[Pct] Filing at RO/IB and electing ISA/US - problem

[Andrew Berks]

They are still working on it. Some time in April they said yes we made a
mistake we'll redo the WOSA, but then they didn't issue it until October,
and they still didn't search the second invention. I advised the client to
drop it and file Art 34 amendments and a demand, but the client called the
PCT help desk and apparently they promised to redo the search report a
third time. Some may find it hard to believe but many clients actually take
these patents seriously!

The 30 mo. date is in March, so the IPRP will probably issue after the 30
mo. date. FYI if you want to see the case its WO 2023/042178 A2.

Thanks,


Andrew Berks, Ph.D., J.D. | Partner

Patent Attorney and IP Licensing

FRESH IP PLC

28 Liberty St 6th Fl

New York NY 10005 (US)

Main office: 11710 Plaza America Drive, Suite 2000, Reston, VA 20190 USA
e: andrew at freship.com | w: www.freship.com berksiplaw.com

Direct: +1-845-558-7245 <http://voice.google.com/calls?a=nc,%2B18455587245>
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On Wed, Nov 22, 2023 at 3:36 PM Carl Oppedahl <carl at oppedahl.com> wrote:

> Yeah.  So there's no real question the USPTO failed to do what you paid
> the USPTO to do.
>
> So next steps.  Did you already call the PCT Help Desk?  If so, what
> happened next?
> On 11/22/2023 10:44 AM, Andrew Berks wrote:
>
> Yes the transaction showed up Financial Manager and looked normal
> there with the correct application no.
>
> On Wed, Nov 22, 2023 at 10:30 AM Carl Oppedahl <carl at oppedahl.com> wrote:
>
>> On 11/22/2023 9:00 AM, Andrew Berks via Pct wrote:
>>
>> I had a problem earlier this year in another case filed at the RO/IB and
>> electing the ISA/US. First of all, I frequently recommend the ISA/US with
>> small entity clients because the search fee is lower with small
>> entity prices. The problem was that the ISA/US made a unity of invention
>> objection and issued an invitation to pay an additional search fee. The
>> client was OK with this, but this case did not appear on Patent
>> Center/EFSweb/Private PAIR - because it was filed at RO/IB. We had to pay
>> the fee with a credit card form that was faxed, which is really ridiculous.
>> Putting full credit card info on a paper and faxing it is not secure. The
>> fee payment form was clearly marked with what the money was for - the
>> additional search fees.
>>
>> But the people who do the searching didn't get the message that the
>> additional fees were paid and issued the WOSA without searching the second
>> invention. Bottom line - this bad WOSA was issued in March 2023 and as of
>> today (Nov. 21, 2023) this situation is still not resolved.
>>
>>
>>
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