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

[Roger Browdy]

The last part of 37 CFR 1.55(i)(4) says:

The request must be filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a)<https://www.law.cornell.edu/uscode/text/35/111>, four months from the date on which the national stage commenced under 35 U.S.C. 371(b)<https://www.law.cornell.edu/uscode/text/35/371> or (f) (§ 1.491(a)), or four months from the date of the initial submission under 35 U.S.C. 371<https://www.law.cornell.edu/uscode/text/35/371> to enter the national stage, or the request must be accompanied by a petition under paragraph (e) or (f) of this section.

I know because I just filed a petition under this section.

Roger

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Orvis via Patentpractice
Sent: Thursday, May 16, 2024 10:27 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Orvis <orvispc at gmail.com>
Subject: Re: [Patentpractice] venting - failure to download priority document from DAS

The real kicker is the CFR requires an applicant to provide the certified priority document by 4/16 months. The CFR does not say providing a DAS code by then is sufficient.  I would welcome anyone who has comments on the PTO interpreting the providing of a DAS code by then being sufficient.

May 16, 2024 10:15:13 AM Carl Oppedahl via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>:

Yes.  It's like there is some weird game of chicken going on.  Suppose WIPO had a price for using DAS, like USPTO having to pay ten dollars to retrieve a PD from DAS.  Then in a weird sick way we could understand the USPTO deciding to slow-walk the retrieval until after some of the events in which the filer might have let the filing go abandoned.  You know, like if on average one out of ten US filings go abandoned before the filing receipt, then they save ten dollars for that one case.

Except, guess what, WIPO does not charge any money for retrievals.  So that explanation for the foot-dragging does not work.

What's really going on, I believe, is that even though it would absolutely be the right thing to do, the USPTO software developers have not done the bit of coding for this retrieval to be automated.  This is coding that a handful of competent coders (drawn from this listserv, for example) could do on a weekend, if given pizza and soft drinks, and they would have Saturday afternoon and all of Sunday left over.  But no, the USPTO has not done it.  So this task remains (even after more than a decade of DAS existing) a purely manual task carried out by means of fingers moving on keyboards.

And so the reason for the foot-dragging is, the USPTO wanting to save the internal labor cost of the fingers on keyboards until after some of the events in which the filer might have let the filing go abandoned.  You know, like if on average one out of ten US filings go abandoned before the filing receipt, then they save the fingers-on-keyboards internal cost for that one case.

Oh and never mind that if only the USPTO were to incur that one-time cost for coding and automating the retrieval, this would save the recurring cost of the fingers on keyboards.

And it would serve the paying customers better.

The USPTO's failure in this area seemingly knows no bounds, because it's not just the foot-dragging result.

Say you go to ePCT to enter in an application number and DAS access code, for the IB to retrieve some PD.  In real time the ePCT system cross-checks the entered application number and DAS code against DAS.  If the user had gotten a digit wrong, the user is told this in real time.

But in the USPTO systems, the USPTO goes out of its way to avoid doing any validation or cross-checking of the PD application number or DAS access code.  USPTO could do this when you load your ADS into Patent Center.  If USPTO were to do this (which costs no money to do in a recurring way, and in fact saves the USPTO money later by averting delays and mistakes and do-overs), this would be applicant-friendly.  But USPTO does not do it.
On 5/16/2024 6:22 AM, Dan Feigelson via Patentpractice wrote:

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


-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240516/4e64e6aa/attachment.html>