[Patentpractice] Certified copy of priority document issue

Wed Mar 26 17:57:48 UTC 2025

If you (timely) filed an interim copy of the priority document and all other priority claim information was also timely (and correctly) filed, you can submit a paper copy of the priority document without a petition (or an electronic copy if you can somehow get the USPTO to retrieve the document).

Be aware that the USPTO takes its time processing paper copies of priority documents (in our experience) and anything received by the USPTO today, might not make its way into the file for a few weeks.

Given the looming deadline to pay the issue fee, and then the unknown time to issue, it behooves you to act as quickly as possible.

If you cannot get this done by the time the patent issues, it can still be corrected via a certificate of correction along with the petition to accept a late claim to priority.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of John Economou via Patentpractice
Sent: Wednesday, March 26, 2025 1:44 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: John Economou <john.economou at notaromichalos.com>
Subject: Re: [Patentpractice] Certified copy of priority document issue

If you call the USPTO, they will tell you it is the applicant’s responsibility to ensure the certified copy is in the file wrapper. I’ve had a few of these situations recently, and the safest route is to get the hard copy and submit with a petition. You can try to get them to download the document now, but sometimes they just won’t do it even if you show them it is available (showing the DAS certificate).

John S. Economou
E: john.economou at notaromichalos.com<mailto:john.economou at notaromichalos.com>

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Michael Dryja via Patentpractice
Sent: Wednesday, March 26, 2025 1:04 PM
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: Michael Dryja <mike at dryjapat.com<mailto:mike at dryjapat.com>>
Subject: [Patentpractice] Certified copy of priority document issue

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.

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