[Patentpractice] group letter (was venting - failure to download priority document from DAS)

Fri Jun 27 13:51:03 UTC 2025

I am once again in the situation where I asked the USPTO to retrieve a
certified copy of the priority application via the ADS in an application
filed a couple of months ago, and they have yet to do it. Presumably they
have yet to do it because the later of the 4/16 dates is still several
months away, but that is exactly why I want them to do it now. I do not
like things to linger and potentially become emergencies.

I've set up tracking in DAS and also downloaded the certificate of
availability, so I know they can get it if they try!

I just filed the old SB/38 form per Randall's suggestion from last year. I
will report back on whether it works.

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 10:37 AM David Boundy via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> This might make sense as an ask in a Paperwork Reduction Act letter.
> After all, by statute, an agency is obligated to "minimize" burden (not
> reduce, minimize) especially when it can be done by electronic means.   And
> this set of rules is currently under review at OMB (along with DOCX -- heh
> heh heh).
> https://www.reginfo.gov/public/do/PRAOMBHistory?ombControlNumber=0651-0032
>
> I have a deadline tomorrow that needs to be met.  Maybe Carl and Krista
> and I can work something up.
>
> On Tue, Aug 6, 2024 at 12:31 PM Carl Oppedahl via Patentpractice <
> patentpractice at oppedahl-lists.com> wrote:
>
>> Recall that we already sent a group letter about DAS.  You can read about
>> it here:
>> https://blog.oppedahl.com/letter-has-been-sent-to-the-commissioner-for-patents-about-das/
>> .  This was on February 22, 2020.
>>
>> Oh and the new group letter can remind the reader that this is already
>> our second time asking for the end of the foot-dragging.  We asked for that
>> in the group letter just mentioned, more than four years ago.
>>
>> Oh and yes there is a tenth "ask" namely that RO/US become a Depositing
>> Office in DAS.  We asked for this in the group letter of four years ago.
>> On 8/6/2024 10:20 AM, Carl Oppedahl wrote:
>>
>> Yeah, a group letter would be a good idea.  there would be multiple
>> "asks".
>>
>> First, can they stop the foot-dragging on the retrieval.  In present
>> procedure, they always foot-drag the retrieval until the case is getting
>> released from the OPAP to the Examining Corps.  The correct behavior would
>> be to retrieve the ECC (electronic certified copy) without delay, later the
>> same day after the filer requests the retrieval.
>>
>> Second, can they eliminate the human hand-keyed aspect of this.  The ADS
>> provides the DAS access code in computer-readable characters.  The USPTO
>> should extract the computer-readable DAS access code from inside the XML of
>> the ADS, and should auto-load these computer-readable characters directly
>> into the retrieval system.  It is stupid to flatten the ADS to an image,
>> and then halftone it, and then resample the DPI, and then ask a human being
>> at the USPTO to read it and hand-key it into the retrieval system.
>>
>> Third, can the USPTO please just take WIPO's example and provide a USPTO
>> click path (perhaps within Patent Center) by which the filer can carry out
>> the "action" (as in ePCT) of requesting the retrieval.  And then the click
>> path will do a real-time lookup in DAS and in real time, the click path
>> will display the results of the real-time lookup.  In this way, the filer
>> can instantly learn whether there is a problem with the DAS code.  And then
>> the actual retrieval should proceed in an automatic way.
>>
>> Fourth, in the case where the filer is providing the DAS access code in
>> an ADS, can Patent Center simply extract the computer-readable DAS access
>> code from the ADS and validate it in real time against DAS, at the time of
>> the upload of the ADS.
>>
>> Fifth, in the case where the filer is providing the DAS access code in a
>> web-based ADS, can Patent Center simply validate it in real time against
>> DAS, at the time of the upload of the filer's entry of the DAS access code
>> into the web-based ADS.  Note that we first asked for this in July of 2020.
>>
>> Sixth, Patent Center should display, in the foreign priority tab, the
>> results of the cross-check against DAS (success or failure).
>>
>> Seventh, Patent Center should display, in the foreign priority tab, the
>> results of the retrieval attempt from DAS.  If the retrieval from DAS
>> worked, Patent Center needs to say so, along with the date that it happened
>> and whether or not that date satisfies the 4-and-16 date.  If the retrieval
>> from DAS failed, Patent Center needs to say so.
>>
>> Eighth, any time that the USPTO tries to retrieve an ECC from DAS and
>> fails, the USPTO should explicitly communicate this failure to the filer by
>> means of an email notification, providing verbatim the text of the error
>> message from DAS.
>>
>> Ninth, any time that the USPTO tries to retrieve an ECC from DAS and
>> succeeds, the USPTO should explicitly communicate this success to the filer
>> by means of an email notification.
>>
>>
>>
>> On 8/6/2024 10:01 AM, Krista Jacobsen via Patentpractice 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/
>>>
>>>
>>>
>>> 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 *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*
>>>
>>> 1040 Broad Street, Suite 103
>>>
>>> Shrewsbury, NJ  07702
>>>
>>> lzaveta at mtiplaw.com
>>>
>>> Main: 732.935.7100 | Fax: 732.935.7122
>>>
>>> Direct: 732. 978-4898 |
>>> https://link.edgepilot.com/s/7947afa9/yGIZV8MF50SKVOufKcTIug?u=http://www.mtiplaw.com/
>>>
>>> *OUR BUSINESS IS KNOWING YOUR BUSINESS®*
>>>
>>> *CONFIDENTIAL INFORMATION*
>>>
>>> This transmission contains information from Moser Taboada that is
>>> confidential or privileged.  The information is intended to be for the use
>>> of the individual or entity named on this transmission.  If you are not the
>>> intended recipient, be aware that any disclosure, copying, distribution or
>>> use of the contents of this transmission is prohibited.  If you have
>>> received this transmission in error, please notify the sender by replying
>>> to this transmission and delete the message without disclosing it.  Thank
>>> you.
>>>
>>>
>>>
>>> *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
>>>
>>>
>>>
>>> Links contained in this email have been replaced. If you click on a link
>>> in the email above, the link will be analyzed for known threats. If a known
>>> threat is found, you will not be able to proceed to the destination. If
>>> suspicious content is detected, you will see a warning.
>>>
>>> --
>>> Patentpractice mailing list
>>> Patentpractice at oppedahl-lists.com
>>>
>>> https://link.edgepilot.com/s/c8f1b051/ncqppAhgAkKZTy_ouijYMw?u=http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>>>
>>>
>>>
>>> Links contained in this email have been replaced. If you click on a link
>>> in the email above, the link will be analyzed for known threats. If a known
>>> threat is found, you will not be able to proceed to the destination. If
>>> suspicious content is detected, you will see a warning.
>>>
>>> --
>>> Patentpractice mailing list
>>> Patentpractice at oppedahl-lists.com
>>>
>>> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>>>
>>
>> --
>> Patentpractice mailing list
>> Patentpractice at oppedahl-lists.com
>>
>> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>>
>
>
> --
>
>
> *       [image: Cambridge Technology Law LLC]
> <https://www.iam-media.com/strategy300/individuals/david-boundy>*
>
> Listed as one of the world's 300 leading intellectual property strategists
> <https://www.iam-media.com/strategy300/individuals/david-boundy>
>
> Articles at http://ssrn.com/author=2936470
> <http://ssrn.com/author=2936470>
> <https://www.keynect.us/requestCardAccess/USA500DBOUN?>
>
> Click here to add me to your contacts.
> <https://www.keynect.us/requestCardAccess/USA500DBOUN?>
>
> * David Boundy
> <https://www.iam-media.com/strategy300/individuals/david-boundy>*
>
> DBoundy at cambridgetechlaw.com <dboundy at cambridgetechlaw.com> / +1
> 646.472.9737 <%2B1%206464729737>
>
> Cambridge Technology Law LLC
> 686 Massachusetts Avenue #201, Cambridge  MA  02139
> http://www.CambridgeTechLaw.com
> http://www.linkedin.com/in/DavidBoundy
> mailing address
> PO Box 590638
> Newton MA   02459
>
> This communication is a confidential attorney-client communication
> intended only for the person named above or an authorized representative.
> Any dissemination, distribution, or copying of this communication is
> strictly prohibited, whether by the author or recipients.  Any legal,
> business or tax information contained in this communication, including
> attachments and enclosures, is not intended as a thorough, in-depth
> analysis of specific issues, nor a substitute for a formal opinion, nor is
> it sufficient to avoid legal or other adverse consequences to the
> recipient. Unless you are the addressee (or authorized to receive for the
> addressee), you may not copy, use, disclose or distribute this
> communication or attribute to the Firm any information contained in this
> communication. If you have received this communication in error, please
> advise the sender by replying to this message or by telephone, and then
> promptly delete it.
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250627/2aa9f22a/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.jpg
Type: image/jpeg
Size: 823 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250627/2aa9f22a/attachment.jpg>