong
When I was first in practice, you could purchase up to three months of extensions of time to pay an Issue Fee. That ended around a decade ago. For the past decade, the situation has been that if you are as little as one day late in paying your Issue Fee, the application will go abandoned. You would then be faced with the prospect of having to pay a USPTO fee of $2100 (or $840, or $420) along with a Petition to Revive, to overcome the abandonment.
With this in mind, here is a screen shot from Patent Center in an application that has received a Notice of Allowance. For this allowed US patent application, the legal advice from the USPTO is:
Payment of fees during this stage of the application process is optional, but failure to pay fees in a timely manner may cause delays in the processing of your application.
This legal advice is, as any experienced practitioner knows, flatly false. In no way is the payment of the Issue Fee “optional”. And the consequence of failing to pay the Issue Fee “in a timely manner” does not merely “cause delays in the processing” — it abandons the application.
For an experienced practitioner, this wrong legal advice probably routinely gets ignored. But in recent years the USPTO has done lots of outreach urging inventors to file pro se. It is surely only a matter of time before some pro se inventor believes this wrong advice and ends up with no patent at all.
Continue reading “USPTO gives legal advice, and it’s flat wrong”
How law firms and corporations are dealing with USPTO’s non-DOCX penalty
Some firms and corporations are trying to figure out what to do about the USPTO’s DOCX initiative (the $400 non-DOCX penalty) that came into effect on January 17, 2024. Other firms and corporations have already decided what to do about the DOCX initiative. In recent days I surveyed firms and corporations about their present approaches to the DOCX initiative. How many law firms have written to their clients, telling them that the firm refuses to take the risks of filing in DOCX? How many firms and corporations have decided not to file in DOCX format (meaning that they have decided to pay the non-DOCX penalty)? How many firms and corporations have decided to file in the DOCX-plus-auxiliary-PDF path? How many firms and corporations have decided to file in the DOCX-alone path? Over 150 law firms and corporations responded to the survey. Read on to see the survey findings.
Continue reading “How law firms and corporations are dealing with USPTO’s non-DOCX penalty”
Please respond to this survey about your use of USPTO’s DOCX e-filing paths
(Update: the survey responses have been received. You can see the survey findings.)
Some firms and corporations are trying to figure out what to do about the USPTO’s DOCX initiative (the $400 non-DOCX penalty) that came into effect on January 17, 2024. Other firms and corporations have already decided what to do about the DOCX initiative. This survey hopes to collect responses from firms and corporations about their present approaches to the DOCX initiative. How many firms and corporations have decided not to file in DOCX format (meaning that they have decided to pay the non-DOCX penalty)? How many firms and corporations have decided to file in the DOCX-plus-auxiliary-PDF path? How many firms and corporations have decided to file in the DOCX-alone path?
Please respond to this survey.
It is likely to be very helpful to the patent community to have lots of responses from lots of firms and corporations. I hope that lots of members of the patent community will respond, and I thank you in advance for your participation.
Pursuing rehearing and rehearing en banc in the “no more notice-and-comment needed” opinion
As I described in this blog article, I fear that a recent opinion from a three-judge panel of the Court of Appeals for the Federal Circuit will signal to the USPTO that going forward, it can duck the APA’s notice-and-comment requirements by arbitrarily deeming any rulemaking it does as merely “procedural”.
It seems to me that what needs to happen next is a rehearing, or a rehearing en banc, at the Federal Circuit, on this case (In re Chestek PLLC, February 13, 2024, slip opinion).
Two things are, I think, needed if this petition is to move forward and if it is to have a reasonable chance of success.
Pledging funds. The applicant incurred substantial expense pursuing the appeal this far and, I believe, is only going to be able to pursue rehearing if there is support from the IP community. Earlier today I set up a pledge system by which members of the IP community may pledge support. As of right now there are nine pledges adding up to $6K. I believe the applicant will only be able to proceed if at least $35K is pledged.
Committing to amici. I think that for a reasonable chance of success, there will need to be cogent amicus briefs alerting the Federal Circuit to how much unchecked power this puts in the hands of the PTO. This would hopefully include briefs from the relevant professional associations. I am aware of two amicus commitments thus far from members of the IP community.
I invite readers to pledge contributions toward this petition effort.
Has the USPTO just been given freedom from notice-and-comment requirements?
On February 13, 2024 a three-judge panel of the Court of Appeals for the Federal Circuit rendered an opinion that preserves the USPTO’s requirement that every trademark applicant reveal to the USPTO where the applicant sleeps at night. If that had been the sole consequence, that would have been bad enough, in my view. (I have made no secret of my view that the USPTO’s notice-and-comment activity for the “where you sleep at night?” requirement failed to give any notice at all, let alone enough notice to comply with the Administrative Procedure Act.)
The opinion, unfortunately, is likely to have consequences going far beyond merely preserving the requirement that trademark applicants reveal where they sleep at night. The opinion is likely to embolden the USPTO, going forward, with the notion that almost nothing that the USPTO does in the future would need any ADA notice-and-comment activity. Here is the part of the opinion that worries me: Continue reading “Has the USPTO just been given freedom from notice-and-comment requirements?”
Webinar: Five myths about filing US patent applications in DOCX
Attend this webinar to dispel five myths about the USPTO’s DOCX initiative.
On January 17, 2024 the USPTO commenced charging its $400 penalty in applications where the filer uses the tried-and-true legacy-PDF path for filing US utility patent applications. The desire to avoid having to pay this penalty has prompted applicants and practitioners to explore the other two available filing paths, namely DOCX-plus-aux-PDF and DOCX-without-aux-PDF, each of which presents substantial risks when compared with the legacy PDF path.
In an attempt to convince applicants and practitioners to take the risky paths, the USPTO has by now presented a staggering over one hundred fifty webinars (blog article). In the webinars, the USPTO has been and continues to be, to put it gently, disingenuous about the risks of the DOCX filing paths. Continue reading “Webinar: Five myths about filing US patent applications in DOCX”
2023 Toteboards are now available
I am pleased to present the 2023 toteboards:
Money savings and convenience for travelers to Orlando who rent a car
If you fly to Orlando and rent a car, you will find that it is impossible to avoid having to pay road tolls. Here is a way to pay the tolls in a very convenient way, and save lots of money. Continue reading “Money savings and convenience for travelers to Orlando who rent a car”