[Patentpractice] group letter (was venting - failure to download priority document from DAS)
Linda Zaveta
lzaveta at mtiplaw.com
Mon Jun 30 12:20:12 UTC 2025
I was told by the EBC that an application is not eligible for an electronic retrieval until the docket status reaches 30 days or more. I have also been told that they will not try to retrieve the priority as long as the application is “undergoing preexam processing”. And many times even though we have provided the DAS code on the ADS, when I look at the “Transactions” part of the Patent Center, it says that the “Final attempt failed”. Then I have to contact the EBC and request that they retrieve the priority. All in all it takes a lot of time and effort to try and get the priority retrieved.
As well, I have to order certified copies of US priority documents to send to other countries, and I am told that they are so short on personnel that all the requests take a long time. It used to take 7 days to get a certified copy of a priority application; now it’s taking a month or more. Since we have deadlines for getting the certified copies to the foreign agents, this is not acceptable.
Sincerely,
Linda
Linda Zaveta | Paralegal
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Carl Oppedahl via Patentpractice
Sent: Friday, June 27, 2025 11:21 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: Re: [Patentpractice] group letter (was venting - failure to download priority document from DAS)
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<mailto: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><mailto:patentpractice-bounces at oppedahl-lists.com> On Behalf Of Suzannah K. Sundby via Patentpractice
Sent: Friday, June 27, 2025 9:58 AM
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Cc: Suzannah K. Sundby <suzannah at canadylortz.com><mailto: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.
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com><mailto: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><mailto:patentpractice at oppedahl-lists.com>
Cc: Krista Jacobsen <krista at jacobseniplaw.com><mailto: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
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On Tue, Aug 6, 2024 at 10:37 AM David Boundy via Patentpractice <patentpractice at oppedahl-lists.com<mailto: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://link.edgepilot.com/s/19c72d4b/523G1W7dLEm38BMJlVq8JA?u=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<mailto:patentpractice at oppedahl-lists.com>> wrote:
Recall that we already sent a group letter about DAS. You can read about it here: https://link.edgepilot.com/s/fbcd0ed9/FPFt2ynEHkG80sfAqVgQTA?u=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<mailto:krista at jacobseniplaw.com>
T: 408.455.5539
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On Tue, Aug 6, 2024 at 8:42 AM Carl Oppedahl via Patentpractice <patentpractice at oppedahl-lists.com<mailto: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<mailto:krista at jacobseniplaw.com>
T: 408.455.5539
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On Thu, May 16, 2024 at 9:52 AM Erin Geraghty via Patentpractice <patentpractice at oppedahl-lists.com<mailto: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
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: Randall Svihla <rsvihla at nsiplaw.com<mailto: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<mailto: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<mailto:patentpractice at oppedahl-lists.com>>; Dan Feigelson <djf at iliplaw.com<mailto:djf at iliplaw.com>>
Cc: Linda Zaveta <lzaveta at mtiplaw.com<mailto: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<mailto: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<mailto:djf at iliplaw.com>>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Erin Geraghty <ErinG at browdyneimark.com<mailto: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
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Dan Feigelson via Patentpractice
Sent: Thursday, May 16, 2024 8:22 AM
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Cc: Dan Feigelson <djf at iliplaw.com<mailto:djf at iliplaw.com>>
Subject: [Patentpractice] venting - failure to download priority document from DAS
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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