[Patentpractice] venting - failure to download priority document from DAS
Carl Oppedahl
carl at oppedahl.com
Tue Aug 6 15:40:14 UTC 2024
What he said. It is super important to set up tracking in the DAS
system for every would-be priority document.
On 8/6/2024 9:09 AM, Randall Svihla via Patentpractice wrote:
>
> Hi, Alan
>
> Sometime the USPTO misreads the access code (B for 8 or 8 for B, etc.)
> and submits the wrong access code,Sometimes the client gives you the
> wrong access code.By setting up tracking in the WIPO Digital Access
> Service, you can see these errors.
>
> Best regards.
>
> Randall S. Svihla
>
> *From:*Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Alan Taboada via Patentpractice
> *Sent:* Tuesday, August 6, 2024 11:04 AM
> *To:* For patent practitioners. This is not for laypersons to seek
> legal advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Alan Taboada <ataboada at mtiplaw.com>
> *Subject:* Re: [Patentpractice] venting - failure to download priority
> document from DAS
>
> In the past, we have submitted a corrected ADS with the DAS code provided.
>
> However, I would love to know if there is a better way to get this
> done as, in our experience, the USPTO has been failing to retrieve
> priority applications much more frequently and with greater and
> greater hoops to be jumped through to try to get the USPTO to
> electronically retrieve the certified copy of the priority document.
> In some cases, we needed to resort to obtaining a paper version of the
> certified copy ourselves to provide to the USPTO because the USPTO is
> incapable of obtaining it.
>
> Having seen Randall’s email prior to hitting send, we will try that to
> see if that gives us better results (thanks, Randall)!
>
> *From:*Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Krista Jacobsen via Patentpractice
> *Sent:* Tuesday, August 6, 2024 10:44 AM
> *To:* For patent practitioners. This is not for laypersons to seek
> legal advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Krista Jacobsen <krista at jacobseniplaw.com>
> *Subject:* Re: [Patentpractice] venting - failure to download priority
> document from DAS
>
> 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
>
> https://link.edgepilot.com/s/ecbebddd/1VqL_JWTpkKQnA9grqI70g?u=http://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 <mailto:ering at browdyneimark.com>
>
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>
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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*
>
> 1040 Broad Street, Suite 103
>
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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 <mailto:ering at browdyneimark.com>
>
> https://link.edgepilot.com/s/9dfe1008/kXVrrzwvxEy9arq3DTQX1A?u=http://www.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
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> If the reader of this message is not the intended recipient or an
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> error, please destroy any copies thereof, and notify us
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>
> *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 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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