[Patentcenter] Refusal to correct priority claim listing

[Scott Nielson]

The USPTO pointed out that there was an error in the format used to present the PCT application numbers in which five, instead of six, digits were shown after the four digit year.
I assume your PCT benefit claims are domestic benefit claims—i.e., entered in the domestic benefit section of the ADS. If so, then the ADS instructions<https://view.officeapps.live.com/op/view.aspx?src=https%3A%2F%2Fwww.uspto.gov%2Fsites%2Fdefault%2Ffiles%2Fdocuments%2Faia_ads_form_inst.docx> are silent about the required format (MPEP 601.05 is silent as well). However, the instructions say this about claiming foreign priority to a PCT application:

 [cid:879a6306-0d4b-4c40-85f2-40bddd04b7c9]

I would file a request for corrected filing receipt and argue: (i) there is no requirement that PCT applications must be presented with six digits after the year and (ii) the only format requirement is in the ADS instructions document and the original ADS followed the format (even though the format was for claiming foreign priority to PCT applications, it should be acceptable given that no format is specified by claiming domestic benefit to PCT applications.


Scott Nielson

801-660-4400

________________________________
From: Patentcenter <patentcenter-bounces at oppedahl-lists.com> on behalf of Robert Lelkes via Patentcenter <patentcenter at oppedahl-lists.com>
Sent: Tuesday, June 10, 2025 11:42 AM
To: patentcenter at oppedahl-lists.com <patentcenter at oppedahl-lists.com>
Cc: Robert Lelkes <mail at lelkes-ip.com>
Subject: [Patentcenter] Refusal to correct priority claim listing




Submitted by Robert Lelkes, US patent attorney:



I filed a CIP application prior to the 1/19/25 date on which 37 CFR 1.17(w) went into effect to avoid the additional fee. The USPTO issued an Official filing receipt after 1/19/25 with an incomplete list of applications from which the CIP application claimed benefit.  The USPTO pointed out that there was an error in the format used to present the PCT application numbers in which five, instead of six, digits were shown after the four digit year.  When we submitted a corrected ADS, we received a communication stating that we must now pay the fee due under 37 CFR 1.17(w) and the petition fee for late submission of the claim to priority benefit.



Have any of you seen this kind of thing from an Application Assistance Unit?  If so, have you been successful with overcoming it with a petition under 37 CFR 1.182 or 1.183?




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