USPTO misses a chance to do the right thing about its May 14 system crash

USPTO imposes a $400 penalty on those who paper-file a patent application instead of e-filing it.  The policy reason is, of course, to make people e-file.  But USPTO’s e-filing system had a total crash (blog post) on Wednesday, May 14, that made it impossible for USPTO customers to e-file their patent applications.  This forced customers to paper-file (for example by going to the Post Office).

The right thing, of course, would be for USPTO to waive the $400 penalty for filings carried out on May 14.  But no …

I faxed a letter to Acting Director Lee on May 17, asking her to please direct OPAP (the Office of Patent Application Processing) not to impose the $400 penalty on the filers who filed non-electronically on May 14.  Two and a half weeks have passed and I have not heard anything back from Acting Director Lee in response to the May 17 fax.  That is a bit of a disappointment.

Today (June 4) we received a Notice to File Missing Parts in the patent application that we filed on May 14.  (We filed it by taking it to the Post Office under Rule 10.)  The Notice says that everything we filed was just fine, except that to avoid abandonment we will need to pay a $400 penalty for doing a “non-electronic filing”.

I phoned up Acting Director Lee’s office today (June 4) to see when I might hear back from her in response to my fax.  Nobody was able to say when or if I would ever hear back.  The staffer handling the call offered to pass me along to the office of the Commissioner for Patents (Peggy Focarino).  Reaching a staffer in the Commissioner’s office, I explained why I was calling, and the staffer asked if I was calling about a particular patent application.  I said no, I was calling to suggest that USPTO do the right thing for everyone who was denied the use of the e-filing system on May 14.  She pressed me for an application number and I gave her the number from the Notice to File Missing Requirements that we received today.  She said she would get back to me, and later she called back to say that some (unnamed) manager in OPAP said I should pound sand and would have to pay the $400 regardless.  Well, she said it more nicely than that, but that was the message.

By now we can see that USPTO is slowly creeping out from under the mountain of paper that resulted from customers having to paper-file things that they were unable to e-file on May 14.  In coming days I imagine that more and more USPTO customers will receive Notices to File Missing Parts telling people that they must pay the $400 penalty because they failed to e-file their patent applications on May 14.  I invite readers to share their thoughts about this (and about the content of my May 17 fax) by posting a comment below.

7 thoughts on “USPTO misses a chance to do the right thing about its May 14 system crash

  1. What a bad reflection on the USPTO. Worse yet, it looks like it would cost clients more in legal fees to fight this issue, than it would to just say screw it and pay such a large and unfair penalty.

  2. Another ‘windmill for you to tilt at’:

    On May 14 (about 8 pm PST), I was able to use the ‘work around’ (public pair) to file a provisional patent application, but the USPTO system would not take my credit card – basically timed out without a filing receipt.

    On May 15, I filed the provisional at about 6 am PST, and all went well, including a payment via credit card and receiving an e-Filing Receipt.

    Last week, I received two paper Filing Receipts via USPS, one for the May 14 filing that included a ‘Notice of Missing Parts’ for the filing fee, and of course a surcharge fee. The second filing receipt was for the May 15 filing – no surcharge.

    I would prefer the May 14 filing date, but would need to pay another filing fee and the surcharge to prevent abandonment, with little hope of receiving a refund for the May 15 filing.

    Of course, the most economical (path of least resistance) route is to not respond to the Notice of Missing parts, especially based on your experience with May 14 paper filing.

    Suggestions?

  3. This is not an issue of money, sometimes it is important to get the right result even if it is more costly. We should invest our time into it, not the client’s money.

    • Agreed. But the problem is that while several well-intended attorneys may be willing to spend an hour or two of their own time trying to “get the right result,” the reality is most will not be able to invest the time and effort it would probably take to get a large federal agency such as the USPTO to fix a problem they would have already fixed if they felt it was a problem worth fixing. The USPTO knows you don’t have any other options. Either play by their rules, or don’t play at all. It isn’t like you can take your “business” somewhere else.

  4. Sounds like a basis for a class-action suit. Such a suit would surely generate a great deal of negative publicity. I don’t know if any member of Congress, or even any Congressional staffer, reads this blog, but surely some of them read the Washington Post, the New York Times, and Wall Street Journal.

    Incidentally, I had a situation that I wrote to Terry Rea about back when she was Dave Kappos’ right hand, and it took a few weeks until one of her underlings got back to me with a “Don’t bother us” letter. I suggest you keep pestering them by fax on a daily basis until you get a response. At the very least, the multiple faxes will make for good exhibits in the class action suit. Oh, and record some of your conversations with PTO personnel and post those recordings at some point.

  5. This is interesting. I had an applicant e-file on May 14 (RCE) on their 6-month date. Office stamped it received on May 19. But the RCE had a signed and dated (May 14) Certificate of Filing (both electronic and paper). Nothing was mailed and no surcharge paid. I was directed by my SPE to accept the May 14 date…

  6. Is there any chance of petitioning for the return of the fee based on the fact pattern? Of course, as others have noted, will clients want to pay for the time (=cost) to petition? How about contacting someone in Congress to advocate for you (Orrin Hatch comes to mind…). Does acting director Lee have the authority to waive these fees?

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