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

Carl Oppedahl carl at oppedahl.com
Wed Jun 5 03:30:08 EDT 2024 

This is "request the RO to forward" approach not a Best Practice, I suggest.


If you do as the poster suggests, you are checking the box that says 
"the RO is requested to send a certified copy to the IB". And you are 
filling in some fields in the Request to indicate the application 
number, and the two-letter code for the OFF (office of first filing), 
and the filing date.


But this never gets validated.  Suppose you put in an American date 
instead of a metric date (June 7 instead of July 6)?  This will not get 
caught at filing time, nor will it get caught at Request-preparation 
time.  Or suppose you mistype the application number?   Or you 
accidentally auto-complete the two-letter code as "UA" instead of "US".  
Or, worse, the party who filed that provisional told you the application 
number but they told you wrong?


In any these cases, you could end up on the wrong side of the dreaded 
4-and-16 date and only then find out that something went wrong.


Best Practice is to use ePCT to set it up so that the retrieval will 
happen through DAS.  This forces a real-time, instant cross-check of the 
proposed priority claim information against the actual information 
stored in the DAS system, which in turn was automatically cross-checked 
against the source system (e.g. the USPTO system).  Nearly all possible 
mistakes (including the imagined mistakes listed above) will be checked 
for in real time during the ePCT validations.


In this case, Katherine faced the unpleasantness that the party who 
filed the provisional had failed to make it available to DAS, and she 
was forced to file form SB39 to commence the painfully slow process 
within the USPTO of eventually making the provisional available to DAS.  
Which, yes, would surely not reach its conclusion until after the PCT 
application needed to get filed.


So the steps to follow are:

  * set a docket for getting the ECC into the hands of the IB
  * given that the priority application is not yet available to DAS, as
    a place-holder, indicate in the ePCT Request that "applicant will
    provide".
  * get the PCT application filed.
  * badger the USPTO (through pdx at uspto.gov as needed) to make the
    priority application available to DAS
  * at some point USPTO will say (probably prematurely) that the
    priority application is supposedly now available to DAS
  * at this point, start doing a "trust but verify" by trying to set up
    an alert in DAS
  * after some days, you will hopefully be able to set up an alert in
    DAS (the USPTO will eventually actually do what it said it had done
    some days earlier)
  * dowload and save a Certificate of Availability
  * in ePCT, with connection to the subject PCT application, do an
    "action" for requesting that the IB retrieve the ECC from DAS
  * within one business day, the IB will report success at the retrieval
    through Form PCT/IB/304
  * take note that simultaneously, the DAS system will email you to
    report that the IB successfully retrieved the ECC
  * clear the docket for the ECC reaching DAS

Everyone who is following this discussion of Best Practices for getting 
an ECC into one's PCT application is invited to register, if they have 
not already done so, for the upcoming comprehensive, live, in-person PCT 
seminars.  See 
https://blog.oppedahl.com/attend-a-2%c2%bd-day-live-in-person-patent-cooperation-treaty-seminar-in-scenic-summit-county-colorado-2/ 
.


On 6/4/2024 9:40 AM, Timothy Snowden via Pct wrote:
> Katherine, did you ask the RO/US to provide a copy on the PCT request 
> form (RO/101)? Together with the SB/39, I would think that should take 
> care of getting a certified copy over without this headache on your 
> part. I recently talked to PCT Help Desk (IB) about it when I was 
> trying to get a provisional released from security review, and they 
> said that if priority app is a US application, and you file request 
> RO/US to provide a certified copy, and as long as the USPTO finally 
> sends over a copy (even after publication) sometime during the 
> international phase, IB treats it as timely provided within the 
> deadline for providing a certified copy.
> ------------------------------------------------------------------------
> *From:* Pct <pct-bounces at oppedahl-lists.com> on behalf of Katherine 
> Koenig via Pct <pct at oppedahl-lists.com>
> *Sent:* Tuesday, June 4, 2024 10:23 AM
> *To:* for users of the Patent Cooperation Treaty <pct at oppedahl-lists.com>
> *Cc:* Katherine Koenig <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 11^th 
>  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>
>
> /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 
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