If you are going to try to get a US patent from a PCT application, there are two possible paths — US national phase entry (also called “a 371 case”), and the filing of a bypass continuation. How does this choice affect how long you have to wait to get a Filing Receipt? If you pick the bypass route, the work gets done by the same folks who handle other ordinary patent applications. It is OPAP (Office of Patent Application Processing). These days OPAP often mails a Filing Receipt very promptly. On the other hand, if you pick the national-phase-entry route, the work gets done by DO/EO/US. And this office often takes a very long time to mail a Filing Receipt. But some people have figured out how to get a very prompt Filing Receipt from DO/EO/US. It is with some reluctance that I will now reveal how they do it.
Before I reveal how it is that some filers manage to get prompt Filing Receipts in their 371 cases, let’s provide a bit of background. A 371 case is an entry into the US national phase from a PCT application. This workflow is very different from the workflow in an ordinary US patent application (which we sometimes call “a 111a case”). The business process rules are completely different.
In a 111a case, the formalities Examiner has to spend time looking to see if there is a specification, claims, abstract and drawings. In contrast, in a 371 case, there are always already a specification, claims, abstract and drawings because this all got figured out months or years earlier when the PCT application got filed in the first place.
Many 111a cases are filed by pro se filers and have lots of things wrong with them. In contrast, most 371 filings are carried out on behalf of relatively sophisticated PCT applicants, represented by US counsel.
In a 111a case the drawings might be no good. In a 371 case, by definition the drawings are good enough, because they were already checked for compliance with PCT Rule 11. MPEP § 1893.03(f) says that in a 371 case, if the drawings were good enough for PCT then by definition they are good enough for the USPTO.
So for a whole host of reasons, it’s just not as much work to do a 371 case as to do a 111a case.
Within the USPTO, sometimes management will get all wound up to do a Business Process Reorganization to try to be more efficient and to save money. Somebody figures out, maybe, that it will save money to switch from staples to paper clips to hold pages together in a certain workflow task. (Maybe the underlying reason is that large numbers of clerks were getting workplace injuries from the sharp points on the staples, but I am just making this stuff up.) Anyway, if you are thinking about doing a Reorganization, you always wonder if it is worthwhile. Any Reorganization requires dozens of tedious meetings in windowless conference rooms. Among other things, contracts with labor unions need to be amended. If the change from staples to paper clips turns out to save (say) fifty cents per instance, and if the task involved happens only fifty thousand times per year, then the savings is only $25K per year. And if the internal cost of the Reorganization was going to be $100K, then it would take five years for this Reorganization to pay off. In contrast, if the task involved happens half a million times per year, then the savings is $250K in the first year alone and the Reorganization has paid for itself even before one year has come and gone.
OPAP does maybe half a million 111a cases per year. In contrast, DO/EO/US only does maybe fifty thousand 371 cases per year.
From this it is easy to see why lots of management resources might get spent at the USPTO doing Reorganizations right and left to find more efficient ways to mail out Filing Receipts in 111a cases.
And it is easy to see why the DO/EO/US process for mailing out Filing Receipts in 371 cases might get resource-starved so far as time and energy being allocated for Reorganizations for those tasks.
Then we can just look at the head count. Probably there are only one-tenth as many people, roughly speaking, in DO/EO/US as there are in OPAP, given the relative size of the underlying workflows. This means that if in a given year and in a given department there are (let’s say) four senior clerks who retire at the end of twenty years of government service, in percentage terms this would be a much larger personnel hit for DO/EO/US than it would be for OPAP.
A few years ago there was a period of more than a year during which it was commonplace that an applicant would have to wait eighteen months to receive a Filing Receipt from DO/EO/US.
It was quite a bit better as of maybe two years ago, with the backlog having been reduced to as little as just a few weeks.
But in the past year or so, the backlog has gotten worse again, and it is commonplace to have to wait anywhere from four to six months to get a Filing Receipt from DO/EO/US.
In the past year or so, I had heard anecdotally, multiple times from multiple sources, of a way that some PCT filers were managing to get their Filing Receipts promptly from DO/EO/US. I kept being astonished at what I was hearing, and I realized that the anecdotes were probably true, but for any of a number of reasons I was hesitant to post it on this blog.
Which then brings us to the Patent Cooperation Treaty listserv, which is the chief gathering place for power users of the PCT. What happened recently on that listserv is that one of the loyal and longstanding members of the listerv had stumbled, quite by accident, upon the technique for getting a quick Filing Receipt from DO/EO/US. And by accident, this listserv member had unknowingly let the cat out of the bag.
What we are talking about, of course, is what happens if people are sitting in the bleachers at a sporting event, trying to see the game taking place. And if everybody stands up to get a better view, then result of this is that nobody gets a better view. You can guess where I am going with this. If the backlog at DO/EO/US is generally (say) six months for Filing Receipts, and if everybody starts using this trick to get a prompt Filing Receipt, then the result will be … everybody will have to wait six months for a Filing Receipt.
So what’s the trick?
To realize what the trick is for getting a prompt Filing Receipt from DO/EO/US, consider what we have always done in our firm when we file 371 papers. We try so hard to make things so easy for DO/EO/US. We make very sure to file our ADS so that it will auto-load into the USPTO systems. We nearly always make sure to never have any Missing Requirements. We always include an Express Request for immediate national phase processing in any case where the situation justifies it. We nearly always pay all of the fees on the first day that we file anything.
And these days what we get for our troubles is that we have to wait six months for a Filing Receipt.
Meanwhile in the PCT listserv, what did our loyal listserv member describe? He had filed his national-phase papers on January 2, 2020, and he had accidentally forgotten to pay his examination fee. (Or rather, the DO/EO/US mistakenly thought he had forgotten to pay the fee.) The DO/EO/US instantly mailed out a Notice of Missing Requirements to ask him to hand in the examination fee. He phoned them up and pointed out where he had actually paid his fee. And then he had his official Filing Receipt shortly after that.
The trick comes from a secret Business Process Rule at DO/EO/US. The secret BPR is that they don’t really wait six months to work on the national phase entry. The secret BPR is they actually look at the case right away, within just a few days of when you file your national phase entry papers. And then if it turns out you paid all of your money, then that is when the case gets put into the freezer to be left untouched for six months. But, and this is the important part, if you left some fee unpaid, the DO/EO/US will mail out a Notice to ask for the money. At this point, the file is “in play” and if you hand in the money, you will get your Filing Receipt shortly thereafter.
Yes, even though this task only happens a mere fifty thousand times per year, somebody at the USPTO did a Reorganization on it. They worked out that spending ten or twenty minutes to do a pre-screen of every newly filed 371 case to look for low-hanging fruit (that is, a fee that could be requested from the filer) pays for itself. By doing this pre-screen, the USPTO accelerates the inflow of cash.
So the practice tip, if you choose to make use of it, is:
when entering the US national phase, always omit one fee.
The result will be that you get an actual benefit from the pre-screen. Normally you would get harmed by the pre-screen, in the sense that if you paid all of your fees, then the case gets put into the freezer for six months. But by leaving out a fee, you benefit from the pre-screen, because you will receive a Notice of Missing Requirements a few days after you entered the US national phase. You can hand in the missing fee shortly thereafter. (Assuming that you hand it in before the 30 months has expired, then there is no late fee for handing in this fee late.) You will then receive your Filing Receipt shortly after that.
The result will be that you won’t have to wait six months for your Filing Receipt. You will instead have your Filing Receipt in less than a month.
This cannot, of course, be the Right Answer. There are so many reasons why this cannot be the Right Answer.
A first thing is that the filer who uses this trick is making some DO/EO/US person mail out extra documents compared with a normal workflow. Instead of mailing out just a Filing Receipt and a Notice of Acceptance, with this trick the DO/EO/US person is having to mail out three documents — those two documents plus a Notice of Missing Requirements.
A second thing is that the filer who uses this trick is making some DO/EO/US person touch the file twice instead of once. This includes setting and clearing at least one extra docket in the DO/EO/US docket system, namely the docket to check to see whether or not the Notice of Missing Requirements is responded to timely.
A third thing is what if everybody does this (which is what I suspect will happen now that the cat is out of the bag)? The result will simply be that everybody will have to wait six months for their Filing Receipts, just as before, and the DO/EO/US will be having to touch all fifty thousand files per year twice instead of once. And will have to mail out fifty thousand otherwise unnecessary Notices of Missing Requirements.
But what this highlights is that USPTO’s secret pre-screen is not at all The Right Answer. The result of the secret pre-screen is to punish the good little boys and girls who Do The Right Thing and who make it so that there are no Missing Requirements in their cases. They get punished by having to wait six months for their Filing Receipts. Meanwhile the filers who make extra work for the DO/EO/US by not paying all of their fees up-front — they get rewarded by getting their Filing Receipts maybe five months sooner. This is how things are now, with this secret pre-screen.
What I can hope is that by revealing this trick — by revealing the existence of the secret pre-screen at DO/EO/US — I can nudge the DO/EO/US in the direction of doing better. I leave it to the USPTO to figure out what would be better. One thing is that DO/EO/US is rewarding the people who make more work for DO/EO/US by giving them faster Filing Receipts, and that seems backwards. DO/EO/US should be rewarding the people who save work for DO/EO/US.
Maybe the right answer is simply to change the timing of when work gets done. Instead of tossing files into the freezer for six months, why not simply touch each file once whenever it is possible to do so? At the time of the (secret no longer) pre-screen, just suck it up and mail out the Filing Receipt. How about that?