[Pct] [Patentpractice] paper certified copy [foreign priority] not showing up image file wrapper (patent center) for 111 bypass [CIP of PCT]

[Randall Svihla]

Hi, Bill

We have filed a few paper copies of Indian and Russian priority application.  It seems like it takes at least 3-4 weeks for the paper copy to be scanned and placed in the image file wrapper.

Another thing to look out for is that they might place the scanned copy of the certified copy under the Supplemental Content tab in Patent Center if the certified copy has color or gray-scale drawings.  That happened to us once, and we didn't realize it was there until we called the Applications Assistance Unit and they told us it was there.  See this:

https://www.uspto.gov/patents/apply/checking-application-status/supplemental-content-file-type-definitions

After you see the certified copy in the image file wrapper, you should file a Request for Corrected Notice of Allowance asking the USPTO to acknowledge receipt of the certified copy, and wait for a priority acknowledgement from the USPTO before you pay the Issue Fee.  There is a document description "Request for Corrected Notice of Allowance" in the "Office of Patent Pub" category.

Good luck.

Best regards,

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


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of William Ahmed via Patentpractice
Sent: Sunday, December 15, 2024 6:17 AM
To: for Users of the Patent Cooperation Treaty <pct at oppedahl-lists.com>; For Patent Practitioners. This Is Not for Laypersons To Seek Legal Advice. <patentpractice at oppedahl-lists.com>
Cc: William Ahmed <ahmed.william at ymail.com>
Subject: [Patentpractice] paper certified copy [foreign priority] not showing up image file wrapper (patent center) for 111 bypass [CIP of PCT]

Dear Friends,

FACT-PATTERN (background)

(1a) One of our cases recently got allowed -- this was a 111 bypass [CIP] of a PCT.
(2a) The PCT claimed priority to a non-US priority application [let's call this non-USA country "Country X"]
(3a) For some reason, the PCT-filing attorney never obtained a PDAS code - they simply filed the PCT in the receiving office of "Country X," and Country X's receiving office provided it to WIPO.
(4a) An interim copy was electronically submitted via EFS-web within 4 months of CIP filing.
(5a( I confess that we were NOT diligent about submitting the paper certified copy and waited until allowance.

FACT-PATTERN (CURRENT STATUS )

(1b) We still have plenty of time until the issue-fee deadline - about two months [Rule 55 requires that "a certified copy of the foreign application must still be filed during the pendency of the application"]
(2b) Our plan (is)(was) to Fedex a paper certified copy to the USPTO before paying the issue-fee.
(3b) we actually FEDEXED the certified copy to the address in the APPENDIX below.
(4b) the USPTO signed for it about two weeks ago. We have "proof of delivery" [they signed for at 9 PM on a particular day]
(5b) two weeks later, we cannot see the paper certified copy in the file wrapper.

Even though we have time to 'correct' and to re-send, we would like to figure out what happened.


MY QUESTION -->  Does anyone have experience with this? Please advise.

Many thanks,
Bill

APPENDIX

We obtained a paper certify copy and FedExed it to:

United States Patent and Trademark Office
Customer Service Window, Mail Stop Amendment
Randolph Building 401 Dulany Street
22314 ALEXANDRIA Virginia
UNITED STATES OF AMERICA

They SIGNED signed for it and we have the Fedex "proof of delivery" (which is probably worthless until we see priority document online at Patent Center).

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