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

[Carl Oppedahl]

Thank you for posting.  And I am sorry to hear of the USPTO serving you 
and your client so poorly.

The specific problem you face (physical certified copy failing to show 
up in IFW even after some weeks at the USPTO) is an example of a more 
general problem, which is the USPTO mail room failing to do its job.

I have a large number of patent files for which I needed to get new 
Powers of Attorney recognized.  This is for a transfer-in of this group 
of files from previous US patent counsel.  I sent the Powers of Attorney 
to the USPTO via Postal Service.   The USPS says it delivered the 
package to the USPTO on October 2, 2024. Checking my calendar, it is now 
December 15, 2024.  Not one of the POAs has gotten scanned in to IFW.  
Not one of the POAs has been acted upon.

I have made repeated calls to the (misnamed) Application Assistance Unit 
over the past nine weeks.  Some of the AAU people who handled my calls 
said that they somehow know that the mail room has delays of "six to 
eight weeks".  Those AAU people said I simply must cool my heels and 
wait until the mail room gets around to opening my mail and scanning the 
contents into IFW.

This is not an isolated instance.   I have had half a dozen situations 
in the past several years where a physical document or demonstrative 
exhibit has languished for months at the USPTO before being acted upon 
by the mail room or downstream personnel.

An external observer can only speculate as to the cause or causes of 
this service failure.  I suspect three factors contribute:

  * The USPTO had a falling-out with Reed Publishing a few years ago,
    which was linked to the USPTO deciding to self-publish issued
    patents rather than paying Reed to do it, and Reed was also
    contracted for many years to run USPTO's mail room, and then Reed
    either quit the mail room work or got fired from the mail room work,
    and the falling-out probably led to nobody running the mail room any
    more.
  * Covid happened and everybody at the USPTO switched to
    work-from-home.  And WFH is inconsistent with running a mail room
    and handling physical documents and the like.
  * General incompetence at the USPTO at doing seemingly simple things
    like figuring out how many staff are needed in the mail room and
    providing that number of staff and training them and providing
    scanning stations and the like.

See 
https://blog.oppedahl.com/sluggishness-of-uspto-workflow-for-inbound-faxes/ 
for a related service failure at the USPTO.

On 12/15/2024 4:17 AM, William Ahmed via Patentpractice wrote:
> 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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