[Patentpractice] venting - failure to download priority document from DAS

Tue Aug 6 14:43:30 UTC 2024

Hi all,

I have the same question as Erin, and I cannot find an answer. Am I being
dumb?

An application ("FPA") was filed in a non-U.S. office, but one that
participates in DAS.
A U.S. non-provisional application ("USNP") was filed and claims priority
to FPA.
The DAS code for FPA was not provided by the foreign associates before USNP
was filed, so the DAS code does not appear in the field of the ADS.
The 4/16 deadline is approaching, and I need to request that the USPTO
retrieve a certified copy of FPA from DAS. (Will also be submitting an
interim copy in case they dawdle.)

It seems like it should be simple to do this ("Hi, here's the DAS code for
the application you already know about, please retrieve it"), and yet I
cannot figure out how.

Years ago when I had to do this, I submitted an SB/38 form, which had an
Option B that allowed the DAS code to be provided. But that form is dated
2017 and seems to have been abrogated.

The current SB/38 form only "requests that the USPTO retrieve a copy of the
following foreign priority application(s) *that was not filed in a foreign
intellectual property office participating with the USPTO in a priority
document exchange agreement* ('Participating Office') but was submitted in
an application subsequently filed with a Participating Office that permits
the USPTO to retrieve such copy."

That is not my situation. I just need to provide a DAS code so the USPTO
can retrieve the application from another Participating Office.

Do I submit a "corrected" ADS to provide the DAS code in the foreign
priority info section?

Is there a different form to do this that I have missed? I looked through
the list of forms provided by the USPTO and did not see anything that
seemed applicable.

Thanks in advance.

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

On Thu, May 16, 2024 at 9:52 AM Erin Geraghty via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> That form seems to only allow for obtaining from an EP/JP case in which
> the priority application was filed, right?   It does not mention obtaining
> the document from WIPO.
>
>
>
> *Please retrieve the foreign priority application identified in Column C,
> a copy of which is contained in the EP or JP application identified in
> Columns A and B:*
>
>
>
> There does not appear to be an actual form for requesting the PTO pull the
> priority document via DAS?  Am I missing something?
>
>
>
> Apologies if this is a stupid question, maybe I need more caffeine.
>
>
>
>
>
> Regards,
>
> Erin D. Geraghty
>
> Office Manager
>
> Browdy and Neimark, PLLC
>
> 1625 K Street, N.W., Suite* 550*
>
> Washington, D.C.  20006
>
> Tel:  443-386-7495
>
> Fax:  202-737-3528
>
> ering at browdyneimark.com
>
> www.browdyneimark.com
>
>
>
> PLEASE NOTE OUR NEW SUITE NUMBER!
>
>
>
> *This message and any attached files is intended for the above-named
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>
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Randall Svihla via Patentpractice
> *Sent:* Thursday, May 16, 2024 11:50 AM
> *To:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Randall Svihla <rsvihla at nsiplaw.com>
> *Subject:* Re: [Patentpractice] venting - failure to download priority
> document from DAS
>
>
>
> Have you ever try just filing a PTO/SB/38 Request to Retrieve Electronic
> Priority Application(s) (the old form with options A and B) to see if they
> would retrieve it?
>
>
>
>
>
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Linda Zaveta via Patentpractice
> *Sent:* Thursday, May 16, 2024 10:24 AM
> *To:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>; Dan Feigelson <
> djf at iliplaw.com>
> *Cc:* Linda Zaveta <lzaveta at mtiplaw.com>
> *Subject:* Re: [Patentpractice] venting - failure to download priority
> document from DAS
>
>
>
> It’s even more frustrating when they check the box on the OA or NOA saying
> it was received and it hasn’t been.  This happens a lot and when we check
> Patent Center, it isn’t there.  Then we have to try and get in touch with
> someone to request that they retrieve it.
>
>
>
> *Sincerely**,*
>
> *Linda*
>
> Linda Zaveta | Paralegal
>
> *MOSER TABOADA*
>
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> lzaveta at mtiplaw.com
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> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Erin Geraghty via Patentpractice
> *Sent:* Thursday, May 16, 2024 10:05 AM
> *To:* Dan Feigelson <djf at iliplaw.com>; For patent practitioners. This is
> not for laypersons to seek legal advice. <
> patentpractice at oppedahl-lists.com>
> *Cc:* Erin Geraghty <ErinG at browdyneimark.com>
> *Subject:* Re: [Patentpractice] venting - failure to download priority
> document from DAS
>
>
>
> I agree this is incredibly frustrating!  Especially as they do not notify
> you when they have successfully obtained it via DAS except by checking a
> box on an OA or NOA.  It is even more troubling when for some reason they
> run into an issue and do not let you know they have encountered an issue.
>
>
>
> Also, when they have not properly downloaded it, the responsible parties
> at the PTO are less than helpful when trying to figure out what happened.
>
>
>
> Regards,
>
> Erin D. Geraghty
>
> Office Manager
>
> Browdy and Neimark, PLLC
>
> 1625 K Street, N.W., Suite* 550*
>
> Washington, D.C.  20006
>
> Tel:  443-386-7495
>
> Fax:  202-737-3528
>
> ering at browdyneimark.com
>
>
> https://link.edgepilot.com/s/9dfe1008/kXVrrzwvxEy9arq3DTQX1A?u=http://www.browdyneimark.com/
>
>
>
> PLEASE NOTE OUR NEW SUITE NUMBER!
>
>
>
> *This message and any attached files is intended for the above-named
> recipient(s). This message may be an attorney-client communication
> containing confidential and priviliged information. If the reader of this
> message is not the intended recipient or an agent responsible for delivery
> of the message to the intended recipient, you are hereby notified that you
> have received this message in error; and that any review, dissemination,
> distribution or copying is prohibited. If you have received this message in
> error, please destroy any copies thereof, and notify us immediately. Thank
> you*.
>
>
>
>
>
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Dan Feigelson via Patentpractice
> *Sent:* Thursday, May 16, 2024 8:22 AM
> *To:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Dan Feigelson <djf at iliplaw.com>
> *Subject:* [Patentpractice] venting - failure to download priority
> document from DAS
>
>
>
> [image: Image removed by sender.]
>
> Filed an application that claims priority only from a non-US application.
> Foreign priority app is in DAS (I checked with WIPO). Provided the USPTO
> with the foreign application no. and the DAS retrieval code on an ADS at
> the time of filing. Got the filing receipt, and it acknowledges the foreign
> priority claim and that the DAS code was provided, and says that the USPTO
> "will attempt to electronically retrieve" the priority doc. But of course,
> the p.d. isn't yet in the electronic file.
>
>
>
> That the PTO waits to retrieve the p.d. is not news, Carl and others have
> written about it. But it still bugs me: how hard would it be for the PTO to
> retrieve the document NOW instead of waiting?
>
>
>
> Dan
>
>
>
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