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

Fri Jun 27 20:31:13 UTC 2025

Hi Randall,

I included the application info in the ADS, but at that time I did not have
the DAS code from the foreign associates. I assume that would be a reason
the USPTO might not be able to retrieve the priority application from the
information in the ADS.

I am hopeful that the submission of the old SB/38 will work promptly so I
can mark this to-do item off of my to-do list, but if not, I will request a
copy of the filed application from the foreign associates and submit it as
an interim copy.

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 Fri, Jun 27, 2025 at 6:56 AM Randall Svihla <rsvihla at nsiplaw.com> wrote:

> Hi, Krista
>
>
>
> How did you ask them retrieve the certified copy a couple of months ago?
>
>
>
> Randy
>
>
>
>
>
> *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
>
>
>
>
>
> 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/
>
>
>
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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
>
> *MOSER TABOADA*
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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
>
>
> 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
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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: 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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