[Patentpractice] venting - failure to download priority document from DAS
Carl Oppedahl
carl at oppedahl.com
Tue Aug 6 16:20:23 UTC 2024
Yeah, a group letter would be a good idea. there would be multiple "asks".
First, can they stop the foot-dragging on the retrieval. In present
procedure, they always foot-drag the retrieval until the case is getting
released from the OPAP to the Examining Corps. The correct behavior
would be to retrieve the ECC (electronic certified copy) without delay,
later the same day after the filer requests the retrieval.
Second, can they eliminate the human hand-keyed aspect of this. The ADS
provides the DAS access code in computer-readable characters. The USPTO
should extract the computer-readable DAS access code from inside the XML
of the ADS, and should auto-load these computer-readable characters
directly into the retrieval system. It is stupid to flatten the ADS to
an image, and then halftone it, and then resample the DPI, and then ask
a human being at the USPTO to read it and hand-key it into the retrieval
system.
Third, can the USPTO please just take WIPO's example and provide a USPTO
click path (perhaps within Patent Center) by which the filer can carry
out the "action" (as in ePCT) of requesting the retrieval. And then the
click path will do a real-time lookup in DAS and in real time, the click
path will display the results of the real-time lookup. In this way, the
filer can instantly learn whether there is a problem with the DAS code.
And then the actual retrieval should proceed in an automatic way.
Fourth, in the case where the filer is providing the DAS access code in
an ADS, can Patent Center simply extract the computer-readable DAS
access code from the ADS and validate it in real time against DAS, at
the time of the upload of the ADS.
Fifth, in the case where the filer is providing the DAS access code in a
web-based ADS, can Patent Center simply validate it in real time against
DAS, at the time of the upload of the filer's entry of the DAS access
code into the web-based ADS. Note that we first asked for this in July
of 2020.
Sixth, Patent Center should display, in the foreign priority tab, the
results of the cross-check against DAS (success or failure).
Seventh, Patent Center should display, in the foreign priority tab, the
results of the retrieval attempt from DAS. If the retrieval from DAS
worked, Patent Center needs to say so, along with the date that it
happened and whether or not that date satisfies the 4-and-16 date. If
the retrieval from DAS failed, Patent Center needs to say so.
Eighth, any time that the USPTO tries to retrieve an ECC from DAS and
fails, the USPTO should explicitly communicate this failure to the filer
by means of an email notification, providing verbatim the text of the
error message from DAS.
Ninth, any time that the USPTO tries to retrieve an ECC from DAS and
succeeds, the USPTO should explicitly communicate this success to the
filer by means of an email notification.
On 8/6/2024 10:01 AM, Krista Jacobsen via Patentpractice wrote:
> Thanks for the responses. There are a number of frustrating aspects to
> this.
>
> I will proceed with a "corrected" ADS, request for corrected filing
> receipt, and old SB/38 form. And, of course, an interim copy.
>
> Maybe this situation calls for another group letter? I can volunteer
> to draft one and circulate for comments (though probably not immediately).
>
> 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 <http://www.jacobseniplaw.com>
>
>
> On Tue, Aug 6, 2024 at 8:42 AM Carl Oppedahl via Patentpractice
> <patentpractice at oppedahl-lists.com> wrote:
>
> 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>
>> <mailto: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>
>> <mailto:patentpractice at oppedahl-lists.com>
>> *Cc:* Alan Taboada <ataboada at mtiplaw.com>
>> <mailto: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>
>> <mailto: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>
>> <mailto:patentpractice at oppedahl-lists.com>
>> *Cc:* Krista Jacobsen <krista at jacobseniplaw.com>
>> <mailto: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>
>>
>> https://link.edgepilot.com/s/6fc120a4/mTMmW11UIk6za0lZSfZcWg?u=http://www.browdyneimark.com/
>> <https://link.edgepilot.com/s/6fc120a4/mTMmW11UIk6za0lZSfZcWg?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
>> *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
>>
>> lzaveta at mtiplaw.com
>>
>> Main: 732.935.7100 |Fax: 732.935.7122
>>
>> Direct: 732. 978-4898
>> |https://link.edgepilot.com/s/7947afa9/yGIZV8MF50SKVOufKcTIug?u=http://www.mtiplaw.com/
>>
>> *OUR BUSINESS IS KNOWING YOUR BUSINESS^® *
>>
>> _CONFIDENTIAL INFORMATION_
>>
>> This transmission contains information from Moser Taboada
>> that is confidential or privileged. The information is
>> intended to be for the use of the individual or entity named
>> on this transmission. If you are not the intended recipient,
>> be aware that any disclosure, copying, distribution or use of
>> the contents of this transmission is prohibited. If you have
>> received this transmission in error, please notify the sender
>> by replying to this transmission and delete the message
>> without disclosing it. Thank you.
>>
>> *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 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 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
>>
>>
>>
>> Links contained in this email have been replaced. If you
>> click on a link in the email above, the link will be analyzed
>> for known threats. If a known threat is found, you will not
>> be able to proceed to the destination. If suspicious content
>> is detected, you will see a warning.
>>
>> --
>> Patentpractice mailing list
>> Patentpractice at oppedahl-lists.com
>> https://link.edgepilot.com/s/c8f1b051/ncqppAhgAkKZTy_ouijYMw?u=http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>>
>>
>>
>> Links contained in this email have been replaced. If you click on
>> a link in the email above, the link will be analyzed for known
>> threats. If a known threat is found, you will not be able to
>> proceed to the destination. If suspicious content is detected,
>> you will see a warning.
>>
>>
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240806/d11eb33c/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.jpg
Type: image/jpeg
Size: 823 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240806/d11eb33c/attachment.jpg>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: smime.p7s
Type: application/pkcs7-signature
Size: 4514 bytes
Desc: S/MIME Cryptographic Signature
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240806/d11eb33c/attachment.p7s>
More information about the Patentpractice
mailing list