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

Fri May 17 07:38:38 UTC 2024

Dear all

I reallise this isn’t the PCT list, but just an advert – the relevant error in this case would have been avoided by preparing the request form using ePCT.  It has a lot more validations in place than PCT-SAFE (which is no longer supported anyway) or paper and would not have allowed the relevant mistake to be made.

The particular problem was spotted by our Operations staff within a couple of days of the record copy arriving and resolved within a few days after that (in excellent fashion by making the DAS retrieval request through ePCT, which in most cases can validate the DAS request instantly and will usually result in the relevant document appearing on the file by the next day, as happened in this case).

There are other possible errors that ePCT-Filing and our Operations Teams can’t readily catch though (for example, indicating that you intend to supply the pdoc yourself but not then doing so or it being lost in the post), so for all your PCT filings, we recommend ensuring that you have ePCT access for all your international applications and don’t switch off the warning notifications for outstanding priority documents.  This will mean that for any priority claims where the pdoc hasn’t been received by the normal required time (16m from priority) you will get an email warning and as long as you have not requested early publication, this should still leave you time to resolve the problem (at least as long as you don’t still need to obtain a paper priority document from a particularly difficult Office!).

Mike R

Classification: WIPO FOR OFFICIAL USE ONLY

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Michael Dryja via Patentpractice
Sent: Thursday, May 16, 2024 4:46 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Michael Dryja <mike at dryjapat.com>
Subject: Re: [Patentpractice] venting - failure to download priority document from DAS

I haven’t had this exact issue, but a similar one.

We filed a PCT application with the USPTO as the RO… the application claimed priority to a GB application.  The DAS code was erroneously not included on the Chapter I request.

The IB sent a notification indicated they haven’t received the priority document.  I think we had a couple of months before the 16 month deadline.

We provided the DAS code to the IB, but in parallel requested the priority document from the UK Patent Office.

The IB obtained the priority document using the DAS code and sent out another notification within a week, so the issue ultimately was moot.

However, my expectation was that we were going to have to file the priority document.  That is, in our estimation providing the DAS code was not sufficient to satisfy providing the priority document by the deadline.

 - Mike.

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On May 16, 2024, at 7:26 AM, Orvis via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> wrote:

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

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