[Patentpractice] venting - failure to download priority document from DAS
Carl Oppedahl
carl at oppedahl.com
Thu Aug 8 14:57:50 UTC 2024
Thank you very much for posting and for providing the update on this.
There are USPTO lurkers on this listserv. That might help to explain
why your e-filing submission worked so promptly and successfully.
To say this differently, this single data point does not permit one to
assume that somehow against all odds in recent days the USPTO got this
workflow all straightened out.
I have pending cases right now in which the USPTO has foot-dragged the
retrieval until way past the date of mailing of the Filing Receipt.
On 8/8/2024 7:20 AM, Krista Jacobsen via Patentpractice wrote:
> 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 <http://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 <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*
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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 the message to the intended recipient, you
>> are hereby notified that you have received this message
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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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