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

[Andrea R. Jacobson]

In our experience, it is common for it to take several weeks for a paper priority document to be placed into the transaction history of a US application. We mailed one in September 5, it as stamped received September 9, and it was in the file wrapper significantly in November - but with the September 9 date.

If you are able to file the SB38 to retrieve an electronic copy of it, that usually works in a matter of days.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Carl Oppedahl via Patentpractice
Sent: Sunday, December 15, 2024 9:48 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>; for Users of the Patent Cooperation Treaty <pct at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: [Patentpractice] getting certified copy to the USPTO (was paper certified copy [foreign priority] not showing up image file wrapper (patent center) for 111 bypass [CIP of PCT])


Was the US national phase entered from this PCT?  If yes, then what should have happened is your Examiner ought to have gone and found the priority document in the parent case.

Is Country X a Depositing Office in DAS for this kind of priority document?  If yes, then the path is clear.  Run, don't walk, to Country X and do what it takes to get the patent office there to make the application available to DAS.  This includes obtaining the DAS access code.  Then use the DAS system to set up "tracking" for the application and download a Certificate of Availability from DAS.  Then fill out Form PTO-SB38 ( https://blog.oppedahl.com/wp-content/uploads/2023/03/PTO-SB-38.pdf ) and e-file it in your allowed case.  Then follow up with an email to pdx at uspto.gov<mailto:pdx at uspto.gov> to get the USPTO to retrieve the electronic certified copy.  Bob's your uncle.
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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