[Patentpractice] Certified copy of priority document issue

[Michael Dryja]

Thanks Orvis!  This is good info.  

 - Mike.

> On Mar 26, 2025, at 10:36 AM, Orvis <orvispc at gmail.com> wrote:
> 
> Here is what I would do: 
> 
> 1. Find the old PTO form for requesting retrieval of the priority document. It is on Carl's blog. 
> 
> 2. File that along with a DAS certificate availability from WIPO 
> 
> 3. Email that filing to the PDX email address. I'm not sure what it is and I'm not in front of the computer. Search this listserv for PDX and you'll find it. 
> 
> 3. In parallel, I would ask for a hard copy from Japan. If the PTO still has not pulled the certified copy per the request, and they might not, file the hard copy. 
> 
> 4. I think you need to file a petition to have it accepted at this point. I don't have the CFR in front of me, but I think the requirement is for you to file the priority document, not simply request it. It's not your fault, or prior counsel's fault, but it's certainly not the PTO's fault. 
> 
> Do all of that before paying the issue fee. Good luck. 
> 
> Mar 26, 2025 1:09:32 PM Michael Dryja via Patentpractice <patentpractice at oppedahl-lists.com>:
> 
> 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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> 
> 

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