[Patentpractice] group letter (was venting - failure to download priority document from DAS)
Carl Oppedahl
carl at oppedahl.com
Tue Aug 6 16:30:51 UTC 2024
Recall that we already sent a group letter about DAS. You can read
about it here:
https://blog.oppedahl.com/letter-has-been-sent-to-the-commissioner-for-patents-about-das/
. This was on February 22, 2020.
Oh and the new group letter can remind the reader that this is already
our second time asking for the end of the foot-dragging. We asked for
that in the group letter just mentioned, more than four years ago.
Oh and yes there is a tenth "ask" namely that RO/US become a Depositing
Office in DAS. We asked for this in the group letter of four years ago.
On 8/6/2024 10:20 AM, Carl Oppedahl wrote:
>
> 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/>
>>>
>>>
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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 communication containing confidential and
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>>> the intended recipient or an agent responsible for delivery
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>>> notified that you have received this message in error; and
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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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