[Patentpractice] venting - failure to download priority document from DAS
Carl Oppedahl
carl at oppedahl.com
Tue Aug 6 16:03:47 UTC 2024
Alan you have done everything right so far.
Eventually (hopefully) USPTO will get around to actually attempting the
retrieval from DAS. When that happens, the USPTO will trip a tripwire.
The DAS system will fire off an email to you letting you know what the
USPTO did, or tried to do. Maybe DAS will tell you that the USPTO
succeeded. If so, then this is a big help because if the USPTO lies to
you and says they did not succeed, you will know they lied to you.
The other possible result is DAS telling you that the USPTO tried and
failed. DAS will also do the best they can to let you know the cause of
the failure. The most common cause, as others have described, is a
USPTO person fat-fingering it for example keying an 8 as a B or a zero
as a capital "O". Never mind that the USPTO person ought to have been
trained to know that it is hexadecimal, so that "O" is an unacceptable
choice by the USPTO person.
On 8/6/2024 9:53 AM, Alan Taboada via Patentpractice wrote:
>
> Thank you, Randall –
>
> When I look at the DAS Applicant Portal, I see the priority document,
> and a certificate of availability is there, but the “Last Accessed”
> cell is blank (as is the “Tracked By” cell).
>
> Perhaps we are setting up tracking incorrectly? (although I only see
> one button to “Add Tracking” and one button to “Remove Tracking” and I
> added the case by pressing the Add Tracking button and entering the
> relevant information) (As another aside, I do have other cases in my
> workbench that show “Last accessed” data and “Tracked By” data.)
>
> Also, I can confirm that the access code provided by the client is
> correct, as is the priority number and filing date. And I further
> double-checked and confirmed that the information we provided to the
> USPTO is correct.
>
> We have no way of confirming whether or not the USPTO misread or
> otherwise submitted an incorrect access code (or other priority
> information) that caused them to fail to retrieve the priority
> document. It would be nice if the USPTO actually informed users that
> the retrieval attempt was unsuccessful and why.
>
> Is there some special way to see this information?
>
> Thanks again,
>
> Alan
>
> *From:*Randall Svihla <rsvihla at nsiplaw.com>
> *Sent:* Tuesday, August 6, 2024 11:10 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
>
> 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
>
> Shrewsbury, NJ 07702
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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
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> If the reader of this message is not the intended recipient or an
> agent responsible for delivery of the message to the intended
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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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