Applicants probably need to start thinking now about what they will do if the USPTO eventually concludes that it will never be able to recover the day’s worth of patent applications that were filed on January 5. I say this because even now, on January 14, 2015, many thousands of patent applications filed on January 5 are missing from PAIR. This blog post reviews the sequence of events thus far and talks about what applicants may need to do about this problem at the USPTO.
Our office filed about ten new patent applications on January 5, and we entered the US national phase in one case on that day. None of these filings is visible in PAIR. Of course we contacted the EBC about this. They acknowledged the problem. I blogged about this on January 8.
For many days after January 5, USPTO gave no public acknowledgment of this problem. But after my blog post, on January 11, USPTO for the first time publicly acknowledged this January 5 problem on USPTO’s System Status page.
It is now January 14. Eleven days have passed and USPTO has not yet recovered these lost patent applications. What should applicants do?
A first possibility is that USPTO might, on its own initiative, contact applicants one by one with an invocation of 37 CFR § 2.251. That’s the section that says:
In the event that the Office cannot locate the file of an application … after a reasonable search … the Office will notify the applicant or patentee and set a time period within which the applicant or patentee must [provide a copy of the application].
Failure to comply within the set time period will result in the application being deemed abandoned. Clearly one action step for applicants is to be extremely vigilant for any such Rule 251 request received from the USPTO. Upon receipt of such a Rule 251 request, the applicant needs to carefully document a timely response to the request.
But depending on the particular way that such patent applications got lost, USPTO might not be able to lay its hands on contact information for all of the applicants whose applications got lost. (Particularly at risk would be applications in which no filing fee was paid, since the fee-payment information is preserved in a separate USPTO system and so could be employed as a source of contact information.)
Applicants may wish to make use of 37 CFR § 1.8.
[If] a reasonable amount of time has elapsed from the time of … transmitting of the correspondence … the correspondence will be considered timely if the party who forwarded such correspondence:
(1) Informs the Office of the previous … transmission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence;
(2) Supplies an additional copy of the previously … transmitted correspondence … ; and
(3) Includes a statement that attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely … submission. If the correspondence was transmitted via the Office electronic filing system, a copy of an Acknowledgment Receipt generated by the Office electronic filing system confirming submission may be used to support this statement.
From this it is particularly clear that the applicant needs to have carefully preserved the applicant’s copy of the Acknowledgment Receipt.