[Patentpractice] Certified copy of priority document issue

[Rick Neifeld]

Do you have proof the JP document is available in DAS?  If not, I would get
that (the certificate).
File a remarks noting the factual errors in the paper, and noting that the
PD is available in DAS, and noting (aka arguing) that it is the USPTO's
duty to pull a copy of the document from DAS.  That is for the record in
case of a challenge to entitlement to priority.
And, file a petition, petitioning the PTO to pull the PD from DAS,
including therein all the facts asserted in the remarks. Include a copy of
the DAS availability certificate as evidence.






On Wed, Mar 26, 2025 at 1:09 PM Michael Dryja via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> I have been transferred a case with the following fact scenario, and am
> not 100% sure how to proceed.
>
> The priority date of the Japanese application is 9/30/2022, and the US
> application was  filed on 9/21/2023, under 119 (so we’re well past beyond
> the 4 month date of the filing date and the 16 month date of the priority
> date).
>
> The ADS filed with the application properly identified the JP application
> and gave the correct access code.  The filing receipt listed the JP
> application correctly, and also confirmed that the access code was
> provided.  We did not opt out of PDX on the ADS.
>
> The notice of allowance states that “applicant has not filed a certified
> copy (see letter [date]) of the [US] application as required by 37 CFR
> 1.55.”
>
> There is no such letter dated [date] in the file wrapper.  Moreover, the
> statement is that we applicant did not file a certified copy of the *US* application
> — i.e., the application that is being allowed, not the JP application that
> the application claims priority to.  Further, as noted above, we did
> provide the access code correctly on the ADS for the USPTO to get the
> document via PDX.
>
> I called the Examiner, who was quite nice but doesn’t know what to do
> (which is understandable).  He suggested I call his supervisor, and I left
> him a voicemail.
>
> I’m at a loss how else to proceed.  Since we have a notice of allowance,
> the clock is ticking to paying the issue fee.  And it will be a lot easier
> to get this taken care of before we pay the issue fee — or at least before
> the patent is issued — then later.
>
> Does anyone have any thoughts?  Should I file an “incoming letter after
> allowance" *now* just to get something on the record, and continuing
> pursuing the matter through other channels?  Or maybe file a petition now?
> I’d like to speak with someone else as I think that there’s some
> administrative snafu that someone can easily fix, but don’t have a first
> clue how to go about finding that person.
>
>  - Mike.
>
> ---
> Law Offices of Michael Dryja
> 24 Roy St #447
> Seattle, WA 98109
> voice 206.453.1121
> fax 206.774.2781
> mike at dryjapat.com
>
>
>
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-- 
Best regards
Rick Neifeld, J.D., Ph.D.
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032
Mobile: 7034470727
Email: RichardNeifeld at gmail.com;
This is NOT a confidential and privileged communication.  If you are not
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