WIPO DAS portal now functions for US designs

click to enlarge

I am delighted to be able to report that the WIPO DAS portal now functions as it should for US designs.

This raises many questions, which I will try to answer:

  • What do you mean it “now functions”?  Did it not function before?
  • As a design practitioner in the US, should I perhaps be a bit embarrassed that I had not noticed that it was not functioning before?
  • As a design practitioner outside the US, should I perhaps be a bit embarrassed that I had not noticed that it was not functioning before?
  • Okay I give up.  What exactly is the WIPO DAS portal, what is its connection with US designs, and why do I need to know about it?

Finally, what is there about this WIPO DAS portal that would protect me, as a practitioner in an Office of Second Filing, from a risk of professional liability due to a lost priority claim due to failure to timely provide a certified copy?  Yes, I call this “the single most important point in this blog article“.  If you would like to eliminate this particular category of risk to yourself when handling such filings, then scroll down to the place in the article where I discuss this.

What do you mean it “now functions”?  Did it not function before?  The WIPO DAS portal, as discussed in more detail below, provides a way to set up “alerts” so that you can instantly learn when some Office of Second Filing retrieves an electronic certified copy of a priority document from an Office of First Filing.  It provides Certificates of Availability which make clear to any interested party that a particular priority document is available to particular Accessing Offices in the DAS system.  The USPTO became a Depositing Office for designs in the DAS system on October 1, 2018, and what was supposed to happen is that users of the DAS system should have been able to set up such “alerts” and obtain such Certificates of Availability for US design applications starting on that date.  But in fact this function was not working until December 21, 2018 (today).

As a design practitioner in the US, should I perhaps be a bit embarrassed that I had not noticed that it was not functioning before?  Yes, any US design practitioner who has filed any US design application within the past six months, an application which might need to serve as a priority application for a later filing in any Office that is a participant in DAS as an Accessing Office (Australia, Brazil, Chile, China, Denmark, Eurasian Patent Office, Estonia, EPO, Spain, Finland, UK, the IB, India, Japan, Korea, Morocco, Netherlands, New Zealand, and Sweden), ought to have followed Best Practices by (a) making sure that the design application is available to DAS, and (b) setting up an “alert” in DAS, and (c) obtaining a Certificate of Availability for the application.   It seems, however, that no US practitioners, or at least very few US practitioners, were following Best Practices.  I say this because until today, it was not possible for any US practitioner to carry out step (b) or step (c).  What ought to have been happening, seems to me, is that lots of US practitioners ought to have been at least trying to follow Best Practices, and ought to have been making inquiry at the EBC (at the USPTO) or at the DAS help desk (at WIPO) soon after October 1, 2018.

As I will discuss below, there was one alert US design practitioner who did try to follow Best Practices, and who was persistent in trying to get the WIPO DAS portal to work.  Her inquiries led to the present situation which is that the WIPO DAS portal got straightened out today and it now permits users to carry out steps (b) and (c).  I will reveal the name of this alert US design practitioner below.

EPO does not grant design patents.  Why do you mention EPO?  I have the same question for the IB.  Thank you for asking!  The reason of course is that there is always the chance that some US design application might happen to contain enabling disclosure for some later utility patent application, in which case the applicant in that later application might wish to make a priority claim to the US design application.  The DAS system would be an ideal way to communicate the electronic certified copy from the Office of First Filing to the Office of Second Filing.  This later filing might be a PCT application or might be a European patent application.

As a design practitioner outside the US, should I perhaps be a bit embarrassed that I had not noticed that it was not functioning before?  It depends in which Office you practice as a design practitioner, and it depends on whether you have been asked recently to attend to a design filing in your Office that claims priority from some earlier US design application.  Such Offices might include Australia, Brazil, Chile, China, Denmark, Estonia, Spain, Finland, UK, India, Japan, Korea, Morocco, Netherlands, New Zealand, and Sweden.

When such work is entrusted to you, what ought to happen (if instructing US counsel are trendy, modern, and up-to-date) is that instructing US counsel would provide a Certificate of Availability to you as part of the very first package of documents.  US counsel would of course also provide the DAS access code.  Your Best Practice would include logging in at the DAS portal and setting up an “alert”.  One reason for doing this is of course that as soon as your own Office retrieves the electronic certified copy from DAS, you would receive a notification from the DAS system that the retrieval had taken place.

The other possibility would have been that US counsel would fail to provide a Certificate of Availability to you.  In that case your Best Practice would include logging in at the DAS portal and setting up an “alert”, and also obtaining a Certificate of Availability.  You would save a copy of the Certificate for your files, and you would sent a copy of the Certificate to US counsel (the reason for this is to gently nudge US counsel who apparently are not yet following Best Practices for use of DAS!).

But it seems, however, that no non-US design practitioners were following Best Practices.  I say this because until today, it was not possible for any non-US design practitioner to carry out the step of setting up an “alert” for any US design case.  Likewise until today, it was not possible for any non-US practitioner to carry out the step of obtaining a Certificate of Availability for any US design case.  What ought to have been happening, seems to me, is that at least a few non-US design practitioners ought to have been at least trying to follow Best Practices, and ought to have been making inquiry at the DAS help desk (at WIPO) soon after October 1, 2018.

Wait a minute.  If the USPTO only became a Depositing Office for designs on October 1, 2018, then wouldn’t this have started to become an issue only almost six months later, in the weeks leading up to April 1, 2019?  Well, I suppose for those US practitioners who really enjoy ordering up physical certified copies of design applications, and physically shipping them by courier to non-US design colleagues, then I guess you are right.

But US practitioners who are trendy, modern, and up-to-date should by now have been methodically filing Form PTO/SB/39 in all of their US design applications that they filed any time in the past six months, at least, in every US design application that might later serve as a priority application for a later non-US design filing.  This includes many US design applications that had been filed prior to October 1, 2018.  For each such US design application, the Best Practice would include (a) filing the Form PTO/SB/39, (b) watching to see when the PAIR transaction history indicates “Application ready for PDX access by participating foreign offices”, and then (c) setting up an “alert” in the DAS system, and (d) obtaining a Certificate of Availability.  These steps make it easy, when entrusting a foreign design filing to non-US design colleagues, to use the DAS system as the way to communicate an electronic certified copy to the foreign design Office.

Okay I give up.  What exactly is the WIPO DAS portal, what is its connection with US designs, and why do I need to know about it?  Hopefully by now the patient reader has worked out the answers to these questions.  The DAS portal permits the trendy, modern, and up-to-date design practitioner to make sophisticated use of the DAS system for communication of electronic certified copies of design applications (including US design applications).  US and non-US counsel alike can benefit from the “alerts” which will let you know instantly when any Office of Second Filing successfully retrieves a priority document from the DAS system.  The Certificates of Availability permit all parties to know for sure that any particular priority application really is available in the DAS system.  In particular, if any Office of Second Filing were to be unsure whether it is actually able to retrieve a particular electronic certified copy, the Certificate would help to remove any doubt about this.

Wait a minute.  I notice that one of the members of the ID5 is not a member of DAS.  What’s with that?  Yes, it’s true.  When we look at a list of the design Offices that belong to DAS, one member of the ID5 (the five biggest Offices for design filings) is conspicuously absent, namely the European Union Intellectual Property Office (EUIPO).

People at EUIPO have promised me and promised me that Real Soon Now, EUIPO will become a Depositing Office and an Accessing Office in the DAS system.

How does all of this relate to international design applications (Hague filings)?  If you are asking this question, then it seems likely you were not subscribed to my blog back in February of 2018.  If you have not done so, now would be a good time to subscribe to my blog.  It will help you to keep up to date on things like this.  Anyway, you can see my February 2018 blog article that explains how you can and should use the DAS system with your Hague filings.

Please tell me.  Who is the one alert US design practitioner who did try to follow Best Practices, and who was persistent in trying to get the WIPO DAS portal to work?  Who is this alert US design practitioner whose inquiries led to the present situation which is that the WIPO DAS portal got straightened out today?

I will tell you.  But first I will point out that now, in 2018, of course everybody realizes that design protection is important.  Big court cases like Apple v. Samsung got everybody’s attention.  The fact that more and more Offices have joined the Hague system for international design filings got everybody’s attention.  And so now in 2018, everywhere you go you will see US practitioners who will pretend that they supposedly knew all along that design protection was important, but who in reality only started trying to learn about design protection very recently.

Meanwhile there are a handful, and I really mean only a handful, of US practitioners who were doing serious design filings years and even decades before it was fashionable.  US practitioners who plugged away, accumulating experience with serious design protection, long before the recent events like the recent big court cases.  (I have blogged about a few of the other design pioneers here and here and here.)

One of these pioneering design practitioners is Elizabeth Ferrill.  And again I emphasize she is one of the very small number of US practitioners who were doing serious and substantial design protection work long before it became fashionable.  (Long before the time came that seemingly every US practitioner suddenly pretended to have known all along that design protection was important.)

What happened is this.  In recent weeks, I had been trying to set up “alerts” in DAS for some of my US design filings.  And I had been trying to obtain Certificates of Availability for these US design filings.  Over and over again I could not seem to get it to work.  I kept thinking maybe I was doing something wrong.  I kept thinking that at some point I probably should contact somebody at USPTO or WIPO to ask whether maybe something was wrong in the DAS system.  But I did not follow through on this.  Then I got a note from Elizabeth.  She, too, had been trying to get Certificates of Availability for some of her US design filings, and she had not been able to get it to work.

The thing is, all of this should have been working ever since October 1, 2018.  And here we were in December of 2018 and we were not able to get it to work.  We were not able to set up “alerts” in DAS for our US design applications and we were not able to obtain Certificates of Availability for our US design applications.

The point here is that Elizabeth is trendy, modern, and up-to-date.  She was trying to get familiar with the DAS system as it relates to US design filings.  She was trying to set up Best Practices in her own client work.

And it was her note to me that nudged me into action.  I realized it was not just that I was somehow doing something wrong when I was trying to use the DAS system with US design filings.

Prompted by the note from Elizabeth, I made inquiry to the USPTO and to WIPO about this.  This prompted somebody at USPTO or WIPO to fix something that had been broken all along (since October 1, 2018).  And now, starting today, it is possible to make use of the WIPO DAS portal with respect to US design filings.

Okay, I want to be trendy, modern, and up-to-date.  What should I do next?  Probably the next thing that you should do is take the DAS quiz.

If you are a US design practitioner, you should probably do what it takes so that every US design application that you filed within the past six months, at least every such application that might later serve as a priority application, is available to DAS.  Having done that, set up an “alert” for each such US design application and obtain a Certificate of Availability for each such US design application.

If you are a US design practitioner, whenever you entrust work to non-US counsel to file a design application that claims priority from one of your US design applications, include a Certificate of Availability with your package of documents that you send to foreign counsel.

If you are a non-US design practitioner, practicing in an Office that belongs to DAS, then when you receive instructions from US counsel, set up an “alert” in DAS.

Any time you file a Hague application that claims priority from some previous application, make sure that the priority application is in DAS.  Set up an “alert” for the priority application.  Make sure that in Form DM/1 you include the DAS access code with the priority information.

The single most important point in this blog article!

Most importantly, if you are counsel practicing in any Office of Second Filing, your very natural concern is to wonder whether some particular design application really is available in DAS, and to wonder whether the DAS access code which has been provided to you by instructing counsel is correct.  What you would not want is for some time period to pass after which a priority claim is lost due to some failure regarding provision of a certified copy.  Such a lost priority claim would, after all, be your professional responsibility.  If we start making a list of the ways that something might have gone wrong with a DAS access code, it includes things like:

  • What if the Office of First Filing said that it had made a design application available to DAS but somehow had not actually done so, and you did not know it?
  • What if the Office of First Filing said that the DAS access code was 4378, but that was inaccurate, and you did not know it?
  • What if instructing counsel in the Office of First Filing somehow inadvertently made a typographical error communicating the DAS access code to you, and you did not know it?

The WIPO DAS portal permits you to be absolutely sure that the application really is available to DAS, and permits you to be absolutely sure that the DAS access code which has been provided to you by instructing counsel is correct.

This is why, whenever it is entrusted to you to carry out a design filing in an Office of Second Filing, one of your routine steps should be to go to the WIPO DAS portal and set up an “alert” for the priority application.  This permits you to independently confirm that the application really is available to DAS.  This permits you to independently confirm that the DAS access code is accurate.  This permits you to learn, in an automatic way, the moment that the Office of Second Filing successfully retrieves that all-important certified copy from DAS.

Leave a comment

Your email address will not be published. Required fields are marked *

This site uses Akismet to reduce spam. Learn how your comment data is processed.