Don’t forget, a number of PCT changes are effective today

November 9, 2007 on 8:20 am | In International, USPTO | Comments Off

Via an email reminder from the USPTO:

Certain Fee Increase and Revised Transmittal Letter to the United States Receiving Office (form PTO-1382)

Effective 09 November 2007, the amount of the search fee for the USPTO to act as the International Searching Authority will increase to $1800 for all international applications. The Office will no longer provide a reduced search fee for having a corresponding prior non-provisional application under 35 U.S.C. 111(a).

Further, the amount of the supplemental search fee (per additional invention) to the ISA/US will increase to $1800.

In addition, the amount of the fee for requesting restoration of the right of priority will increase to $1410.  The revised PCT Fee Schedule is posted at <http://www.uspto.gov/web/offices/pac/dapps/pct/fees.htm>.

The second page of the Transmittal Letter to the RO/US (form PTO-1382) for providing the corresponding prior application information has been deleted. The revised Transmittal Letter is posted at: <http://www.uspto.gov/web/offices/pac/dapps/pct/files/chap1/ed_1382.pdf>

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Forthcoming Changes to Patent Practice in Canada

January 17, 2007 on 4:04 pm | In International, Legislation/Regulation | Comments Off

And we thought patent reform only happen in the US.  ;-)

An attorney with the Canadian firm of Oyen Wiggs Green & Mutala LLP was kind enough to send me a memorandum ( Download forthcoming_changes_in_canadian_patent_practice.pdf) which thoroughly discusses the proposed amendments, including:   

  • Canada’s small entity regime;
  • harmonization of sequence listing descriptions with the Patent Cooperation Treaty (PCT);
  • the evidence required when the applicant is not the inventor;
  • policies regarding refunds of fees paid to the Canadian Intellectual Property Office (CIPO);
  • clarification of procedures for Canadian national entry of PCT applications; and
  • various minor ‘housekeeping’ amendments.

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What Foreign Countries Should I File My Patent Application In?

January 16, 2007 on 12:02 pm | In Independent Inventors, International | 2 Comments

It’s a question we all regularly hear from clients:  “what foreign countries should I file my patent application in?  Add this chart to your list of visual aids for explaining the topic to your clients:

Capture1-16-2007-12.01.08 PM

Countries GDP as US States

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Idaho Seminar on China & IP

September 30, 2006 on 11:03 pm | In International | 1 Comment
China
The University of Idaho’s ILSA (International Law Students Association) has put together an interesting panel
discussion on International Intellectual Property issues, primarily focusing on China.  The seminar includes an USPTO Roadshow on “How your Government works to protect your intellectual property rights abroad” as well as a panel discussion:
  • John Koeppen — USPTO Attorney - Advisor Office of Internation Relations
  • Mark Costello — Xerox Corporation Attorney
  • Russell Slifer — Micron Corporation Attorney
  • Keith Jones — Washington State University Research Foundation Director - Office of Patents, Trademarks and Copyrights

October 19, 2006.  Moscow, ID.

Download panelbrochure.pdf

Download paneldiscussion.pdf

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Practice Tip: Foreign Corporate Entities

August 10, 2006 on 10:13 am | In International, Trademarks | Comments Off

For those of us who do considerable work (patents, trademarks) for foreign intellectual property law firms, Wikipedia has a great listing of “Types of companies.”

A great tool to use when you need to satisfy an “entity type” rejection for, in example, explaining whether an Australian LTD is a “company” or a “corporation.”

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PCT Deadline Calculator

March 31, 2006 on 8:20 am | In International | Comments Off

Did you know there is an on-line PCT Time Limit Calculator at the WIPO site?

3-31-2006-8.19.23 AM

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PCT Alerts: email notices of published PCT Applications

March 28, 2006 on 8:39 am | In International, Patent Searching | Comments Off

Interesting service sent in by a reader:  “PCT Alerts, a free e-mail alerts service for people wanting to keep watch on publication of PCT Patents! Upon registering, you will receive an email alert as soon as the requested PCT Patent is published by WIPO (World Intellectual Property Organization).” 

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Foreign Filing Licenses around the World

January 24, 2006 on 9:21 am | In International | 1 Comment

Awareness of Foreign Filing Requirements For Inventions Originating Outside the United States Can Prevent Adverse Consequences [pdf].  By Aaron Wininger and Marc Sockol (Squire, Sanders & Dempsey LLP).  [Via PLI’s Lawyer’s Toolbox Vol. 4.4, RSS feed]

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Question from reader: National Phase in China

April 14, 2005 on 8:23 am | In International | Comments Off

Q.  Could you please tell me what is the limitation for filing the national phase via PCT in China? Is it 30 months or 32 months?  I have seen different versions of this limitation.

A.  Unless I am mistaken, China is a 30 month country.

A great resource for determining whether a country is a “30” or “31” is:  http://bpmlegal.com/pctco.html

[UPDATE:  Peter A. Chiabotti at Akerman Senterfitt sent me an "official" link:  http://www.wipo.int/pct/en/texts/pdf/time_limits.pdf.  THANKS!!!]

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July PCT Newsletter

July 8, 2004 on 4:49 pm | In International | Comments Off

capture7820044.49.18 PMJuly PCT Newsletter [pdf]
Articles: Canadian Intellectual Property Office to Start Functioning as International Searching and Preliminary Examining Authority; Power of Attorney Waivers; Reminder: Warning about Requests for Payment of Fees; New/updated PCT Materials on the Internet; and “practical advice” re: “Requirement for the furnishing of powers of attorney under certain circumstances when submitting Article 19 amendments”

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