[Patentpractice] O/US being slow (was RE: group letter)
Carl Oppedahl
carl at oppedahl.com
Tue Aug 6 22:36:06 UTC 2024
A reminder of the importance of using RO/IB whenever you can.
Even though the PCT Help Desk did not mention a security review, I am
confident that is the actual explanation for the delay.
The way you will know this for sure is when you receive the letter
telling you when they granted the FFL. I predict it will turn out that
the FFL got granted only a day or two before the record copy got sent to
the IB.
On 8/6/2024 12:46 PM, guyvmann at gvmlaw.net wrote:
>
> 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****
> *Intellectual Property Attorneys – Patent, Copyright, Trademark
> *4200 S. Hulen Street, Suite 603 Voice (817) 294-7744* **
>
> *Fort Worth, Texas 76109 USA Fax (817) 294-7742 *
> guyvmann at gvmlaw.net <mailto:guyvmann at flash.net>**
>
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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
>
> 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>
>
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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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> *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!
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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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