A scary problem in EFS-Web

(Update:  Maybe prompted by this blog article, it seems that somehow the USPTO found the third page of IDS and got it into IFW.  Everything is okay now with this three-page IDS.)

How’s this for a nightmare situation in a pending US patent application?  You e-file three pages of Information Disclosure Statements.  But only two of the pages find their way into IFW.

TYFNIL we all realize what an adversary could do with this!

Ladies and gentlemen of the jury. The applicant filed three pages of information disclosure statements. You can see that from the Acknowledgment Receipt that is right here in the application file. But only two of the pages got considered by the Examiner. There were twenty US patents listed on that missing page.

Just imagine, ladies and gentlemen of the jury, what a difference it would have made for the Examiner, if the Examiner had had an opportunity to consider those twenty US patents when deciding whether or not to grant this patent!

click to enlarge

Here’s a real-life example.  Ten minutes ago I e-filed three pages of Information Disclosure Statements.  You can see it right here in this quotation from the ack receipt.

click to enlarge

Then I did what we all do.  I looked in IFW to see what I just e-filed.  And this is what I see.  Yes, only two of the pages of the IDS are visible in IFW.  

And it’s the same in the “display references” tab in PAIR.

This is a trap for the unwary.  The USPTO e-filing system lost one of the pages of my IDS.  Fortunately I noticed that USPTO screwed this up.  We will docket to watch closely to see if anyone at USPTO fixes the screwup.  

The FOAP (first office action prediction) in this case is 15 months.  So hopefully we have a little time to spare for pestering the USPTO to fix this problem.

The USPTO needs to fix EFS-Web so that pages don’t get lost like this.

The moral of the story?  Always check IFW very carefully to see whether USPTO lost any pages of whatever you e-filed.  And don’t just look for the items listed in IFW.  Look at them.  You would want to know if, for example, USPTO corrupted the images on those pages or turned them into blank pages.

Have you run into problems like this?  Post a comment below.

6 thoughts on “A scary problem in EFS-Web

  1. First, kudos to Carl for continuing to point out these “gotchas” so we can better adopt best practices and be “trendy, modern, and up to date”. 🙂
    I try to run as paperless a practice as possible and part of this means downloading each IFW after submission. Then, since I forward a copy to the client, I review the IFW before sending it off.

    • The normal next step would be to ask the EBC to fix it. Which I did on Wednesday. A trouble ticket got opened on Wednesday.
      Business days Thursday and Friday have come and gone during which the EBC has not yet fixed it. I expect the trouble ticket is still open. No progress happened on Saturday or Sunday or Monday (today).

  2. I had a similar problem once, because the receipts on PAIR truncate the file names, which may be the problem in your case. So you think you uploaded doc A and B, when really you uploaded doc A twice by mistake. But since the file names are truncated, its hard to tell what happened. Look for file names on the receipt with the ellipsis (…). It may help if the first few characters of the file name are different.

  3. We fled an application with a lot of foreign references and non patent literature (pdfs). Right after filing all of them were appearing on Private Pair and we have them all in our “application as filed” pdf downloaded after the filing. However, after having received a Denial re. PPH Request, we discovered that those foreign references and non patent literature (pdfs) were missing in IFW and the “display references” tab. After a call to the Electronic Business Center the problem was resolved, the missing documents were restored.

  4. I am on the receiving end of such a happening and it has not been pretty. Filed a one-page response and a one-page terminal disclaimer in response to a first office action that had only an obviousness-type double-patenting rejection. EFS only posted the TD (even though the filing receipt reflects receipt of the argument). No final office action was generated, no notice of an incomplete response, no courtesy call. Rather than a notice of allowance, I rec’d a notice of abandonment! The Petitions Office refused to withdraw the abandonment on the assertion that our response did not include an argument – even though the PTO’s own filing receipt shows that our submission included an argument. We’re petitioning for reconsideration / invoking supervisory authority now. Have already spoken to the PTO Ombudsman.

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.