[Patentpractice] Certified copy of priority document issue

[Michael Dryja]

Ah, never mind!  I see what you meant, and do have the certificate.

Hopefully when I call the EBC they’ll be able to sort it out.  If not, will probably proceed with petition or something else.

> On Mar 26, 2025, at 10:42 AM, Rick Neifeld <richardneifeld at gmail.com> wrote:
> 
> 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 <mailto: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
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>> Seattle, WA 98109
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>> mike at dryjapat.com <mailto:mike at dryjapat.com>
>> 
>> 
>> 
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> 
> 
> --
> Best regards
> Rick Neifeld, J.D., Ph.D.
> Neifeld IP Law PLLC
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