[Pct] Pct Digest, Vol 4, Issue 10
Damon Neagle
damonneagle at designip.com
Thu Feb 15 12:10:47 EST 2024
Carl:
Interesting – we were just discussing this issue in our firm.
We currently put the substance of our reporting letters in the body of emails. The primary reason is convenience of reading. Many of our clients are busy executives or in-house attorneys and it's much less convenient for them to digest the email if they have to open a PDF. This is particularly true when reviewing an email on a mobile phone.
The biggest downside for us is that formatting & content options can sometimes be more limited when generating a form/automated email vs. a Word document.
Damon A. Neagle
Design IP A Professional Corporation
1575 Pond Road, Suite 201 | Allentown, PA 18104 USA
direct: 610.395.8005 | main: 610.395.4900 | web: www.designip.com<http://www.designip.com/>
[logo2]
________________________________
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Sent: Thursday, February 15, 2024 12:00 PM
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Subject: Pct Digest, Vol 4, Issue 10
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Today's Topics:
1. Notification/reporting correspondence to clients - PDF vs.
email body (Carl Oppedahl)
2. Re: Notification/reporting correspondence to clients - PDF
vs. email body (David Boundy)
3. Re: Notification/reporting correspondence to clients - PDF
vs. email body (Orvis)
4. Re: Notification/reporting correspondence to clients - PDF
vs. email body (George Jakobsche)
5. Re: Notification/reporting correspondence to clients - PDF
vs. email body (Allen Richter (allenr at richterpatent.com))
6. Re: Notification/reporting correspondence to clients - PDF
vs. email body (Timothy Snowden)
7. naming the applicant at national/regional entry (Carl Oppedahl)
8. Re: Notification/reporting correspondence to clients - PDF
vs. email body (Carl Oppedahl)
9. Re: Notification/reporting correspondence to clients - PDF
vs. email body (Gerry Peters)
10. Re: Notification/reporting correspondence to clients - PDF
vs. email body (Krista Jacobsen)
11. Re: Notification/reporting correspondence to clients - PDF
vs. email body (Gerry Peters)
12. Re: Notification/reporting correspondence to clients - PDF
vs. email body (Timothy Snowden)
----------------------------------------------------------------------
Message: 1
Date: Wed, 14 Feb 2024 12:09:12 -0700
From: Carl Oppedahl <carl at oppedahl.com>
To: for users of the Patent Cooperation Treaty
<pct at oppedahl-lists.com>
Subject: [Pct] Notification/reporting correspondence to clients - PDF
vs. email body
Message-ID: <3e88d6e3-6ec2-4b30-9058-affdcafc3351 at oppedahl.com>
Content-Type: text/plain; charset="utf-8"; Format="flowed"
A listserv member asks to post anonymously ...
Hi listmates,
We are currently reconsidering the manner in which we send notifications
/ reporting correspondence to our clients. I?m referring to
correspondence such as
* Reporting filing of a patent application
* Reporting official communication from a patent office
* Reporting an action taken at a patent office, such as responding to
an Office Action or filing an IDS
* Notification of upcoming 1-year Paris Convention deadline
* Notification of upcoming 30-month PCT national phase deadline
The factors currently affecting our decision include:
* A PDF letter at least seems more fixed/permanent, and is a discrete
?document?.
* A PDF letter is more aesthetically pleasing, and can give an
impression of formality and/or professionalism.
* A PDF letter makes it frustrating for the recipient who is required
to take the extra step of opening an attachment in order to read the
correspondence.
* An email-body letter conveniently remains available below
replies/reminders sent in response to the original correspondence.
* When accompanying the correspondence with a bill for services
rendered, sending the correspondence as an email-body letter avoids
potential confusion from multiple/mixture of attachments.
I?d be very interested to hear your thoughts on whether it is preferable
to send such correspondence in the body of an email, or as a PDF
attachment to an email. Perhaps you even have different preferences for
different types of correspondence. I?d also be interested to know what
you do in reality!
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Message: 2
Date: Wed, 14 Feb 2024 14:20:53 -0500
From: David Boundy <DavidBoundyEsq at gmail.com>
To: "For users of the PCT and ePCT. This is not for laypersons to seek
legal advice." <pct at oppedahl-lists.com>
Subject: Re: [Pct] Notification/reporting correspondence to clients -
PDF vs. email body
Message-ID:
<CAJwugqECJ5Ui5k-W4xxrs0Zh0nA0u40MGs+fNEWxr6uQJFje9A at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
The list of criteria basically provides the answer -- which characteristic
is important to what letter?
I send engagement letters as PDFs (the formality is essential), bills as
PDFs (that's what my firm's billing system generates), agendas for monthly
meeting in PDF (the formality is psychologically useful) (but during the
phone call, I take notes in the Word doc). Routine correspondence (such
as reporting either incoming our outgoing correspondence, requesting
instrutions for either reply or for 1-year filing deadline) as email body.
On Wed, Feb 14, 2024 at 2:09?PM Carl Oppedahl via Pct <
pct at oppedahl-lists.com> wrote:
> A listserv member asks to post anonymously ...
>
>
> Hi listmates,
>
> We are currently reconsidering the manner in which we send notifications /
> reporting correspondence to our clients. I?m referring to correspondence
> such as
>
> - Reporting filing of a patent application
> - Reporting official communication from a patent office
> - Reporting an action taken at a patent office, such as responding to
> an Office Action or filing an IDS
> - Notification of upcoming 1-year Paris Convention deadline
> - Notification of upcoming 30-month PCT national phase deadline
>
>
>
> The factors currently affecting our decision include:
>
> - A PDF letter at least seems more fixed/permanent, and is a discrete
> ?document?.
> - A PDF letter is more aesthetically pleasing, and can give an
> impression of formality and/or professionalism.
> - A PDF letter makes it frustrating for the recipient who is required
> to take the extra step of opening an attachment in order to read the
> correspondence.
> - An email-body letter conveniently remains available below
> replies/reminders sent in response to the original correspondence.
> - When accompanying the correspondence with a bill for services
> rendered, sending the correspondence as an email-body letter avoids
> potential confusion from multiple/mixture of attachments.
>
>
>
> I?d be very interested to hear your thoughts on whether it is preferable
> to send such correspondence in the body of an email, or as a PDF attachment
> to an email. Perhaps you even have different preferences for different
> types of correspondence. I?d also be interested to know what you do in
> reality!
> --
> Pct mailing list
> Pct at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/pct_oppedahl-lists.com
>
--
<https://www.iam-media.com/strategy300/individuals/david-boundy>
*David Boundy *| Partner | Potomac Law Group, PLLC
P.O. Box 590638, Newton, MA 02459
Tel (646) 472-9737 | Fax: (202) 318-7707
*dboundy at potomaclaw.com <dboundy at potomaclaw.com>* | *www.potomaclaw.com
<http://www.potomaclaw.com>*
Articles at http://ssrn.com/author=2936470 <http://ssrn.com/author=2936470>
<https://www.keynect.us/requestCardAccess/USA500DBOUN?>
Click here to add me to your contacts.
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Message: 3
Date: Wed, 14 Feb 2024 15:24:07 -0500 (EST)
From: Orvis <orvispc at gmail.com>
To: "For users of the PCT and ePCT. This is not for laypersons to seek
legal advice." <pct at oppedahl-lists.com>
Cc: David Boundy <DavidBoundyEsq at gmail.com>
Subject: Re: [Pct] Notification/reporting correspondence to clients -
PDF vs. email body
Message-ID: <26097b95-6b42-49d9-9547-04196115ccbf at gmail.com>
Content-Type: text/plain; charset="utf-8"
The overwhelming amount?of day-to-day correspondence should?be in an email. We are here to serve, and you risk annoying your clients by making them click to open a pdf with something that could have more efficiently been communicated in the body of the email. Some foreign associate emails come to mind. Ever get an email with an attachment that does not open right on the phone?that you spend time trying to view, only to later remember to open the pdf of a one page letter when at a PC to read a one sentence update: "The Honorable hearing officer cancelled the hearing the nth time and will reschedule"?
On Wed, Feb 14, 2024 at 2:22?PM David Boundy via Pct <pct[pct at oppedahl-lists.com]@oppedahl-lists.com[pct at oppedahl-lists.com]> wrote:
> The list of criteria basically provides the answer -- which characteristic is important to what letter?
>
> I send engagement letters as PDFs (the formality is essential), bills as PDFs (that's what my firm's billing system generates), agendas for monthly meeting in PDF (the formality is psychologically useful) (but during the phone call, I take notes in the Word doc).?? Routine correspondence (such as reporting either incoming our outgoing correspondence, requesting instrutions for either reply or for 1-year filing deadline) as email body.
>
> On Wed, Feb 14, 2024 at 2:09?PM Carl Oppedahl via Pct <pct[pct at oppedahl-lists.com]@oppedahl-lists.com[pct at oppedahl-lists.com]> wrote:
>>
>> A listserv member asks to post anonymously ...
>>
>>
>>
>> Hi listmates,
>>
>> We are currently reconsidering the manner in which we send notifications / reporting correspondence to our clients. I?m referring to correspondence such as
>>
>> * Reporting filing of a patent application
>> * Reporting official communication from a patent office
>> * Reporting an action taken at a patent office, such as responding to an Office Action or filing an IDS
>> * Notification of upcoming 1-year Paris Convention deadline
>> * Notification of upcoming 30-month PCT national phase deadline
>> ?
>>
>> The factors currently affecting our decision include:
>>
>> * A PDF letter at least seems more fixed/permanent, and is a discrete ?document?.
>> * A PDF letter is more aesthetically pleasing, and can give an impression of formality and/or professionalism.
>> * A PDF letter makes it frustrating for the recipient who is required to take the extra step of opening an attachment in order to read the correspondence.
>> * An email-body letter conveniently remains available below replies/reminders sent in response to the original correspondence.
>> * When accompanying the correspondence with a bill for services rendered, sending the correspondence as an email-body letter avoids potential confusion from multiple/mixture of attachments.
>> ?
>>
>> I?d be very interested to hear your thoughts on whether it is preferable to send such correspondence in the body of an email, or as a PDF attachment to an email. Perhaps you even have different preferences for different types of correspondence. I?d also be interested to know what you do in reality!
>>
>> --
>> Pct mailing list
>> Pct at oppedahl-lists.com
>> http://oppedahl-lists.com/mailman/listinfo/pct_oppedahl-lists.com
>
>
> --
> [https://ci3.googleusercontent.com/mail-sig/AIorK4wHwYjQzxHxAaQrLX1XiLlcQpAZ83upYUjMvJLtwefIP8dBVb6tJA9Yn2W4bPdW2A18c1EIEHg][Image link][https://ci3.googleusercontent.com/mail-sig/AIorK4wHwYjQzxHxAaQrLX1XiLlcQpAZ83upYUjMvJLtwefIP8dBVb6tJA9Yn2W4bPdW2A18c1EIEHg][https://www.iam-media.com/strategy300/individuals/david-boundy]? ? ?[https://www.iam-media.com/strategy300/individuals/david-boundy]
>
> *David Boundy?*| Partner?|?Potomac?Law Group, PLLC
> P.O. Box 590638, Newton, MA ?02459
> Tel (646)?472-9737?|?Fax: (202) 318-7707
> _dboundy[dboundy at potomaclaw.com]__ at potomaclaw.com[dboundy at potomaclaw.com]_?|?_www.potomaclaw.com[http://www.potomaclaw.com]_
> Articles at http://ssrn.com/author=2936470
> Click here to add me to your contacts.[https://www.keynect.us/requestCardAccess/USA500DBOUN?]
>
> --
> Pct mailing list
> Pct at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/pct_oppedahl-lists.com
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Message: 4
Date: Wed, 14 Feb 2024 20:39:56 +0000
From: George Jakobsche <george at jakobschelaw.com>
To: "For users of the PCT and ePCT. This is not for laypersons to seek
legal advice." <pct at oppedahl-lists.com>
Cc: Orvis <orvispc at gmail.com>, David Boundy <DavidBoundyEsq at gmail.com>
Subject: Re: [Pct] Notification/reporting correspondence to clients -
PDF vs. email body
Message-ID:
<SA3PR10MB70448912EEC993583AA1F755A24E2 at SA3PR10MB7044.namprd10.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
Agreed. I have two clients that explicitly instructed me to include reports in the bodies of e-mail messages, and not to attach reporting letters to e-mail messages.
Best regards,
George
George Jakobsche Patent Counsel PLLC
39 Old Farm Road, Concord, MA 01742-5234
George at JakobscheLaw.com<mailto:George at JakobscheLaw.com> | +1-978-245-8100
This e-mail is from George Jakobsche Patent Counsel PLLC, a law firm, and it may contain confidential or privileged information. If you are not the intended recipient, do not read, copy, or distribute this message or any attachment(s). Instead, please notify the sender and delete the message and the attachment(s). Thank you.
From: Pct <pct-bounces at oppedahl-lists.com> on behalf of Orvis via Pct <pct at oppedahl-lists.com>
Date: Wednesday, February 14, 2024 at 3:28?PM
To: For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com>
Cc: Orvis <orvispc at gmail.com>, David Boundy <DavidBoundyEsq at gmail.com>
Subject: Re: [Pct] Notification/reporting correspondence to clients - PDF vs. email body
The overwhelming amount of day-to-day correspondence should be in an email. We are here to serve, and you risk annoying your clients by making them click to open a pdf with something that could have more efficiently been communicated in the body of the email. Some foreign associate emails come to mind. Ever get an email with an attachment that does not open right on the phone that you spend time trying to view, only to later remember to open the pdf of a one page letter when at a PC to read a one sentence update: "The Honorable hearing officer cancelled the hearing the nth time and will reschedule"?
On Wed, Feb 14, 2024 at 2:22?PM David Boundy via Pct <pct<mailto:pct at oppedahl-lists.com>@oppedahl-lists.com<mailto:pct at oppedahl-lists.com>> wrote:
The list of criteria basically provides the answer -- which characteristic is important to what letter?
I send engagement letters as PDFs (the formality is essential), bills as PDFs (that's what my firm's billing system generates), agendas for monthly meeting in PDF (the formality is psychologically useful) (but during the phone call, I take notes in the Word doc). Routine correspondence (such as reporting either incoming our outgoing correspondence, requesting instrutions for either reply or for 1-year filing deadline) as email body.
On Wed, Feb 14, 2024 at 2:09?PM Carl Oppedahl via Pct <pct<mailto:pct at oppedahl-lists.com>@oppedahl-lists.com<mailto:pct at oppedahl-lists.com>> wrote:
A listserv member asks to post anonymously ...
Hi listmates,
We are currently reconsidering the manner in which we send notifications / reporting correspondence to our clients. I?m referring to correspondence such as
* Reporting filing of a patent application
* Reporting official communication from a patent office
* Reporting an action taken at a patent office, such as responding to an Office Action or filing an IDS
* Notification of upcoming 1-year Paris Convention deadline
* Notification of upcoming 30-month PCT national phase deadline
The factors currently affecting our decision include:
* A PDF letter at least seems more fixed/permanent, and is a discrete ?document?.
* A PDF letter is more aesthetically pleasing, and can give an impression of formality and/or professionalism.
* A PDF letter makes it frustrating for the recipient who is required to take the extra step of opening an attachment in order to read the correspondence.
* An email-body letter conveniently remains available below replies/reminders sent in response to the original correspondence.
* When accompanying the correspondence with a bill for services rendered, sending the correspondence as an email-body letter avoids potential confusion from multiple/mixture of attachments.
I?d be very interested to hear your thoughts on whether it is preferable to send such correspondence in the body of an email, or as a PDF attachment to an email. Perhaps you even have different preferences for different types of correspondence. I?d also be interested to know what you do in reality!
--
Pct mailing list
Pct at oppedahl-lists.com<mailto:Pct at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/pct_oppedahl-lists.com
--
[Image removed by sender.]<https://www.iam-media.com/strategy300/individuals/david-boundy> <https://www.iam-media.com/strategy300/individuals/david-boundy>
David Boundy | Partner | Potomac Law Group, PLLC
P.O. Box 590638, Newton, MA 02459
Tel (646) 472-9737 | Fax: (202) 318-7707
dboundy<mailto:dboundy at potomaclaw.com>@potomaclaw.com<mailto:dboundy at potomaclaw.com> | www.potomaclaw.com<http://www.potomaclaw.com>
Articles at http://ssrn.com/author=2936470<http://ssrn.com/author=2936470>
Click here to add me to your contacts.<https://www.keynect.us/requestCardAccess/USA500DBOUN?>
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Message: 5
Date: Wed, 14 Feb 2024 20:55:58 +0000
From: "Allen Richter (allenr at richterpatent.com)"
<allenr at richterpatent.com>
To: "For users of the PCT and ePCT. This is not for laypersons to seek
legal advice." <pct at oppedahl-lists.com>
Cc: George Jakobsche <george at jakobschelaw.com>, David Boundy
<DavidBoundyEsq at gmail.com>
Subject: Re: [Pct] Notification/reporting correspondence to clients -
PDF vs. email body
Message-ID:
<PA4PR06MB7294FCB22DD1F559B42F4D97C44E2 at PA4PR06MB7294.eurprd06.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
I prefer messages in the email body. I never quite understood the point of attaching PDFs to report PTO correspondence.
The most annoying PDF reporting letters are those that are not OCR-ed/searchable.
And by replacing PDF reporting letter attachments with ?email-body reporting?, still enough attachments remain that need to be handled, sorted and analyzed.
From: Pct <pct-bounces at oppedahl-lists.com> On Behalf Of George Jakobsche via Pct
Sent: Wednesday, 14 February 2024 22:40
To: For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com>
Cc: George Jakobsche <george at jakobschelaw.com>; David Boundy <DavidBoundyEsq at gmail.com>
Subject: Re: [Pct] Notification/reporting correspondence to clients - PDF vs. email body
Agreed. I have two clients that explicitly instructed me to include reports in the bodies of e-mail messages, and not to attach reporting letters to e-mail messages.
Best regards,
George
George Jakobsche Patent Counsel PLLC
39 Old Farm Road, Concord, MA 01742-5234
George at JakobscheLaw.com<mailto:George at JakobscheLaw.com> | +1-978-245-8100
This e-mail is from George Jakobsche Patent Counsel PLLC, a law firm, and it may contain confidential or privileged information. If you are not the intended recipient, do not read, copy, or distribute this message or any attachment(s). Instead, please notify the sender and delete the message and the attachment(s). Thank you.
From: Pct <pct-bounces at oppedahl-lists.com<mailto:pct-bounces at oppedahl-lists.com>> on behalf of Orvis via Pct <pct at oppedahl-lists.com<mailto:pct at oppedahl-lists.com>>
Date: Wednesday, February 14, 2024 at 3:28?PM
To: For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com<mailto:pct at oppedahl-lists.com>>
Cc: Orvis <orvispc at gmail.com<mailto:orvispc at gmail.com>>, David Boundy <DavidBoundyEsq at gmail.com<mailto:DavidBoundyEsq at gmail.com>>
Subject: Re: [Pct] Notification/reporting correspondence to clients - PDF vs. email body
The overwhelming amount of day-to-day correspondence should be in an email. We are here to serve, and you risk annoying your clients by making them click to open a pdf with something that could have more efficiently been communicated in the body of the email. Some foreign associate emails come to mind. Ever get an email with an attachment that does not open right on the phone that you spend time trying to view, only to later remember to open the pdf of a one page letter when at a PC to read a one sentence update: "The Honorable hearing officer cancelled the hearing the nth time and will reschedule"?
On Wed, Feb 14, 2024 at 2:22?PM David Boundy via Pct <pct<mailto:pct at oppedahl-lists.com>@oppedahl-lists.com<mailto:pct at oppedahl-lists.com>> wrote:
The list of criteria basically provides the answer -- which characteristic is important to what letter?
I send engagement letters as PDFs (the formality is essential), bills as PDFs (that's what my firm's billing system generates), agendas for monthly meeting in PDF (the formality is psychologically useful) (but during the phone call, I take notes in the Word doc). Routine correspondence (such as reporting either incoming our outgoing correspondence, requesting instrutions for either reply or for 1-year filing deadline) as email body.
On Wed, Feb 14, 2024 at 2:09?PM Carl Oppedahl via Pct <pct<mailto:pct at oppedahl-lists.com>@oppedahl-lists.com<mailto:pct at oppedahl-lists.com>> wrote:
A listserv member asks to post anonymously ...
Hi listmates,
We are currently reconsidering the manner in which we send notifications / reporting correspondence to our clients. I?m referring to correspondence such as
* Reporting filing of a patent application
* Reporting official communication from a patent office
* Reporting an action taken at a patent office, such as responding to an Office Action or filing an IDS
* Notification of upcoming 1-year Paris Convention deadline
* Notification of upcoming 30-month PCT national phase deadline
The factors currently affecting our decision include:
* A PDF letter at least seems more fixed/permanent, and is a discrete ?document?.
* A PDF letter is more aesthetically pleasing, and can give an impression of formality and/or professionalism.
* A PDF letter makes it frustrating for the recipient who is required to take the extra step of opening an attachment in order to read the correspondence.
* An email-body letter conveniently remains available below replies/reminders sent in response to the original correspondence.
* When accompanying the correspondence with a bill for services rendered, sending the correspondence as an email-body letter avoids potential confusion from multiple/mixture of attachments.
I?d be very interested to hear your thoughts on whether it is preferable to send such correspondence in the body of an email, or as a PDF attachment to an email. Perhaps you even have different preferences for different types of correspondence. I?d also be interested to know what you do in reality!
--
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Pct at oppedahl-lists.com<mailto:Pct at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/pct_oppedahl-lists.com
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David Boundy | Partner | Potomac Law Group, PLLC
P.O. Box 590638, Newton, MA 02459
Tel (646) 472-9737 | Fax: (202) 318-7707
dboundy<mailto:dboundy at potomaclaw.com>@potomaclaw.com<mailto:dboundy at potomaclaw.com> | www.potomaclaw.com<http://www.potomaclaw.com>
Articles at http://ssrn.com/author=2936470<http://ssrn.com/author=2936470>
Click here to add me to your contacts.<https://www.keynect.us/requestCardAccess/USA500DBOUN?>
--
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Message: 6
Date: Wed, 14 Feb 2024 21:08:51 +0000
From: Timothy Snowden <Timothy at thompsonpatentlaw.com>
To: "For users of the PCT and ePCT. This is not for laypersons to seek
legal advice." <pct at oppedahl-lists.com>
Subject: Re: [Pct] Notification/reporting correspondence to clients -
PDF vs. email body
Message-ID:
<DM8PR16MB4358E862F164F7F515C844A9B34E2 at DM8PR16MB4358.namprd16.prod.outlook.com>
Content-Type: text/plain; charset="utf-8"
Another vote for email body reporting. There are some very good foreign associates that still do all their reporting in a separate letter. I've found that a) it takes me and our docketing staff more time, b) it is more frequent for a possible action item to be missed / delayed, c) it takes up more file storage. I have found no positives. We archive the email anyway. If I need it as a document I print to PDF.
That is my experience ? and I'm looking for details. For the bulk of clients ? whether they are executives or small business owners ? a large percentage don't even seem to open attachments reliably ? they expect the action item to be succinctly summarized in the email body.
My guess is that there are some docketing systems being used that generate nice templates but not so much emails? We have at least as many email templates in AppColl as we have document templates, and we always try to put the action item in the email.
I will attach search results or detailed reports as attachments, but I always put a brief exec summary and action item in the email.
________________________________
From: Pct <pct-bounces at oppedahl-lists.com> on behalf of Allen Richter (allenr--- via Pct <pct at oppedahl-lists.com>
Sent: Wednesday, February 14, 2024 2:55 PM
To: For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com>
Cc: Allen Richter (allenr at richterpatent.com) <allenr at richterpatent.com>; David Boundy <DavidBoundyEsq at gmail.com>
Subject: Re: [Pct] Notification/reporting correspondence to clients - PDF vs. email body
I prefer messages in the email body. I never quite understood the point of attaching PDFs to report PTO correspondence.
The most annoying PDF reporting letters are those that are not OCR-ed/searchable.
And by replacing PDF reporting letter attachments with ?email-body reporting?, still enough attachments remain that need to be handled, sorted and analyzed.
From: Pct <pct-bounces at oppedahl-lists.com> On Behalf Of George Jakobsche via Pct
Sent: Wednesday, 14 February 2024 22:40
To: For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com>
Cc: George Jakobsche <george at jakobschelaw.com>; David Boundy <DavidBoundyEsq at gmail.com>
Subject: Re: [Pct] Notification/reporting correspondence to clients - PDF vs. email body
Agreed. I have two clients that explicitly instructed me to include reports in the bodies of e-mail messages, and not to attach reporting letters to e-mail messages.
Best regards,
George
George Jakobsche Patent Counsel PLLC
39 Old Farm Road, Concord, MA 01742-5234
George at JakobscheLaw.com<mailto:George at JakobscheLaw.com> | +1-978-245-8100
This e-mail is from George Jakobsche Patent Counsel PLLC, a law firm, and it may contain confidential or privileged information. If you are not the intended recipient, do not read, copy, or distribute this message or any attachment(s). Instead, please notify the sender and delete the message and the attachment(s). Thank you.
From: Pct <pct-bounces at oppedahl-lists.com<mailto:pct-bounces at oppedahl-lists.com>> on behalf of Orvis via Pct <pct at oppedahl-lists.com<mailto:pct at oppedahl-lists.com>>
Date: Wednesday, February 14, 2024 at 3:28?PM
To: For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com<mailto:pct at oppedahl-lists.com>>
Cc: Orvis <orvispc at gmail.com<mailto:orvispc at gmail.com>>, David Boundy <DavidBoundyEsq at gmail.com<mailto:DavidBoundyEsq at gmail.com>>
Subject: Re: [Pct] Notification/reporting correspondence to clients - PDF vs. email body
The overwhelming amount of day-to-day correspondence should be in an email. We are here to serve, and you risk annoying your clients by making them click to open a pdf with something that could have more efficiently been communicated in the body of the email. Some foreign associate emails come to mind. Ever get an email with an attachment that does not open right on the phone that you spend time trying to view, only to later remember to open the pdf of a one page letter when at a PC to read a one sentence update: "The Honorable hearing officer cancelled the hearing the nth time and will reschedule"?
On Wed, Feb 14, 2024 at 2:22?PM David Boundy via Pct <pct<mailto:pct at oppedahl-lists.com>@oppedahl-lists.com<mailto:pct at oppedahl-lists.com>> wrote:
The list of criteria basically provides the answer -- which characteristic is important to what letter?
I send engagement letters as PDFs (the formality is essential), bills as PDFs (that's what my firm's billing system generates), agendas for monthly meeting in PDF (the formality is psychologically useful) (but during the phone call, I take notes in the Word doc). Routine correspondence (such as reporting either incoming our outgoing correspondence, requesting instrutions for either reply or for 1-year filing deadline) as email body.
On Wed, Feb 14, 2024 at 2:09?PM Carl Oppedahl via Pct <pct<mailto:pct at oppedahl-lists.com>@oppedahl-lists.com<mailto:pct at oppedahl-lists.com>> wrote:
A listserv member asks to post anonymously ...
Hi listmates,
We are currently reconsidering the manner in which we send notifications / reporting correspondence to our clients. I?m referring to correspondence such as
* Reporting filing of a patent application
* Reporting official communication from a patent office
* Reporting an action taken at a patent office, such as responding to an Office Action or filing an IDS
* Notification of upcoming 1-year Paris Convention deadline
* Notification of upcoming 30-month PCT national phase deadline
The factors currently affecting our decision include:
* A PDF letter at least seems more fixed/permanent, and is a discrete ?document?.
* A PDF letter is more aesthetically pleasing, and can give an impression of formality and/or professionalism.
* A PDF letter makes it frustrating for the recipient who is required to take the extra step of opening an attachment in order to read the correspondence.
* An email-body letter conveniently remains available below replies/reminders sent in response to the original correspondence.
* When accompanying the correspondence with a bill for services rendered, sending the correspondence as an email-body letter avoids potential confusion from multiple/mixture of attachments.
I?d be very interested to hear your thoughts on whether it is preferable to send such correspondence in the body of an email, or as a PDF attachment to an email. Perhaps you even have different preferences for different types of correspondence. I?d also be interested to know what you do in reality!
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Tel (646) 472-9737 | Fax: (202) 318-7707
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Message: 7
Date: Wed, 14 Feb 2024 15:01:52 -0700
From: Carl Oppedahl <carl at oppedahl.com>
To: for users of the Patent Cooperation Treaty
<pct at oppedahl-lists.com>
Subject: [Pct] naming the applicant at national/regional entry
Message-ID: <1cb3a901-3b04-4688-a614-91e06f96587e at oppedahl.com>
Content-Type: text/plain; charset="utf-8"; Format="flowed"
A listserv member asks to post anonymously ...
I have a question for the group about naming the applicant at
national/regional entry.
Here?s the fact pattern:
1. Priority Application is filed in name of Company A and Company B.
2. PCT Application filed in name of Company A and Company B.
3. Agreement between company dated prior to PCT Application filing date
states that PCT application shall be filed in the name of Company B
only.
4. Same Agreement between Company A and Company B states that
national/regional stage applications are to be filed in the name of
Company B; Company B will own all applications/issued patents.
5. Company B converted from a CORP to an LLC and changed its name to
Company B LLC.
6. Company B LLC assigned its rights to Company C.
7. So, it seems that Company A should not have been an Applicant on the
PCT Application at all.
I would like to file all national/regional stage applications in the
name of Company C.
Can this be done?
If so, how best do I accomplish this task?
Please consider the situation*s* where the Agreement between Company A
and Company B is (1) has a clear assignment of priority rights under
Paris, or (2) is completely silent on priority rights,.
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Message: 8
Date: Wed, 14 Feb 2024 17:35:25 -0700
From: Carl Oppedahl <carl at oppedahl.com>
To: For users of the PCT and "ePCT." This is not for laypersons to
seek legal "advice." <pct at oppedahl-lists.com>
Subject: Re: [Pct] Notification/reporting correspondence to clients -
PDF vs. email body
Message-ID: <bb33a424-425f-44a4-a808-b86a3d49b93a at oppedahl.com>
Content-Type: text/plain; charset="utf-8"; Format="flowed"
On 2/14/2024 2:08 PM, Timothy Snowden via Pct wrote:
> Another vote for email body reporting. There are some very good
> foreign associates that still do all their reporting in a separate
> letter. I've found that a) it takes me and our docketing staff more
> time, b) it is more frequent for a possible action item to be missed /
> delayed, c) it takes up more file storage. I have found no positives.
Yes the foreign agents who send a one-line email that says please see
attached (PDF) letter of instructions.?? It always makes lots and lots
of extra work for me.? Invariably what happens is I need to reply to it,
and it says five or a dozen things in the PDF letter, each of which
would benefit from my interleaved responses.?? And the PDF letter is
sometimes an image scan, because (I guess) they feel it is important to
capture the blue-ink physical signature.
So when the time comes for me to reply, with my interleaved
topic-specific responses, I have to convert the PDF letter into ordinary
text that shows up as "quoted" text in the body of my response.? And I
then interject my topic-specific responses.
If the instructions from foreign counsel had been /*in the body of*/
their email to me, the response from me might have taken five or ten
minutes.? Instead the response from me takes twenty or thirty minutes.
The extra time does find its way into the invoices that I send to those
foreign firms.? So I don't actually lose money on that time burden.
But to take Timothy's point, yes the extra-steps-required process of
dealing with the PDF instructions does lead to extra opportunities for
me to miss something.? Like the little place, tucked away in some corner
of the PDF instructions letter, where they quietly mention that the
applicant is or is not a small entity.? Or whatever.
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Message: 9
Date: Thu, 15 Feb 2024 09:57:39 +0900
From: Gerry Peters <gerrypeters at jttpatent.com>
To: "For users of the PCT and ePCT. This is not for laypersons to seek
legal advice." <pct at oppedahl-lists.com>
Subject: Re: [Pct] Notification/reporting correspondence to clients -
PDF vs. email body
Message-ID: <20240215095739.b23d8da7dea86145aca33b49 at jttpatent.com>
Content-Type: text/plain; charset=US-ASCII
I encourage clients to keep privileged/confidential communications out
of email and to correspond instead via secure server, for which I
find doc or txt files to be far more convenient than pdf. I also prefer
having a shared folder hierarchy that tracks case history rather than
having to hunt for the latest version of a draft which may be buried in
an email attachment. I note that large companies that have experience
with US discovery procedures also tend to use a similar system and
avoid putting sensitive content in email.
---Gerry
------------------------------
Message: 10
Date: Wed, 14 Feb 2024 18:16:22 -0800
From: Krista Jacobsen <krista at jacobseniplaw.com>
To: "For users of the PCT and ePCT. This is not for laypersons to seek
legal advice." <pct at oppedahl-lists.com>
Subject: Re: [Pct] Notification/reporting correspondence to clients -
PDF vs. email body
Message-ID:
<CAN7twq1dzdqBEjN_Zrps1xOxEDPqTLHhObBObjRxhRwEbXd-5w at mail.gmail.com>
Content-Type: text/plain; charset="utf-8"
On the other hand, when information is transmitted via e-mail, there is
clear evidence of a communication between attorney and client, and you can
see exactly what was communicated. Although an adversary might argue that
the communication was not privileged because it wasn't confidential (e.g.,
maybe someone was cc'd who shouldn't have been cc'd) and/or wasn't made for
the purpose of giving or seeking legal advice (the more likely argument,
IMO), at least the "communication from/to attorney to/from client" part of
attorney-client privilege is easy to prove.
When using a secure server, how do you prove that there was in fact a
communication between attorney and client, and what was communicated? I
wouldn't think mere client access to the server where drafts are kept would
be enough. (If it were, you could shield grandma's secret meatloaf recipe
from discovery simply by saving a copy to your secure server.) Do you track
logins and file access in order to be able to prove that there was
communication of a particular document?
Maybe it is well known how to do this, and I'm just not up on it. But it
seems like generating a privilege log would be a lot more work and also
would be more likely to be challenged.
I am also on Team No Attachments except for things like engagement letters,
termination letters, invoices, etc.
Best regards,
Krista
------------------------------------------
Krista S. Jacobsen
Attorney and Counselor at Law
Jacobsen IP Law
krista at jacobseniplaw.com
T: 408.455.5539
www.jacobseniplaw.com<http://www.jacobseniplaw.com>
On Wed, Feb 14, 2024 at 5:01?PM Gerry Peters via Pct <pct at oppedahl-lists.com>
wrote:
> I encourage clients to keep privileged/confidential communications out
> of email and to correspond instead via secure server, for which I
> find doc or txt files to be far more convenient than pdf. I also prefer
> having a shared folder hierarchy that tracks case history rather than
> having to hunt for the latest version of a draft which may be buried in
> an email attachment. I note that large companies that have experience
> with US discovery procedures also tend to use a similar system and
> avoid putting sensitive content in email.
> ---Gerry
>
> --
> Pct mailing list
> Pct at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/pct_oppedahl-lists.com
>
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Message: 11
Date: Thu, 15 Feb 2024 11:58:26 +0900
From: Gerry Peters <gerrypeters at jttpatent.com>
To: "For users of the PCT and ePCT. This is not for laypersons to seek
legal advice." <pct at oppedahl-lists.com>
Subject: Re: [Pct] Notification/reporting correspondence to clients -
PDF vs. email body
Message-ID: <20240215115826.63584079abf58cfab61633d6 at jttpatent.com>
Content-Type: text/plain; charset=US-ASCII
Those are good points, Krista, but I think there is at least one case
(federal case against Snowden's email provider) in which US government
took position that there can be no expectation of privacy where 3rd
party service such as email or fax service is used (ridiculous
position but it is what it is). Conversely, where US government
requires secrecy, I remember seeing regulations specifying exactly what
sort of end-to-end encryption is sufficient (3rd party service provider
can't have ability to decrypt). While you make a good point about
timestamps and recordkeeping if your goal is to persuade a court your
client is entitled to privilege, if possession is 9/10's of the law
and privilege belongs to the client, it gives me a warm fuzzy feeling
to know that there is no 3rd party that can be pressured to betray
its users. Also, besides privilege, there is the issue of keeping
material secret until a foreign filing license has issued, and for
that I think plaintext email or any email that can be decrypted by a
3rd party is probably insufficient where communications are happening
internationally or with potential access by noncitizens.
---Gerry
------------------------------
Message: 12
Date: Thu, 15 Feb 2024 14:29:26 +0000
From: Timothy Snowden <Timothy at thompsonpatentlaw.com>
To: "For users of the PCT and ePCT. This is not for laypersons to seek
legal advice." <pct at oppedahl-lists.com>
Subject: Re: [Pct] Notification/reporting correspondence to clients -
PDF vs. email body
Message-ID:
<DM8PR16MB4358C108AEA94E3ABFA91996B34D2 at DM8PR16MB4358.namprd16.prod.outlook.com>
Content-Type: text/plain; charset="us-ascii"
But most secure servers are themselves third party services? Most fileservers are hosted outside of our direct and sole control.
Also, there is secure email (Proton is a favorite among some of our software clients) and/or other messaging services (like Signal). Practically, they would be as secure as a secure server. I'm guessing that if a party wants to make the argument that using 3rd party services waives your expectation of privacy, then the cat's out of the bag (docketing, remote file server, virtual server, AWS / Azure / Google cloud).
Just my barely-connected thoughts!
________________________________
From: Pct <pct-bounces at oppedahl-lists.com> on behalf of Gerry Peters via Pct <pct at oppedahl-lists.com>
Sent: Wednesday, February 14, 2024 8:58 PM
To: For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com>
Cc: Gerry Peters <gerrypeters at jttpatent.com>
Subject: Re: [Pct] Notification/reporting correspondence to clients - PDF vs. email body
Those are good points, Krista, but I think there is at least one case
(federal case against Snowden's email provider) in which US government
took position that there can be no expectation of privacy where 3rd
party service such as email or fax service is used (ridiculous
position but it is what it is). Conversely, where US government
requires secrecy, I remember seeing regulations specifying exactly what
sort of end-to-end encryption is sufficient (3rd party service provider
can't have ability to decrypt). While you make a good point about
timestamps and recordkeeping if your goal is to persuade a court your
client is entitled to privilege, if possession is 9/10's of the law
and privilege belongs to the client, it gives me a warm fuzzy feeling
to know that there is no 3rd party that can be pressured to betray
its users. Also, besides privilege, there is the issue of keeping
material secret until a foreign filing license has issued, and for
that I think plaintext email or any email that can be decrypted by a
3rd party is probably insufficient where communications are happening
internationally or with potential access by noncitizens.
---Gerry
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