[Patentcenter] Refusal to correct priority claim listing

[Robert Lelkes]

Thank you, Scott.  I will try this and let everyone know how this turns out.


Appreciatively, 

Bob

 

From: Scott Nielson <scnielson at outlook.com> 
Sent: Tuesday, June 10, 2025 9:10 PM
To: patentcenter at oppedahl-lists.com
Cc: Robert Lelkes <mail at lelkes-ip.com>
Subject: Re: Refusal to correct priority claim listing

 

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.g
ov%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:

 

 

 

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
<mailto:patentcenter-bounces at oppedahl-lists.com> > on behalf of Robert
Lelkes via Patentcenter <patentcenter at oppedahl-lists.com
<mailto:patentcenter at oppedahl-lists.com> >
Sent: Tuesday, June 10, 2025 11:42 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: Robert Lelkes <mail at lelkes-ip.com <mailto: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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