(Further update: We win! As you can see here, the Commissioner answered our letter. The USPTO says it will stop the foot-dragging on retrieval of electronic certified copies.)
(Update: A letter got sent on February 22, 2020 to the Commissioner for Patents at the USPTO, asking the USPTO to stop its foot-dragging on retrieval of electronic certified copies from DAS and PDX. See blog post.)
If you fail to get your certified copy of your foreign priority application into the hands of the USPTO by sixteen months, you’ve lost your priority claim and will have to file a petition to get it back. Suppose you try to do this electronically and inadvertently get it wrong? USPTO’s present policy is to wait until past sixteen months to let you know. That’s not nice, and USPTO needs to change its policy.
For years the usual way of perfecting a foreign priority claim in a US patent application has been cumbersome. Here are the usual steps:
- Receive instructions from foreign counsel to file a US application claiming priority
- File the US application
- Write to foreign counsel asking for a physical certified copy of the priority application
- Docket to check for receipt of physical certified copy from foreign counsel
- Receive the physical certified copy
- Clear the docket
- Send the physical certified copy to USPTO by trackable courier
- Docket to check for USPTO showing the certified copy in IFW
- Track the courier package and confirm delivery
- Check IFW to see if the certified copy is there
- Clear the docket
- When first office action arrives, check to make sure the Examiner agrees that it is the correct certified copy and that it is in IFW
This is the minimal list of steps. Additional steps are often needed, for example if it is necessary to check IFW multiple times until USPTO gets around to putting the certified copy into IFW.
Until about a year ago you had “all the time in the world” to get around to handing in the physical certified copy. So long as it got there before the patent issued, it was good enough. (If the case were to go abandoned you never actually had to deal with sending in a physical certified copy, thus saving effort and money.)
But for US utility patent applications, as of about a year ago, the rules changed and you have to get the physical certified copy into the file by the “4 and 16” date. (Four months from filing or sixteen months from priority, whichever is later.) The penalty for failing to get the physical certified copy into the file by that date is harsh — loss of the priority claim. Getting the priority claim back into the case after the “4 and 16” date will require filing a petition. For many practitioners in the US, this simply means the docket desk is required to aggressively docket steps 1-12 above, so that hopefully the steps are completed prior to the “4 and 16” date.
There is a workaround in the case where for some reason you can’t get your hands on a physical certified copy in good time for it to arrive at USPTO by the “4 and 16” date. You can send in an “interim copy” (an e-filed PDF) of the priority application by the “4 and 16” date, so long as it is accompanied by a cover sheet containing quite a few “magic words”, and this will avert the loss of the priority claim. You will still have to get the physical certified copy into the hands of the USPTO prior to issuance of the patent. The total number of steps with this approach is more than 12 — four or five steps to ensure visibility of the “interim copy” in IFW by the “4 and 16” date, and another 12 or more steps some time thereafter, and in any event prior to issuance of the patent.
Note that if you get the “magic words” wrong, then you will not have averted loss of the priority claim after the “4 and 16” date, and you will have to file to get the priority claim back.
This reminds us how pleasant it is to use the PCT system. When we enter the US national phase from a PCT, the burden falls on the USPTO itself to obtain the certified copy from the International Bureau and to get it into IFW.
But when we are filing a US application that is not a US national phase from a PCT, the burden is on us as the filer to deal with steps 1-12 as set forth above.
Which gets us to the PDX and DAS systems. These two systems are intended to save work for filers and for patent offices, by making it possible to pass the certified copies of priority documents back and forth in a purely electronic way. The two systems are closely related but are not identical. For convenient reference I will use “DAS” to refer to both systems.
The rule that says that you lose your priority claim if you fail to get the physical certified copy (or the interim certified copy along with all of the needed “magic words”) into the file by the “4 and 16” date goes on to say that you have one additional option for how to avert loss of the priority claim. The additional option is that if you manage to get an error-free and rules-compliant DAS request into the file by the “4 and 16” date, then you will not lose the priority claim. Even if it takes longer for USPTO to get around to retrieving the electronic certified copy from DAS, so long as USPTO does not perceive any mistake on your part in the DAS request that you filed, you will not lose the priority claim.
If not for DAS, the burden on the patent office includes the following steps:
- Receive a courier package.
- Open the package and look to try to figure out which application file the package relates to.
- Cut the binding off from the physical certified copy.
- If the physical certified copy is riveted, drill or punch the rivet out from the physical certified copy.
- Run the pages of the physical certified copy through a scanner. If the pages are printed in duplex, be sure to remember to push the “scan both sides” button on the scanner.
- Do a quality review on the resulting scan file for example to make sure both sides got scanned and no pages got stuck together in the scanner.
- Save the scan file to the correct application file, indexing it correctly as a certified copy.
- Do a quality review to make sure the scan file got saved to the correct application file and was indexed correctly as a certified copy.
From this it is clear that a successful electronic loading of a certified copy of a foreign priority document into IFW not only saves twelve steps for the filer, but also saves eight steps for the USPTO.
From this you might think that USPTO would want to set up its handling of electronic submissions of certified copies of priority documents (that is, its handling of inbound DAS activity) in a way that would be “nice” to practitioners. USPTO would want to provide an incentive or reward to the practitioners who go out of their way to use DAS.
The unfortunate situation is that USPTO does not do so. USPTO seems to go out of its way to punish, frustrate, and annoy any practitioner that tries to provide a certified copy electronically rather than on paper. A few examples will illustrate this.
Let’s consider a typical time line. First, the foreign patent application is filed. Twelve months later, the US application is filed. Shortly thereafter, the US practitioner receives the secret code number (called a “DAS access code”) from foreign counsel who have just gotten done asking their local patent office to transmit the electronic certified copy into DAS. The US practitioner then prepares and files a Supplemental ADS which communicates the secret code number to the USPTO.
The crucial date, which is aggressively docketed by the US practitioner’s docket desk, is the “4 and 16” date. (Here, because the US application was filed at 12 months, the “4” date and the “16” date are the same.) If USPTO personnel were to find any real or imagined flaw in the Supplemental ADS, it would of course be extremely helpful to hear of this real or imagined flaw well in advance of the”4 and 16″ date. In the time line I call this out as “when USPTO should tell you they don’t like your supplemental IDS”.
The alert reader might now ask, does USPTO have some policy as to when it gets around to trying to retrieve the electronic certified copy from DAS? The point being that if USPTO says it can’t seem to retrieve the electronic certified copy, then this is when the USPTO will for the first time deliver the bad news to the practitioner that the failure is the fault of the practitioner who supposedly did something wrong in the Supplemental ADS.
And yes, USPTO does have a policy as to when it will get around to trying to retrieve the electronic certified copy from DAS. The policy is that USPTO will wait until the nineteenth month from priority, and will then try the retrieval.
This policy is extremely unfriendly to the practitioner, because if USPTO chooses to blame the practitioner for a failure to retrieve the electronic certified copy, then the real or imagined mistake by the practitioner gets communicated only after it is too late for the practitioner to fix it other than by filing a petition.
This would not be so bad except that USPTO seems to go out of its way to find real or imagined flaws in DAS requests.
In one of our cases, our DAS request asked USPTO to retrieve a Chinese priority application from DAS. Now as it turns out the Chinese patent office uses a sort of decimal point in the application number. We listed the application number in the Supplemental ADS with the decimal point. A USPTO person professed to be unable to get the application number to work in the USPTO work station that retrieves things from DAS. The USPTO person said we would have to file another Supplemental ADS, this time listing the application number without the decimal point. We did so. The USPTO person then (seemingly grudgingly) reported success in retrieving the electronic certified copy from DAS.
Now as it turns out, USPTO specifies the exact format that is supposed to be used in the Supplemental ADS for priority documents. Here is USPTO’s specified format for Chinese priority documents:
So we were right and the USPTO person was wrong. I suppose if we had filed a Petition to the Director we could have forced the USPTO person to retrieve the electronic certified copy based on our Supplemental ADS that included the decimal point.
Another problem is the format of the Supplemental ADS itself. Up until a few months ago our practice was to construct the Supplemental ADS in our word processor, listing only the things that were to change. We used strikethroughs and underscores to show the deletions and additions. We figured this practice was nicest for USPTO personnel because it saved the USPTO personnel from having to scrutinize all pages of a multipage document to try to pick out the one or two places having a strikethrough or an underscore.
But in recent months USPTO personnel have been stubborn and demand that the Supplemental ADS be the original multipage ADS, with strikethroughs and underscores typed onto the original multipage document. This seems wasteful of the valuable time of USPTO personnel because it forces them to look through the entire document character by character and page by page, in a sort of treasure hunt to try to pick out the odd character that might or might not have a strikethrough on it or the odd character that is underscored. But clearly there has been some training of USPTO within recent months to require that any Supplemental ADS list everything that is going to stay the same as well as anything that is supposed to change.
A further problem is USPTO personnel apparently misrepresenting the results of their supposedly unsuccessful attempts to retrieve electronic certified copies from DAS. On multiple occasions we have received a communication from USPTO that a DAS retrieval attempt carried out on a particular date supposedly did not succeed. What a USPTO person mailing such a communication apparently is not aware of is that the DAS system permits the practitioner to independently investigate whether the retrieval by USPTO personnel did or did not succeed. Each time we have received such a communication from USPTO, our next step is to log in at the DAS system to see for ourselves whether the retrieval succeeded. Invariably the DAS system reports not only that the USPTO did successfully retrieve the electronic certified copy, but also that the successful retrieval by USPTO happened days or weeks earlier than the supposed failure.
Here is an example of a DAS report showing that USPTO retrieved the electronic certified copy on January 20, 2014. Weeks later USPTO was still complaining that supposedly it was unable to retrieve the document due to our supposedly having filed a defective Supplemental ADS.
After maybe a tenth or eleventh application in which USPTO did not handle the inbound DAS work correctly, I wrote to Acting Director Lee asking for help. The response (from a detailee in her office) was unhelpful.
I suspect that the process within USPTO by which electronic certified copies are retrieved from DAS is completely manual, not automated in any way. And I suspect that everything is hand-keyed by USPTO personnel, so that a mistyped character or digit leads to complete failure.
The other direction of DAS is “outbound” DAS. By “outbound” DAS we mean a case where we filed a patent application in the USPTO and we gave express authorization to USPTO to send an electronic certified copy of the application to DAS. (This may be communicated in the ADS or by means of Form PTO/SB/39; regardless of which way we communicate it, USPTO sometimes fails to handle it correctly.) A frequent sequence of steps is this.
- We file the US application with an express authorization in the initial submission package.
- USPTO mails a Filing Receipt stating that we did give such authorization.
- We log in at the DAS system to check to make sure that USPTO did provide the electronic certified copy to DAS.
- The DAS system says it has no such application from USPTO.
- We write to “firstname.lastname@example.org” asking for help.
- The EBC responds, saying there is no problem.
- We log in again at the DAS system to check to make sure that USPTO did provide the electronic certified copy to DAS.
- The DAS system still says it has no such application from USPTO.
- We wrote back to the EBC person saying the problem has not been fixed.
- The EBC responds again saying they have really really fixed it.
- Eventually the DAS system says it has the application from USPTO.
I suspect that the process by which USPTO provides the electronic certified copy to DAS is completely manual, not automated in any way, and has half a dozen manual steps any one of which could be done wrong and would lead to the need for the practitioner to follow these eleven steps. I suspect that everything is hand-keyed so that a mistyped character or digit makes everything crash.
There’s a further gap in USPTO’s implementation of DAS, and the gap relates to design patent applications. As things now stand, USPTO refuses to provide any US design application to DAS. This forces practitioners to order up a physical certified copy of the US application from USPTO and to send it by courier to foreign counsel. (If foreign filings are being done in multiple foreign countries, then multiple physical certified copies have to be obtained from USPTO and each must be sent by courier to a different country.) (Update May 2018 — USPTO says it will become a “depositing Office” for design applications Real Soon Now.)
Looking at the inbound direction, USPTO refuses to retrieve any electronic certified copy of a priority document from DAS for a US design application. This forces the practitioner to carry out the twelve steps set forth above, to get a physical certified copy into IFW. (Update May 2018: USPTO is now an “accessing Office” for design applications in DAS.)
I have repeatedly pointed out to various USPTO people (design people as well as DAS people) the need for USPTO to permit use of DAS for design applications. This has not led to results. (See May 2018 update above.)
USPTO needs to fix this. USPTO needs to accommodate customers who wish to use inbound and outbound DAS with design documents. USPTO likewise needs to accommodate customers who wish to use inbound and outbound DAS with PCT applications.