[Pct] Digitally signed PDF of certified copy of US priority document

Tue Jun 4 12:06:12 EDT 2024

I haven't run into this specific scenario, but I do know that when we now receive CDs of priority documents, I save the PDF into our files and when I open it there is only a front page certification document and not an digital certified signature (like the egrant patents have). We ran into an issue with that at the EPO where they would not accept such an electronic certification and had to request and send physical certified paper documents to our associate there for submission to EPO (this was a file that was not in DAS yet).

I feel like years ago the CD copies of documents were different and did include a separate certification. I have a vague memory of having to open the file directly from the CD and save it in a specific way so that the certification would remain with it.

From: Pct <pct-bounces at oppedahl-lists.com> On Behalf Of Katherine Koenig via Pct
Sent: Tuesday, June 4, 2024 11:46 AM
To: Patent Lawyer <patentlawyer995 at gmail.com>; For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com>
Cc: Katherine Koenig <katherine at koenigipworks.com>
Subject: Re: [Pct] Digitally signed PDF of certified copy of US priority document

Sounded like crap to me too.  Especially since the rep first told me they no longer issue PDF copies with a digital signature (why on Earth would they not?), and then I was told that it magically disappears when someone wants to make sure it's there.

And, this is all after the AAU told me my SB/39 would never be processed/approved because the provisional had expired (even though the SB/39 was filed before expiration) and they wouldn't take action on an expired file.  The IB doesn't care if it's expired, just grant access already.

Best regards,

Katherine

Dr. Katherine Koenig
Registered Patent Attorney
Koenig IP Works, PLLC
2208 Mariner Dr.
Fort Lauderdale, FL 33316
(954) 903-1699
katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>

[cid:image001.png at 01DAB675.E7FC4730]
Targeted Intellectual Property Strategy

The information contained in this communication, including any attachments, is privileged and confidential information intended only for the use of the individual or entity named above.  If you are not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, you are hereby notified that any review, dissemination, distribution, or copying of this communication is strictly prohibited.  If you have received this communication in error, do not read it.  Please immediately reply to the sender that you have received this communication in error and then destroy all paper and electronic copies.  Thank you.

From: Patent Lawyer <patentlawyer995 at gmail.com<mailto:patentlawyer995 at gmail.com>>
Sent: Tuesday, June 4, 2024 11:32 AM
To: For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com<mailto:pct at oppedahl-lists.com>>
Cc: Katherine Koenig <katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>>
Subject: Re: [Pct] Digitally signed PDF of certified copy of US priority document

Sounds like crap to me.

Why would opening a document remove its digital signature?   And why would they do that?  What if you want to check what's on the CD before sending it to WIPO?

Perhaps someone here knows better, but, again, sounds like crap to me.

From: Oppedahl Lists <pct-bounces at oppedahl-lists.com<mailto:pct-bounces at oppedahl-lists.com>> on behalf of Katherine Koenig via Pct <pct at oppedahl-lists.com<mailto:pct at oppedahl-lists.com>>
Reply-To: "For users of the PCT and ePCT. This is not for laypersons to seek legal advice." <pct at oppedahl-lists.com<mailto:pct at oppedahl-lists.com>>
Date: Tuesday, June 4, 2024 at 11:25 AM
To: for users of the Patent Cooperation Treaty <pct at oppedahl-lists.com<mailto:pct at oppedahl-lists.com>>
Cc: Katherine Koenig <katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>>
Subject: [Pct] Digitally signed PDF of certified copy of US priority document

A client filed a provisional pro se and then I came in at the 11th hour to file US utility and PCT applications.  Access to participating offices was inadvertently not provided by the client in the provisional application.  The day before the provisional expired, I filed a SB/39 form requesting access.  That hasn't yet been processed or approved (currently being escalated, however).

Since DAS is not (yet) an option, I'm trying to figure out how to get a certified copy of the US provisional to WIPO.  I've ordered both hard copy and digital PDF copy on CD.  However, when I try to upload the PDF document to ePCT, it's rejected as not being digitally signed.  I called Certified Copy Center and was told that the document is digitally signed until you open the file on the CD.  Then the digital signature mysteriously disappears, which is why it's rejected by ePCT when I open the file and try to upload it.  Instead, we're supposed to mail the CD to WIPO so they can open it and see the signature.  Does this make any sense to anyone?  Am I missing something about how to upload a certified copy in ePCT as an Action?  It can't be this hard.

Best regards,

Katherine

Dr. Katherine Koenig
Registered Patent Attorney
Koenig IP Works, PLLC
2208 Mariner Dr.
Fort Lauderdale, FL 33316
(954) 903-1699
katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>

[cid:image002.png at 01DAB675.E7FC4730]
Targeted Intellectual Property Strategy

The information contained in this communication, including any attachments, is privileged and confidential information intended only for the use of the individual or entity named above.  If you are not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, you are hereby notified that any review, dissemination, distribution, or copying of this communication is strictly prohibited.  If you have received this communication in error, do not read it.  Please immediately reply to the sender that you have received this communication in error and then destroy all paper and electronic copies.  Thank you.

-- Pct mailing list Pct at oppedahl-lists.com<mailto:Pct at oppedahl-lists.com> http://oppedahl-lists.com/mailman/listinfo/pct_oppedahl-lists.com
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