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.
37 CFR 1.8(b), from which you quote, begins “In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section…”. I have grave doubts whether that applies to correspondence that, under 1.8(a)(2), is excluded from the certificate of mailing or transmission provisions of 1.8(a)(1). And 1.10(e) does not have an electronic option. So for the important things, like filing a new application, do we need a petition to waive rule 1.8(a)(2) so that we can use 1.8(b)?
Yes I wondered the same thing.
The thing is that Rule 8 does explicitly direct part of itself to EFS-Web. Which makes me think there must be a way to get relief solely within the four corners of the Rule itself.
But you are quite correct that the Rule as written seems somewhat internally inconsistent as it relates to EFS-Web submissions.
I filed a PCT application through the U.S. Receiving Office January 5, 2016. On hindsight, I should have bailed on the entire transaction when the Fees webpage loaded and I noticed that an old PCT Fee Schedule was being presented that was inconsistent with the latest Fee Schedule used in PCT-SAFE. This was very frustrating, as I could not get the system to ever come up with the correct fees due. I eventually paid CLOSE to what was due, and just accepted the fact that I would later be presented with a Notice of the $51 deficiency.
I checked my law firm’s AMEX bill, and the USPTO system wasted no time in charging over $2800 in fees, yet the entire application still does not show up in Private PAIR. Now, I suppose I will have to figure-out how to demand the paid fees back and make a brand new filing. Fortunately, the priority date is based on a on-file provisional and we still have plenty of time, should it become necessary to refile everything.
As for the $51 shortfall, I suppose one workaround would be to fax in a Form PTO-2038, citing the PCT application number and the $51 amount. This makes sense to do, of course, only if you are prepared to deal with whatever struggle will be involved to get the RO/US filing moving along.
Actually what would be very interesting I think is if you were to phone up the PCT Help Desk at the USPTO. I wonder if they can see anything about the newly filed PCT application?
I e-filed both a PCT through US/RO and a regular nonprovisional on the 5th, both of which have since disappeared into the mists. We would not be able to refile, as the priority date has now passed. As Carl says above, I would think we should be able to get some relief within the four corners of the Rules for the US application, especially since we have filing receipts for both cases. For the PCT case, though, does anyone know what analogous protections, if any, might be available?
If all else fails you could file in RO/IB now, requesting Restoration of Priority. Of course you should not have to do this, I merely mention it as a conceivable next step. (You would have to make sure that you have an FFL if the invention was made in the US.)
You might consider phoning up the PCT Help Desk at the USPTO. It would be very interesting to hear whether they are able to see anything about the newly filed PCT application in their PCT-specific systems.
To follow-up on my previous comment, after I emailed the EFS Help Desk about my January 5, 2016 PCT filing that is not visible in PAIR (the email included an attached pdf copy of the EFS E-filing acknowledgement receipt), I received the following reply via email from one of the agents at the Patent Electronic Business Center:
“It appears that we do have the application in question and I do see that the fees were applied to this account. As you are aware the USPTO had a major issue which has caused applications to not be available on PAIR or within EFS Web. The developers are currently working to resolve this issue in hopes to make the applications available as soon as possible. Your application is not lost and does show up within our system as filed on 1/5/2016. If this does not answer your question please respond to this email.”
While I still cannot see the application in PAIR, I suppose it provides some measure of comfort to me to have this confirmation of the filing.