[Patentcenter] Patent Center Fun with Numbers - Image Date, Mailing Date; Notification Date; Filename Date

Tue Nov 28 18:54:45 UTC 2023

This office action does not have a "MAIL DATE" on the face of the office action (PTOL-90A).
It does have a NOTIFICATION DATE, however.

[cid:image001.png at 01DA2202.70DC3690]

We understand that the Notification Date listed on the PTOL-90A form is the controlling date, but wish the USPTO made things easier for us by not providing four different dates each way you look at it.
That leads to confusion and potential docketing error (although at least that error would be on the safe side, meaning earlier rather than later and thus still within the SSP).
There is also risk of issues with the USPTO and not just with an examiner.
I can, for example, foresee some helpful USPTO person helping themselves to an extension of time fee that is not needed and then having to go through the process of requesting a refund.

From: Jim Larsen <jim at larsen-ip.com>
Sent: Tuesday, November 28, 2023 1:42 PM
To: For bug reports, feature requests, and tips and tricks about Patent Center. <patentcenter at oppedahl-lists.com>
Cc: Alan Taboada <ataboada at mtiplaw.com>
Subject: Re: Patent Center Fun with Numbers - Image Date, Mailing Date; Notification Date; Filename Date

The "MAIL DATE" on the face of the office action (PTOL-90A) is the only relevant start date for the statutory period, consistent with the identified Federal Register entry and multiple MPEP sections.  I think it would be clearly arguable if any other interpretation was championed by an examiner, and I've never had an issue filing a response on that MAIL DATE.

E.g.:
[cid:image004.png at 01DA2201.E1B8FE80]

James C. Larsen
Attorney
Larsen IP PLLC
p: 425.298.6846
e: jim at Larsen-IP.com<mailto:jim at Larsen-IP.com>
w. https://link.edgepilot.com/s/ea51d830/ejnp8Q2RSEuN8kdopKkfog?u=http://www.larsen-ip.com/

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From: Patentcenter <patentcenter-bounces at oppedahl-lists.com<mailto:patentcenter-bounces at oppedahl-lists.com>> on behalf of Alan Taboada via Patentcenter <patentcenter at oppedahl-lists.com<mailto:patentcenter at oppedahl-lists.com>>
Date: Tuesday, November 28, 2023 at 10:10 AM
To: patentcenter at oppedahl-lists.com<mailto:patentcenter at oppedahl-lists.com> <patentcenter at oppedahl-lists.com<mailto:patentcenter at oppedahl-lists.com>>
Cc: Alan Taboada <ataboada at mtiplaw.com<mailto:ataboada at mtiplaw.com>>
Subject: [Patentcenter] Patent Center Fun with Numbers - Image Date, Mailing Date; Notification Date; Filename Date
All -

I believe this was discussed previously, but not sure to what extent.
I am looking at an office action from the USPTO right now and I see the following dates in Patent Center all associated with this single office action.
Apparently, this office action has:

  1.  A "Date Mailed" of  17 November 2023;
  2.  A "Notification Date" of 11/22/2023;
  3.  An "Image Date" in the Correspondence section of Patent Center of 11/20/2023; and
  4.  The filename of the document when downloaded includes a date stamp of 11-21-2023

So that same document apparently has four different dates associated with it (November 17, 20, 21, and 22).

The USPTO Correspondence Notification emailed to us indicating this office action arrived on 11/22 and includes a "Mailroom Date" field of 11/22 - the same as the "Notification Date" on the action.

I believe that the shortened statutory period should run from the date we were notified of the action, and not the phony "Date Mailed" that was 5 days earlier.
However, the Action explicitly states that the shortened statutory period runs from the MAILING DATE (the earliest listed date), rather than the date we were actually notified of the Action.

A quick internet search yielded this Federal Register citation from April 5, 2023 relating to the Patent Center Electronic Office Action Program (https://link.edgepilot.com/s/f3b5eec4/OOL911VLU0OUtjiI0c_U2Q?u=https://www.federalregister.gov/documents/2023/04/05/2023-07087/patent-center-electronic-office-action-program).

The notice states:
4. When does the time period for reply start?
Generally, any time period for reply set forth in the Office communication will commence on the mailroom/notification date indicated on the form PTOL-90 accompanying the Office communication. The mailroom/notification date is treated like the mailing date of a paper communication. More specifically, for Office actions under 35 U.S.C. 132(a)<https://link.edgepilot.com/s/857355b2/9enrMI7jGkWvnbD5vyGMQw?u=https://www.govinfo.gov/link/uscode/35/132>, the mailroom/notification date is the date of the notice under 35 U.S.C. 133<https://link.edgepilot.com/s/4c540b34/e2N4lwWA8kOlERYDWpwLnQ?u=https://www.govinfo.gov/link/uscode/35/133>. See Electronic Office Action, 1343 Off. Gaz. Pat. Office at 46. The mailroom/notification date will also be considered the date of mailing of the correspondence for all other purposes ( e.g.,37 CFR 1.71(g)(2)<https://link.edgepilot.com/s/438ff2d6/FrsD_jMU30C9dK_0XOsJ_w?u=https://www.ecfr.gov/current/title-37/section-1.71%23p-1.71(g)(2)>, 1.97(b)<https://link.edgepilot.com/s/4cd7f66d/Wo-0sJHaKU2mGyHVfeAM2g?u=https://www.ecfr.gov/current/title-37/section-1.97%23p-1.97(b)>, 1.701<https://link.edgepilot.com/s/dccec34f/iDzBiX6hbk6OMmV79ywzkA?u=https://www.ecfr.gov/current/title-37/section-1.701>-1.705).

So I think it is correct that the shortened statutory period runs from the Notification Date, but still feel nervous about potential problems if this response is submitted beyond a date calculated from the earlier Mailing Date.

Perhaps there are good reasons to have all of these different dates from the USPTO's perspective.
However, from a practitioner's perspective, I would think that all of these dates are irrelevant except for the Notification Date - which is the only date that matters.
Do I care when the Examiner supposedly completed work and stamped a "Mailing Date" on the action?
Do I care when the USPTO scans the image?
Do I care about the date in the filename of the document saved in Patent Center?
I think the answer to all of those are: No, I do not care in the least.

That being the case, it would be helpful for all of those other dates to be hidden from my view to prevent confusion or worse, docketing errors.

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