[Patentpractice] venting - failure to download priority document from DAS

Thu Aug 8 13:20:55 UTC 2024

I wanted to send a quick update on this.

As recommended by Randall and Alan, on Tuesday I submitted a "corrected"
ADS with the DAS access code. As Randall suggested, I also filed the old
SB/38 form. As Carl suggested, I set up tracking in DAS (did not know you
could do that for an application you did not file yourself, so that was an
excellent learning experience) and enabled notifications for the priority
application.

This morning I received (a) an updated filing receipt indicating that the
access code had been provided and (b) a notification from DAS that the
application had been accessed. When I go into DAS, I can see that the USPTO
accessed it. And sure enough, the certified copy of the priority
application is in the file wrapper.

So, in this one case, the USPTO DID actually promptly retrieve the
certified copy (<48 hours from when I requested they do so), and (at least
one of) filing the "corrected" ADS and old SB/38 did the trick. (Would only
the "corrected" ADS have done it? I'm not sure.)

I still think a group letter is warranted for all of the reasons Carl set
out, and I will work on one, but at least my case has a happy result that I
thought I would share in case it helps those who find themselves in similar
circumstances.

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

On Tue, Aug 6, 2024 at 10:01 AM Krista Jacobsen <krista at jacobseniplaw.com>
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
>
>
> 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>
>> <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>
>> <patentpractice at oppedahl-lists.com>
>> *Cc:* Alan Taboada <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 <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. <patentpractice at oppedahl-lists.com>
>> <patentpractice at oppedahl-lists.com>
>> *Cc:* Krista Jacobsen <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
>>
>> 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
>>
>>
>> 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*
>>
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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
>>
>>
>> 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: 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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