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

Tue Aug 6 15:17:12 UTC 2024

We have a Word version of an ADS that we use to submit a corrected ADS, and we only include the sections in which information has changed.  Also, we file a Request for Corrected Filing Receipt with the Corrected ADS explaining what changes we are making.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Carl Oppedahl via Patentpractice
Sent: Tuesday, August 6, 2024 11:12 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: Re: [Patentpractice] venting - failure to download priority document from DAS

Let's talk about three worlds:

  *   how it would be if the USPTO had taken WIPO's example of how to do it right
  *   how the USPTO says you should proceed
  *   what your actual options are

First, how it would be if the USPTO could ever admit that there are learning opportunities in looking to see how other patent offices do stuff.  Which of course the USPTO cannot do.   Suppose that you have already filed a PCT application and you are claiming priority from that exact same FPA.  And only now have you come into possession of the DAS Access Code.  What you do is, you log in at ePCT and you click around to do an "action" in ePCT to request retrieval of the electronic certified copy of the FPA.  And then you provide the DAS Access Code.  And ePCT then runs off in real time and cross-checks against DAS to make sure the DAS Access Code is correct (and cross-checks the application number and the filing date and the two-letter code for the Office of First Filing).  And if you get a smiley face, you know you are all done.  Nothing to worry about further.  (See for example https://patentcenter-tickets.oppedahl.com/patentcenter-feature-requests/#FR20 and FR21 and FR22.)  Note that with this approach, nobody at any patent office is required to hand-key anything.  No need to worry that a B might look like an 8 or vice versa.

Second, how the USPTO says you should proceed.  See https://blog.oppedahl.com/uspto-has-eviscerated-form-pto-sb-38/ where I observe that the USPTO has eviscerated Form PTO/SB/38.  So the only remaining path is to hand in a corrected ADS.  Keep in mind that what the USPTO has in mind is that you will hand in all eight pages of your ADS, the only change being that you inserted the DAS access code and you underscored the change.  Never mind that if you somehow cram all of this information (including the underscore) into the little tiny box for the DAS access code, it will be too small to read the characters, especially after Patent Center halftones it and resamples the dots-per-inch resolution.  And never mind that this requires USPTO personnel to somehow make out the characters so that USPTO personnel can hand-key everything into some other system at the USPTO.  Never mind that a poorly trained USPTO person might think that the "zero" in the DAS Access Code is actually a "letter oh" and thus the retrieval attempt would fail.

Oh and never mind that the USPTO clerk who goes on the treasure hunt through all eight pages of your ADS, looking to see "where are the strike-throughs and underscores", might miss it.

Anyway, now we turn to the actual options.  One actual option is, download the legacy Form SB38 from the blog posting above.  Fill in the blanks.  E-file it at USPTO.  If need be, send a followup nudge to PDX at uspto.gov<mailto:PDX at uspto.gov>.
On 8/6/2024 8:43 AM, Krista Jacobsen via Patentpractice wrote:
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<mailto:krista at jacobseniplaw.com>
T:  408.455.5539
www.jacobseniplaw.com<http://www.jacobseniplaw.com>

On Thu, May 16, 2024 at 9:52 AM Erin Geraghty via Patentpractice <patentpractice at oppedahl-lists.com<mailto: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<mailto:ering at browdyneimark.com>
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: Randall Svihla <rsvihla at nsiplaw.com<mailto: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<mailto: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<mailto:patentpractice at oppedahl-lists.com>>; Dan Feigelson <djf at iliplaw.com<mailto:djf at iliplaw.com>>
Cc: Linda Zaveta <lzaveta at mtiplaw.com<mailto: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
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto: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<mailto:djf at iliplaw.com>>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Erin Geraghty <ErinG at browdyneimark.com<mailto: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<mailto:ering at browdyneimark.com>
https://link.edgepilot.com/s/9dfe1008/kXVrrzwvxEy9arq3DTQX1A?u=http://www.browdyneimark.com/

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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<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: Dan Feigelson <djf at iliplaw.com<mailto:djf at iliplaw.com>>
Subject: [Patentpractice] venting - failure to download priority document from DAS

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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