[Patentpractice] getting certified copy to the USPTO (was paper certified copy [foreign priority] not showing up image file wrapper (patent center) for 111 bypass [CIP of PCT])

[Carl Oppedahl]

Colleagues, your suffering inspired a blog article: 
https://blog.oppedahl.com/uspto-mail-room-works-unacceptably-slowly/

I am sorry for your suffering, but maybe the blog article will nudge 
somebody at the USPTO to take corrective action.

On 12/16/2024 7:24 AM, Andrea R. Jacobson via Patentpractice wrote:
>
> In our experience, it is common for it to take several weeks for a 
> paper priority document to be placed into the transaction history of a 
> US application. We mailed one in September 5, it as stamped received 
> September 9, and it was in the file wrapper significantly in November 
> – but with the September 9 date.
>
> If you are able to file the SB38 to retrieve an electronic copy of it, 
> that usually works in a matter of days.
>
> *From:*Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On 
> Behalf Of *Carl Oppedahl via Patentpractice
> *Sent:* Sunday, December 15, 2024 9:48 AM
> *To:* For patent practitioners. This is not for laypersons to seek 
> legal advice. <patentpractice at oppedahl-lists.com>; for Users of the 
> Patent Cooperation Treaty <pct at oppedahl-lists.com>
> *Cc:* Carl Oppedahl <carl at oppedahl.com>
> *Subject:* [Patentpractice] getting certified copy to the USPTO (was 
> paper certified copy [foreign priority] not showing up image file 
> wrapper (patent center) for 111 bypass [CIP of PCT])
>
> Was the US national phase entered from this PCT?  If yes, then what 
> should have happened is your Examiner ought to have gone and found the 
> priority document in the parent case.
>
> Is Country X a Depositing Office in DAS for this kind of priority 
> document?  If yes, then the path is clear.  Run, don't walk, to 
> Country X and do what it takes to get the patent office there to make 
> the application available to DAS. This includes obtaining the DAS 
> access code.  Then use the DAS system to set up "tracking" for the 
> application and download a Certificate of Availability from DAS.  Then 
> fill out Form PTO-SB38 ( 
> https://blog.oppedahl.com/wp-content/uploads/2023/03/PTO-SB-38.pdf ) 
> and e-file it in your allowed case.  Then follow up with an email to 
> pdx at uspto.gov to get the USPTO to retrieve the electronic certified 
> copy.  Bob's your uncle.
>
> On 12/15/2024 4:17 AM, William Ahmed via Patentpractice wrote:
>
>     Dear Friends,
>
>     FACT-PATTERN (background)
>
>     (1a) One of our cases recently got allowed -- this was a 111
>     bypass [CIP] of a PCT.
>
>     (2a) The PCT claimed priority to a non-US priority application
>     [let's call this non-USA country "Country X"]
>
>     (3a) For some reason, the PCT-filing attorney never obtained a
>     PDAS code - they simply filed the PCT in the receiving office of
>     "Country X," and Country X's receiving office provided it to WIPO.
>
>     (4a) An interim copy was electronically submitted via EFS-web
>     within 4 months of CIP filing.
>
>     (5a( I confess that we were NOT diligent about submitting the
>     paper certified copy and waited until allowance.
>
>     FACT-PATTERN (CURRENT STATUS )
>
>     (1b) We still have plenty of time until the issue-fee deadline -
>     about two months [Rule 55 requires that "a certified copy of the
>     foreign application must still be filed during the pendency of the
>     application"]
>
>     (2b) Our plan (is)(was) to Fedex a paper certified copy to the
>     USPTO before paying the issue-fee.
>
>     (3b) we actually FEDEXED the certified copy to the address in the
>     APPENDIX below.
>
>     (4b) the USPTO signed for it about two weeks ago. We have "proof
>     of delivery" [they signed for at 9 PM on a particular day]
>
>     (5b) two weeks later, we cannot see the paper certified copy in
>     the file wrapper.
>
>     Even though we have time to 'correct' and to re-send, we would
>     like to figure out what happened.
>
>     MY QUESTION -->  Does anyone have experience with this? Please advise.
>
>     Many thanks,
>
>     Bill
>
>     APPENDIX
>
>     We obtained a paper certify copy and FedExed it to:
>
>     United States Patent and Trademark Office
>
>     Customer Service Window, Mail Stop Amendment
>
>     Randolph Building 401 Dulany Street
>
>     22314 ALEXANDRIA Virginia
>
>     UNITED STATES OF AMERICA
>
>     They SIGNED signed for it and we have the Fedex "proof of
>     delivery" (which is probably worthless until we see priority
>     document online at Patent Center).
>
>
>
>
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