[Patentpractice] venting - failure to download priority document from DAS
Carl Oppedahl
carl at oppedahl.com
Tue Aug 6 16:22:27 UTC 2024
Simply setting up the tracking in DAS will accomplish this.
On 8/6/2024 10:06 AM, Randall Svihla via Patentpractice wrote:
>
> Hi, Carl
>
> How do you get the DAS system to send you emails?
>
> Thanks.
>
> Best regards,
>
> Randall S. Svihla
>
> *From:*Carl Oppedahl <carl at oppedahl.com>
> *Sent:* Tuesday, August 6, 2024 12:04 PM
> *To:* For patent practitioners. This is not for laypersons to seek
> legal advice. <patentpractice at oppedahl-lists.com>
> *Subject:* Re: [Patentpractice] venting - failure to download priority
> document from DAS
>
> 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>
> <mailto: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>
> <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
>
> 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>
>
> https://link.edgepilot.com/s/6fc120a4/mTMmW11UIk6za0lZSfZcWg?u=http://www.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
> 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
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> 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
>
>
>
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