[Patentpractice] Certified copy of priority document issue

[Peter Medley]

Mike,

If the certified copy of the JP priority application is not in the image file wrapper, then you can email the EBC at PDX at uspto.gov<mailto:PDX at uspto.gov> to request that the USPTO electronically retrieve the JP priority application. You should receive a response from the EBC in a day or two telling you that it will take 14 days to retrieve the JP priority application.

My recent experience is that you might have to provide one or two nudges for the EBC to actually retrieve the priority application.

Pete

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Randall Svihla via Patentpractice
Sent: Wednesday, March 26, 2025 1:49 PM
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] Certified copy of priority document issue

Hi, Mike

Is there a certified copy of the JP priority application in the image file wrapper?  If not, what does the transaction history say about attempts to retrieve the certified copy?

Are you sure that the application number, filing date, and WIPO access code are correct?  Set up tracking for the JP application in the WIPO Digital Access Service to verify that they are, and check the transaction history,

Best regards,

Randall S. Svihla
NSIP Law
Washington, D.C.


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.

---
Law Offices of Michael Dryja
24 Roy St #447
Seattle, WA 98109
voice 206.453.1121
fax 206.774.2781
mike at dryjapat.com<mailto:mike at dryjapat.com>



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