Proposed USPTO Fee Increases

Have you looked over the USPTO’s proposed fee increases yet (which were submitted in accordance with the Leahy‐Smith America Invents Act)?

Wow. Check out these changes:

  • Design patent application filing/examination/search fees increase from $530 to $1180.
  • RCE filing fee increasing from $930 to $1700.
  • Total maintenance fees (combined 4, 8 and 12 year) increase from $8710 to $12,800.
  • Notice of Appeal increase from $620 to $1500.

Training manual for new patent admin staff (and new associates)

A book I recently added to my “all patent practitioners should have” list is Susan Stiles’ “Patent Professional’s Handbook.

Stiles’ book is a complete instruction manual for new patent staff: explaining the entire patenting process and terminology, walking them through (step-by-step) how to file something via EFS-Web, and includes quite a few flowcharts, checklists, and form letters. It is a great resource for new staff (and new patent attorneys).

USPTO E-Mail and Your Spam Folder

All practitioners should add commonly used USPTO email addresses to their email client’s address book. Why? To decrease the chances that your email client will filter legitimate email (“ham”) into your junk (“spam”) folder.

I started a list of such “commonly used” email addresses a few months ago. Thanks to this USPTO Notice on , I have some more to add to my list (below). The USPTO Notice even provides step-by-step instructions…

The list:

  • ptas@uspto.gov
  • PRG@uspto.gov
  • TEAS@USPTO.GOV
  • TMPOSTPUBQUERY@USPTO.GOV
  • TMII2455@NX.USPTO.GOV
  • TMOfficialNotices@uspto.gov
  • TrademarkOfficialNotices@uspto.gov
  • eCom101@uspto.gov
  • eCom102@uspto.gov
  • eCom103@uspto.gov
  • eCom104@uspto.gov
  • eCom105@uspto.gov
  • eCom106@uspto.gov
  • eCom107@uspto.gov
  • eCom108@uspto.gov
  • eCom109@uspto.gov
  • eCom110@uspto.gov
  • eCom111@uspto.gov
  • eCom112@uspto.gov
  • eCom113@uspto.gov
  • eCom114@uspto.gov
  • eCom115@uspto.gov
  • eCom116@uspto.gov
  • eCom117@uspto.gov

If you know of any others (particularly patent related), please let me know.

UPDATE (2012-01-25) – here are downloads you can use to expedite this process: Outlook CSV Format and Google CSV Format.

Senator Kyl on Patent Reform

The following quote from Senator Kyl from Arizona, speaking before Congress, explains quite a bit about what Congress understood about the new Patent Act they were voting on. Trust me…you’ve got to read it.

Among many of our most innovative companies, 70 percent of their licensing revenues come from overseas. Obviously, they are already going to be complying with the first-to-file rules. This bill does not, therefore, so much switch the system with which Americans are complying today as it simply allows American companies to only have to comply with one system rather than two. As I said before, the first-to-file concept is clearer, faster, more transparent, and provides more certainty to inventors and manufacturers.

On the other hand, the first-to-invent concept would make it impossible, in many instances, to know who has priority and which of the competing patents is the valid one. To determine who has priority under first to invent, extensive discovery must be conducted and the Patent Office and courts must examine notebooks and other evidence to determine who conceived of the invention first and whether the inventor then diligently reduced it to practice.

Under first-to-file, on the other hand, an inventor can get priority by filing a provisional application. This is an important point. It is easy. It is not as if the first-to-file is hard to do. This provisional application, which only costs $110 for the small inventor, only requires you to write a description of what your invention is and how it works. That is all. That is the same thing that an inventor’s notebook would have to contain under the first-to-invent concept if you are ever going to prevail in court by proving your invention date.

Because a provisional application is a government document, the date is clear. There is no opportunity for fraudulently backdating the invention date. There is no need for expensive discovery: What did the inventor know and when did he know it? You are essentially not requiring anything in addition. You file a provisional application. You have an entire year to get all of your work together and file your completed application, but your date is as of the time you file the provisional application.

As I said, for a small entity, the fee is only $110. That grace period makes it clear that the patent will not be invalid because of disclosures made by the inventor or someone who got information from an inventor during 1 year before filing. That is important.

A lot of academics and folks go to trade shows and begin talking about their concepts and what they have done. If you disclose this, you have a year to file after you disclose the information. And under the bill’s second, enhanced grace period, no other disclosure, regardless of whether it was obtained from the inventor, can then invalidate the invention.

The bill has been very carefully written to protect the small inventor or the academic. That is what it is designed to do. This is not a case of big versus small, although people both big and small support the legislation. If anybody suggests the Feinstein amendment will protect the small inventor, it does not protect the small inventor. In fact, as I said, the legislation is very carefully crafted to give the small inventor a variety of ways to ensure that he or she is protected.

Source: http://www.uspto.gov/aia_implementation/crec-2011-03-03-pt1-pgs1174.pdf, hat tip to Tim Van Tuinen.

CLE with a Cause

It’s nice seeing a CLE being put on for a good cause…”Credits for Conservation” is putting on a CLE next month (October 16-17) at the Four Seasons Resort in Jackson Hole, WY where “all proceeds will directly benefit land and water conservation in the Tetons and the non-profit work of Valley Advocates for Responsible Development & Friends of the Teton River.”

Topics:

  • Prosecuting a US patent application: How to Keep your File Wrapper Clean.
  • Designs, Copyrights and Trademarks: multiple forms of protection available for everyday objects.
  • Writing and Amending a European Patent Application.
  • Developing Leadership Skills in Your Office Personnel.
  • The New US Patent Law – What you really need to know about it.
  • Be a Hero to Your Technology Clients: Tell Them About the R and D Tax Credit.
  • Managing the duty to disclose relevant prior art for patent applications filed in multiple jurisdictions.
  • The Patent Cooperation Treaty (PCT) process: How to use it efficiently.
  • Working with Startups and Helping them to Liquidity Events
  • Legal Ethics.
  • Advanced Claim Drafting Workshop.

More Information: http://www.creditsforconservation.com

Google Chrome and the USPTO

Recently, I’ve been having issues with downloading documents from EFS-Web using Google Chrome.

I’m not the only one:  Chrome Help Forum – Chrome stopped working to download PDFs from USPTO’s PAIR web site, says download “Interrupted”

It is a known bug they’ll fix in the next release of Chrome (later this year). The solution in the meantime (if you don’t mind running beta software) is to install the developer (beta) version of Chrome. See this post for instructions/more information.

[Update 2011-07-20: Remember that beta software can crash unexpectedly...something that is particularly frustrating if you are 3/4 of the way through filing a new trademark application. I have noted, at least on my computer, that beta Chrome, if it is going to crash, typically does so when I print something. Thus...I try not to use the print function when I'm doing something critical).

The additional benefit of the developer version of Chrome…printing has been improved. I no longer receive a blank second page when I print a one page email…

Unsupported PDF specifications and USPTO EFS-Web

There are few things more painful than uploading documents via EFS-Web and receiving the dreaded warning that:

The attached PDF file does not follow the supported PDF specifications (Versions 1.1 to 1.6). Please remove file, recreate with a current version of PDF and reattach.

I truly wonder how many curse words (and holes punched in walls) those two sentences have caused in the last few years…

What is a “PDF specification”?
The “PDF specifications (Versions 1.1 to 1.6)” referred to are created (specified) by Adobe. Essentially, every time Adobe releases a new version of Acrobat/Acrobat Reader, new features are added and a new version of the specification is created. For instance [Via]:

  • PDF 1.0/Acrobat 1.0
  • PDF 1.1/Acrobat 2.0
  • PDF 1.2/Acrobat 3.0
  • PDF 1.3/Acrobat 4.0
  • PDF 1.4/Acrobat 5.0
  • PDF 1.5/Acrobat 6.0
  • PDF 1.6/Acrobat 7.0
  • PDF 1.7/Acrobat 8.0
  • PDF 1.7, Adobe Extension Level 3/Acrobat 9.0
  • PDF 1.7, Adobe Extension Level 5/Acrobat 9.1

What triggers the warning?

When you upload PDFs to EFS-Web, the USPTO checks to make sure the file uploaded complies with the USPTO’s “PDF Guidelines for EFS-Web.” If your file doesn’t comply, you receive the warning.

The problem is that Adobe is constantly fiddling with the specification, fixing bugs, plugging security holes, etc. It seems like every time they update Acrobat/Acrobat Reader, EFS-Web balks at the resulting file, thinking it does not comply with the currently accepted standards. Until someone at the USPTO determines what needs to be updated in the software…EFS-Web will give you the error. Over and over and over…

How can I force Adobe Acrobat (Version 9 Pro) to fix an existing PDF so I can upload it successfully?

In the menu bar, select “Advanced” and then “Preflight” (or just press Shift-Ctrl-X).

In Preflight, select “Acrobat/PDF version compatibility” and select “Compatible with Acrobat 7.”

Press the “Analyze and fix” button and Adobe with reformat the file to be compatible with Acrobat 7, savig it as a PDF 1.6 document.

Also see this blog post:  PDF Creation and Font Embedding for USPTO Submissions.

What other options are there for working around the issue?

  • Open the file in another PDF generator/reader (e.g., Acrobat Reader, PDFpenPro, PDF995),  and save it.
  • Print the file and scan it back to PDF.
  • Print the file using another PDF printer

Sadly, those options won’t always work.

The take-away tip: do not allow your PDF generating software to automatically update itself. Instead, manually apply the updates after you double check to make sure that there are no issues with EFS-Web (or at least wait a few weeks). To check for issues, see the USPTO’s EFS-Web Announcements page.

[edited to add a link to EFS-Web Announcements 2011-04-29]

practical knowledge for small entities and solos