[Patentcenter] Refusal to correct priority claim listing

[Scott Nielson]

The ADS instructions require domestic benefit claims to be listed in order of filing from most recent at the top to oldest at the bottom or they will not be recognized the benefit claim (happened to me last fall because I let Patent Center Autofill the benefit claim and the programmers didn't follow the ADS instructions). They probably aren't legally binding but who will sue the PTO  to get them overturned?

In Robert's situation, it doesn't really matter whether they have the force of rules because he followed them.


Scott Nielson

801-660-4400

________________________________
From: Patentcenter <patentcenter-bounces at oppedahl-lists.com> on behalf of Dan Feigelson via Patentcenter <patentcenter at oppedahl-lists.com>
Sent: Tuesday, June 10, 2025 6:29 PM
To: For bug reports, feature requests, and tips and tricks about Patent Center. <patentcenter at oppedahl-lists.com>
Cc: Dan Feigelson <djf at iliplaw.com>
Subject: Re: [Patentcenter] Refusal to correct priority claim listing


This has probably been discussed here before, but do those ADS instructions have the force of Rules, i.e. were they subject to notice and comment rulemaking? If not, why are they binding on us?

On Tue, Jun 10, 2025 at 10:10 PM Scott Nielson via Patentcenter <patentcenter at oppedahl-lists.com<mailto:patentcenter at oppedahl-lists.com>> wrote:
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://gcfagjf.r.bh.d.sendibt3.com/tr/cl/2WU6PDimid2jBN27fP3J3CmmLdLEQTiqU6UtEeBRgxzwwaaMPa3XNGFlS-kVKXHlFgAsTD-u6EF3u0mPHWR51asZWXngs46Bbnw7F51FYIQZzSdwEPTkFYlWfDynjehioitBhZYHuWIhiFkq8shDk_GiairEbtbcqyqWtb16YX-vEBR0V4SV24EqTPnqVSpLQRdfpIvPca9VkPOVUlqC4FmUXFeWTjwb1x7T_oGWbO_aIrloRI5eztd0tyHfS9wwLXb6FGOv-eQ9eQZcrbIZILiWoSNage0p_Vcj4spmkwf2-jiIn3_GEQwRPEWFZfJp1zQAdOb5aHSh0qb20NbK1C4G9aya-5e7JkPY---UiqPfcz1GOpQNmL2B5gznAK-aPxhtbfkSOqesrgyw_nB4ojhTQo-jtoRBNEUu40xPd1YdYSB-uWCQQsZl_2OidJFAsWABxmTIQv6qQR0> 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:ii_1975c629da6cb971f161]

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

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