The Paris Convention and Flaky USPTO servers

If USPTO’s EFS-Web and PAIR servers were flaky on Tuesday, can you refile on Wednesday and call it good for purposes of the Paris Convention?  I’ll share a few thoughts about this (the answer may well be “no”) but first let’s hear what actually happened to a member of the EFS-Web listserv:

I was attempting to file a couple of design applications on Tuesday night [January 19] and EFS-Web kept locking up on me.  One time I actually made it through the submission process, but then it locked up during the fee payment process.  Eventually I gave up and went to bed, because I was not up against a bar date for the filing and I hadn’t promised the client I would get the applications filed on Tuesday anyway.

On Wednesday morning [January 20], I checked PAIR to see if anything I had tried to upload on Tuesday was visible, and nothing new was there, so I tried to file again.  Then I got both design applications filed, paid fees, and got electronic filing receipts.

Today I go into PAIR and sure enough, there are three new applications.  The second one has everything showing in the IFW, but the other two just have a Placeholder for SCORE (and drawings in SCORE) but nothing else in IFW.

So this brings up a question…

For the “extra” application that was filed on Tuesday with no fees paid, is there any potential problems I should be aware of if I simply just don’t pay the fees?  I will be filing cases in other countries for these designs, so should I file an explicit abandonment so that there is no potential issue with the date of first filing?  Or maybe claim priority to the case filed one day earlier in the case where I paid the fee?  I don’t think there is any real advantage to my client for a one day earlier filing date, but I don’t want the earlier filed application where no fees were paid to screw anything up.

First, my sympathies to the filer for the extra work and professional risks that the filer now faces because of the USPTO’s flaky EFS-Web and PAIR servers.  Now let’s focus on the foreign-filing questions raised by our listserv colleague.

One question is what day our colleague should count as the due date for foreign filing?  A related question is, can our colleague duck having to pay the government fees in the first application?  Yet another question is, will it help to file a paper now that expressly abandons the earlier case?

To make sense of all of this, we need to read Article 4 of the Paris Convention very closely.  (Those who have not already done so should purchase and read Bodenhausen’s exegisis of the Paris Convention.)  Plainly stated, under Paris, if you are going to claim priority from a filing in a particular country, and if you have several filings in that country to choose from, you don’t get to pick and choose which one to count from to work out when the foreign filings are due.  You have to count from the oldest one or you get no Article 4 priority claim at all.

Stated differently, to satisfy Article 4 of Paris, our colleague needs to make sure that the foreign filings get done by June 19, 2016.  Postponing the foreign filings until June 20, 2016 risks losing the Article 4 priority.

This is a general answer.  There is always the chance that the law in some particular foreign country is more forgiving than Article 4 itself.  One wishing to explore the possibility of postponing the filing in a particular foreign country until after June 19, 2016 should consult competent counsel in that country.

Note that June 19, 2016 is a Sunday.  In most (but not all) non-US countries, the office for filing design applications will be closed on June 19 because it is a Sunday.  Such a closure will make it okay to postpone the filing until June 20 while still preserving the Paris priority claim.  But one needs to consult competent counsel in the country or countries involved to be sure about this.

But our colleague asks, can’t he just expressly abandon the January 19 case?  Won’t this reset the six-month priority period to count from the January 20 case?  And under Article 4, the answer is “no”.  An express abandonment of a first filing in a given country (in favor of a second filing in that country) only serves to reset the priority period if the express abandonment is carried out chronologically prior to that second filing.  In this case, an express abandonment of the January 19 case that is carried out some time after the January 20 case will accomplish nothing in terms of resetting the priority period.  (Oh and under Article 4, such an express abandonment only successfully resets the priority period if it “leaves no rights outstanding”.  Whatever that means.)

Next question.  Does our colleague need to pay the government fees in the January 19, 2016 application?

Again our heart goes out to the listserv colleague who, because of the USPTO’s flaky EFS-Web and PAIR servers, may end up having to pay government fees in two cases while perhaps only being able to charge the client for one set of government fees.

First we have to ask what we mean by “need to pay”.  Do we need to pay the fees in the January 19 case to keep from losing the priority claim to the January 20 case?  To this narrow question the answer is “no”.  Under Article 4 of Paris, it is not that you must actually claim priority from that earliest application.  It is merely that you must carry out your foreign filings within the priority period that counts from that earliest application.

Stated differently, our colleague could duck paying fees in the January 19 case while preserving the January 20 priority date, so long as the foreign filing gets done by June 19.  (Except as mentioned above June 19 is a Sunday so maybe June 20 will be good enough for certain foreign filings.)

But does that mean our colleague can really duck paying fees in the January 19 case?  The problem, of course, is that some day that foreign design registration might get litigated, and the presence or absence of a perfected January 19 priority claim might be outcome-determinative as to who wins the litigation and who loses.

So I think the decision to save a few bucks and not pay any fees in the January 19 application is a decision that needs to be made by the client.  As a practitioner I would not want to be the person who ducked paying that fee (without informed consent of the client) and later had a client lose a litigation in some foreign country because the priority date was a day later than it would otherwise have been.

So how much expense are we talking about?  Will our unlucky colleague be forced to pay all three fees — the filing fee, the search fee, and the examination fee — in the January 19 case to preserve the priority claim to January 19?  Fortunately the answer is “no”.  The filer only needs to cough up enough money for the USPTO to be willing to provide a certified copy of the January 19 case.  How much money is “enough”?  The answer is that the filer needs to pay the “processing fee” (fee code 1830/2830/3830).  The processing fee having been paid, the USPTO will be willing to officially give a filing date to the case and will be willing to provide certified copies.

Importantly, the specific language of Article 4 of the Paris Convention makes clear that the priority claim works despite any “subsequent fate” of the priority application.  There is no requirement that the priority application actually get examined by an Examiner, for example.  (Did I already mention that anyone who has not done so needs to purchase and read a copy of Bodenhausen’s exegesis of the Paris Convention?)

What should foreign counsel be told to do in the way of priority claims?  Should foreign counsel be told to make two priority claims — one to the January 19 case and another to the January 20 case?  This is of course the safest course of action, particularly if there is any chance, however small, that the two filings are somehow non-identical in their substantive content, or if there is any chance, however small, that one or the other of the two filings was somehow procedurally defective.  But this requires ordering up (and paying for) two certified copies from the USPTO’s Office of Public Records.  And requires foreign counsel to claim (and to perfect) two priority claims.  Let’s not forget that there are some foreign countries where a separate government fee is charged for each priority claim.  And let’s not forget that there are some foreign associates who charge a separate professional fee for each priority claim.

Maybe the way to proceed is to order up the certified copy of the January 19 case from OPR, and make sure that we have it in hand.  Having the physical certified copy in hand goes a long way toward reassuring us that the USPTO will not later astonish us by putting forth the view the application has some real or imagined procedural defect.  And then we can review the physical certified copy to make sure that it contains all of the subject matter that we care about.  This might permit a judgment call to forgo the priority claim to the January 20 case.

If only the USPTO systems had permitted our colleague to see the January 19 case in PAIR on January 19!  This would have permitted the practitioner to avoid all of this agonizing about when exactly the foreign filings would have to be done, and whether or not to have to pay government fees in two different US application, and whether or not to have to make two priority claims, and whether or not to have to order up two physical certified copies and ship them to the foreign country.