[Patentpractice] group letter (was venting - failure to download priority document from DAS)
Carl Oppedahl
carl at oppedahl.com
Fri Jun 27 15:21:02 UTC 2025
Yeah, you are both right in my view.
It sort of depends on your willingness to play a game of chicken with
the USPTO.
If you are absolutely sure that you didn't get anything wrong in that
ADS, then you can be tough about it. (Meaning I am saying Randall is
right.) You just wait and wait and you refuse to hand in the interim
copy. Months, maybe a year or later, the USPTO finishes its
foot-dragging on doing the DAS retrieval. Or maybe the USPTO decides to
jerk you around and tell you that you got one character wrong in your
ADS. The USPTO finds a real or imagined flaw in the format of the
application number.
Keep in mind that the USPTO flattens the ADS to bitonality and resamples
it in terms of bits per inch, and makes it into a TIF and then (I am not
making this up) the USPTO person visually views the DAS code and (I am
not making this up) hand-keys it into some DAS portal.
So if there had been a flyspeck of ink somewhere in that DAS code, it
might (in the visual cortex of the USPTO person) change from a "B" to an
"8" or vice versa.
This actually happened to me. They keyed in an 8 when it should have
been a B (or vice versa, I don't recall for sure). Later I checked the
log at the WIPO DAS system and saw the mistake they had made. So then I
wrote to pdx at uspto.gov and said "try it again but this time use the B
instead of the 8". And then the retrieval worked.
Except what if you try and try and the USPTO decides to punish you for
using DAS instead of what they really want, which is a physical
certified copy so that some employee can drill out the rivet and scan it
in a scanner. Then you may find that you have to pay the $600 penalty
for handing in your certified copy late.
Which now brings us to why Suzannah is right. If you do spend $200
worth of your professional time creating and e-filing the interim copy,
then you deny the USPTO the ability to be a jerk about all of this.
They can slow-walk the retrieval, and no way will this force you to pay
the $600 penalty. They can play dumb and say they thought that B was
really an 8, and no way will this force you to pay the $600 penalty.
They can nit-pick your format of that application number, saying that
you should have snipped off that check digit at the end, or should have
padded it with a leading zero to yield a nine-digit number, and no way
will this force you to pay the $600 penalty.
So yes Suzannah is right and Randall is right.
On 6/27/2025 8:56 AM, Randall Svihla via Patentpractice wrote:
>
> Hi, Suzannah
>
> But you don't need an interim copy if you have provided the correct
> priority application information including the WIPO DAS code in the
> ADS pursuant to 37 CFR 1.55(i).It seems that Krista has done that.
>
> Best regards,
>
> Randall S. Svihla
>
> NSIP Law
>
> Washington, DC
>
> *From:*Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Suzannah K. Sundby via Patentpractice
> *Sent:* Friday, June 27, 2025 9:58 AM
> *To:* For patent practitioners. This is not for laypersons to seek
> legal advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Suzannah K. Sundby <suzannah at canadylortz.com>
> *Subject:* Re: [Patentpractice] group letter (was venting - failure to
> download priority document from DAS)
>
> This is one of the reasons why I always file an interim copies of
> priority documents with 371 national phase entries… so I don’t have to
> worry about when the USPTO retrieves or fails to retrieve such.
>
> You could do that now, just download it yourself, type “Interim
> Priority Document” on the first page at the top and upload it into
> PatentCenter.Then you need not worry about when the USPTO does it… and
> just double check for it when you get the filing receipt, first action
> on the merits, and upon receipt of the Notice of Allowance.
>
> Suzannah K. Sundby <http://www.linkedin.com/in/ssundby/>*|* Partner
>
> _canady + lortz__LLP_ <http://www.canadylortz.com/>
>
> 1050 30th Street, NW
>
> Washington, DC 20007
>
> T: 202.486.8020
>
> F: 202.540.8020
>
> suzannah at canadylortz.com <mailto:suzannah at canadylortz.com>
>
> www.canadylortz.com <http://www.canadylortz.com/>
>
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> *From:*Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Krista Jacobsen via Patentpractice
> *Sent:* Friday, June 27, 2025 9:51 AM
> *To:* For patent practitioners. This is not for laypersons to seek
> legal advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Krista Jacobsen <krista at jacobseniplaw.com>
> *Subject:* Re: [Patentpractice] group letter (was venting - failure to
> download priority document from DAS)
>
> 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 <http://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 <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>
>
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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
>
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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/
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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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