[Patentpractice] group letter (was venting - failure to download priority document from DAS)

Tue Aug 6 18:46:35 UTC 2024

Sort of related question:  

Why would it take the USPTO as RO almost three months (and counting) to transmit the IA to the IB?

Details:  

IA filed May 7, 2024;  IA number assigned by RO and appears in PC

Fees show paid.  Same $ amount shows in ePCT fee calc. sheet, doubtless derived from the Request

*	i.e., they’ve been holding about $ 3800 of client’s money for nearly 3 months now

Priority claim to US provisional filed May 8, 2023 is recognized in the PC record.

PC’s status shows:  “Application Undergoing Preexam Processing 05/07/2024”

Case shows up in ePCT, with relevant info from Request (document sizes, names, etc.) which was entered into ePCT to generate the zip file, of course.

But ePCT says:

*	No IA number assigned (to be assigned by RO)
*	Priority claim too late (but don’t worry about it if you filed the IA timely)

In other words, the IB hasn’t heard from the RO since I downloaded the zip file.

And, of course, the expected ISA search and report (EPO) hasn’t even begun yet because the IB doesn’t have what it needs.

Are others experiencing this kind of delay?

I’m not sure whose cage to rattle about this.

Guy

Guy V. Manning 
LAW OFFICES OF GUY V. MANNING 
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Carl Oppedahl via Patentpractice
Sent: Tuesday, August 6, 2024 11:40 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: [Patentpractice] group letter (was venting - failure to download priority document from DAS)

And we can remind them that as for the third, fourth, and fifth "asks", this is Feature Request FR20 which the USPTO received on July 6, 2020.

And we can remind them that as for the sixth "ask", this is Feature Request FR21 which the USPTO received on July 6, 2020.

And we can remind them that as for the seventh "ask", this is Feature Request FR22 which the USPTO received on July 6, 2020.

On 8/6/2024 10:30 AM, Carl Oppedahl via Patentpractice wrote:

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 <mailto: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 <mailto: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  <mailto:patentpractice-bounces at oppedahl-lists.com> <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.  <mailto:patentpractice at oppedahl-lists.com> <patentpractice at oppedahl-lists.com>
Cc: Alan Taboada  <mailto:ataboada at mtiplaw.com> <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  <mailto:patentpractice-bounces at oppedahl-lists.com> <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.  <mailto:patentpractice at oppedahl-lists.com> <patentpractice at oppedahl-lists.com>
Cc: Krista Jacobsen  <mailto:krista at jacobseniplaw.com> <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 <mailto: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 <mailto: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

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 <mailto:ering at browdyneimark.com> ering at browdyneimark.com 

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com <mailto: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 <mailto:patentpractice at oppedahl-lists.com> >
Cc: Randall Svihla <rsvihla at nsiplaw.com <mailto: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 <mailto: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 <mailto:patentpractice at oppedahl-lists.com> >; Dan Feigelson <djf at iliplaw.com <mailto:djf at iliplaw.com> >
Cc: Linda Zaveta <lzaveta at mtiplaw.com <mailto: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

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com <mailto: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 <mailto:djf at iliplaw.com> >; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com <mailto:patentpractice at oppedahl-lists.com> >
Cc: Erin Geraghty <ErinG at browdyneimark.com <mailto: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

 <mailto:ering at browdyneimark.com> ering at browdyneimark.com 

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com <mailto: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 <mailto:patentpractice at oppedahl-lists.com> >
Cc: Dan Feigelson <djf at iliplaw.com <mailto:djf at iliplaw.com> >
Subject: [Patentpractice] venting - failure to download priority document from DAS

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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