Figuring out whether to file an Interim Copy of a priority application

(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.)

Here is the setup for today’s hypothetical question.  Your docket desk has contacted you to let you know that:

• the crucial 4-and-16 date is imminent for one of your recently filed US utility patent applications in which you have made a Paris Convention priority claim, and
• the PDX/DAS people at the USPTO have not yet retrieved an electronic certified copy of your priority application from the foreign patent office.  

You must now figure out whether to file an Interim Copy of the priority application at the USPTO.

This blog article offers a summary of Best Practices comments about this from some very experienced patent practitioners.

The first thing that should be said about this is that it should not have been necessary even to write this blog article.  It is unacceptable that the PDX/DAS people at the USPTO actually intentionally foot-drag the retrieval of electronic certified copies (“ECCs”) until after the 4-and-16 date has passed.  If only the PDX/DAS people at the USPTO were to retrieve ECCs when asked to do so rather than intentionally aging the retrieval until after the 4-and-16 date has passed, then applicants would not need to agonize like this about whether or not to file an Interim Copy and would not need to unnecessarily incur the expense and trouble of filing an Interim Copy.

More than five years ago (blog article) I pointed out that USPTO needs to retrieve such ECCs when asked rather than intentionally aging the retrieval.  Unfortunately the USPTO continues to this day to age such retrievals in a very intentional way.

So a first part of the context for this blog post is that the USPTO essentially makes itself into the adversary of the applicant by intentionally not retrieving the ECC when asked to do so.  

The second part of the context for this blog post is MPEP § 215 et seq. which sets forth in excruciating detail the various options that are available to the patent applicant that might choose to use PDX or DAS as a way of perfecting a priority claim.

Legacy practice, of course, is that the US applicant physically sends a physical certified copy (PCC) of the priority application to the USPTO.  One example of a fact situation in which the applicant might do this even in today’s world of PDX and DAS is if the Office of First Filing (“OFF”), that is, the office in which the priority application was filed, happens to be an Office that is not a Depositing Office in the DAS system.  Fortunately with each passing year more and more Offices choose to become a Depositing Office in the DAS system for more and more types of priority applications, so this fact situation arises less and less often as time goes on.  But in our office we have had to physically send PCCs to the USPTO in recent months for such situations as:

• a US design application claiming priority from a design application filed in EUIPO
• a US utility patent application claiming priority from a utility model (Gebrauchsmuster) filed in the German patent office

Eventually, of course, EUIPO will (supposedly, see blog article) join DAS.  And eventually one hopes the German patent office will join DAS.

The problem is that MPEP § 215 et seq. makes clear that to perfect your priority claim, you really need to get the certified copy into the USPTO file chronologically prior to the 4-and-16 date, that is, within four months of the date that the US utility application is filed or within sixteen months of the priority date, whichever is later.  You can satisfy this in any of several ways:

• physically delivering a PCC to the USPTO before the 4-and-16 date, or
• filing an Interim Copy at the USPTO before the 4-and-16 date, or
• filing a suitable PDX/DAS retrieval request before the 4-and-16 date, and getting lucky.

The physical delivery approach has many drawbacks.  It requires that foreign counsel obtain a PCC and send it to you.  It requires that you send the PCC to the USPTO.  It requires that you set and clear perhaps six dockets.  It requires repeatedly looking up the contents of IFW to see whether the USPTO actually physically scanned the PCC into IFW and indexed it correctly as to document type.  There is also the expense of at least two courier shipments.

The physical delivery approach has the further drawback that one might, through inadvertence, accidentally file the wrong PCC.  One might reveal the confidences of one client in the US application file of another client.  Or one might have on one’s desk the PCCs of two applications of the same client, one might through inadvertence get the PCCs mixed up in the courier shipment process.

How exactly does the PDX/DAS approach work?  Close reading of MPEP § 215 et seq. makes clear that the applicant that chooses to tough it out can often successfully follow the PDX/DAS approach for perfecting a priority claim, and thus one can avoid having to send a PCC to the USPTO.  The sequence of steps begins with the applicant filing a suitable PDX/DAS request at the USPTO.

What counts as “a suitable PDX/DAS request”?

1. This might be an ADS filed on filing day, with a correctly completed “foreign application” section that is free from error as to the identity of the OFF, the filing date, the application number, and the DAS access code.
2. This might be a supplemental or corrective ADS filed later, free from error, filed chronologically prior to the 4-and-16 date.
3. This might be Form PTO/SB/38 filed on filing day, with a correctly completed “foreign application” section that is free from error as to the identity of the OFF, the filing date, the application number, and the DAS access code.
4. This might be Form PTO/SB/38 filed later, free from error, filed chronologically prior to the 4-and-16 date.
5. This might be a document of the applicant’s own devising, cobbled together in a word processor, communicating the same information as Form PTO/SB/38, free from error, filed on filing day.
6. This might be a document of the applicant’s own devising, free from error, filed chronologically prior to the 4-and-16 date.

The reader can guess how I feel about approaches 5 and 6.  Imagine the richness of the field for a would-be nitpicker at the USPTO who might be motivated to find real or imagined flaws in such a word processor document.  The nitpicker at the USPTO who succeeds at the nitpicking will have earned the USPTO $400 in government fees due to the applicant’s having to file a petition later for forgiveness for having failed to get the certified copy into the hands of the USPTO within the 4-and-16 time period.  No, it seems clear that one should deny any would-be nitpicker such an opportunity, and the way to do this is by use of one of the official USPTO forms, which by definition must be correctly worded because it is the official USPTO form.  In this context the official USPTO forms would be either Form PTO/SB/38 (Request to Retrieve Electronic Priority Document) or Form PTO/AIA/14 (Application Data Sheet).

Approach 2 is also unwise, in my view, if carried out by means of a document devised by the filer in a word processor, because it likewise is vulnerable to nitpicking by USPTO personnel.  The EFS-Web and Patentcenter systems do, however, have online systems for generation of corrective ADSs for some application types and statuses.  If an online corrective ADS is used for approach 2, then the USPTO is denied the opportunity to nitpick the format of the document.

Free from error.  Aye, there’s the rub, as Shakespeare would say.  You only get a free pass on having to hand in an Interim Copy if later the USPTO is unable to point out some error in your retrieval request.  And the problem is that USPTO is highly motivated to find a real or imagined error in your retrieval request, because this will force you to file a $400 petition for forgiveness for having failed to get the certified copy into the hands of the USPTO within the 4-and-16 time period. 

After the 4-and-16 date has passed, and then the USPTO claims to have been unable to retrieve the ECC, and points to some real or imagined error in your retrieval request, how do you prove the USPTO to be wrong about this?  How do you successfully force the USPTO to Do The Right Thing and keep trying until it somehow corrects whatever mistakes it was making in its retrieval requests?  How do you successfully avoid having to give up and file the $400 petition that you should never have had to file?

Your chief item of proof is the Certificate of Availability that you planned ahead and placed in your own file for safekeeping against just such an eventuality.  You might have come into possession of the CofA in either of two ways:

1. Instructing counsel (the foreign firm that entrusted this US filing to your firm in the first place) may have sent a CofA to you as part of the original instruction package, or
2. As soon as you received the instruction package from instructing counsel, without delay you logged into the DAS system and obtained a CofA.

Clearly path 1 is preferable, because it means you have the good fortune to be receiving work from instructing counsel who are trendy, modern and up-to-date about DAS.  And the fact is if they are trendy, modern and up-to-date about this, they are probable trendy, modern and up-to-date about lots of other things.  They are probably doing all of their work more carefully and with higher quality than other foreign firms.  From your point of view this is really good news because you are less likely to get sued for malpractice down the line because of something that instructing counsel did wrong.

But if path 1 does not happen, that is, if instructing counsel failed to provide a CofA in the original instruction package, then it will be a Best Practice for you to log into the DAS system without delay after receiving instructions, to independently confirm that the priority application is indeed available to the USPTO in the DAS system.  To do this, of course, you will need to know the DAS access code.  You might have come into possession of the DAS access code in either of two ways:

1. Instructing counsel may have provided the DAS access code to you as part of the original instruction package, or
2. As soon as you received the instruction package from instructing counsel, without delay you noticed that the DAS access code was missing from the instruction package and you wrote back to instructing counsel to ask for the DAS access code and then you badgered instructing counsel every three or four days for it until they coughed it up to you.

The reader will be able to guess where I am going with this.  Clearly path 1 is preferable, because it means you have the good fortune to be receiving work from instructing counsel who are trendy, modern and up-to-date about DAS.  From your point of view this is really good news because you are less likely to get sued for malpractice down the line because of something that instructing counsel did wrong.

But if path 1 does not happen, that is, if instructing counsel failed to provide the DAS access code in the original instruction package, then it will be a Best Practice for you to repeatedly punch the instructing counsel in the nose until they hand over the DAS access code.  This may require setting and clearing numerous dockets depending upon the responsiveness of instructing counsel.  For us, if a particular instructing firm seems to be unable to answer seemingly simple questions about DAS access codes, this becomes one of many factors that we consider later when we wonder whether we should entrust a reciprocal piece of work to that firm.  

Returning to “free from error”.  A first main point here is that you will have obtained a Certificate of Availability from the DAS system.  (Oh by the way as of press time, the USPTO had still failed to pull the plug on PDX despite having been repeatedly asked to do so.  Thus if the OFF was EPO, you don’t get to use DAS at all.  See blog article.)  You can look at your CofA and you can be absolutely sure of several things. 

First, if you have a CofA you can be absolutely sure that you did not somehow get mixed up in communication with instructing counsel about what Office exactly is the OFF.  If instructing counsel is, say, in Germany, you do not need to wonder what if somehow they got mixed up and said the priority application was filed in the German patent office when in fact they meant to say the European Patent Office or vice versa.  If the CofA says “EP” then there is no doubt that we are talking about the EPO as the OFF rather than, say, the German patent office.

Second, if you have a CofA you can be absolutely sure that you did not somehow get mixed up in communication with instructing counsel about the digits of the application number or the correct way to write them.  Did a dyslexic mistake happen, with an accidental transposition of an “85” as “58”?   Is there a check digit at the end that needed to have a period to set it off from the rest of the application number, and did the period get forgotten? If you have a CofA in hand, you know that no such mistake got made.

Third, if you have a CofA you can be absolutely sure that you did not somehow get mixed up in communication with instructing counsel about the filing date of the priority application.  Did someone get mixed up about whether “3-6” means March 6 or June 3?  Did a digit in the date get mistyped?  If you have a CofA in hand, you know that no such mistake got made.

Fourth, what if instructing counsel screwed up by failing to file the needed papers in the foreign patent office so that the foreign patent office would make the priority application available to DAS?  How would you ever know that the foreign firm screwed up something like this?  If foreign counsel screwed this up, and if later the USPTO says they were unable to retrieve the ECC, and it turns out the USPTO was not making this up after all, then you the US firm are going to get blamed.  You the US firm may have to pay the $400 government fee for the petition for forgiveness for failing to hand in the certified copy on time.  How can you independently confirm that instructing counsel did not screw this up?  Simple.  You trust but verify.  You obtain a CofA.  If you have a CofA in hand, then it means instructing counsel did not screw up that part about filing the needed papers in the foreign patent office so that the foreign patent office would make the priority application available to DAS.

Fifth, not that a foreign patent office would ever make a mistake, but just speaking completely hypothetically, what if the OFF were to make a mistake somehow in its own internal workflow, somehow failing to make the priority application available to DAS despite having been duly asked to do so by your instructing counsel?  How would you ever know?  Simple.  You trust but verify.  You obtain a CofA.  If you have a CofA in hand, then it means the foreign patent office did its job correctly in terms of making the priority application available to DAS.

Oh and if the way that you came into possession of the CofA is that you yourself obtained it from DAS rather than instructing counsel having sent the CofA to you, then what needs to happen next is that you send the CofA to instructing counsel.  When you do this, basically you are in a very polite way pointing out that they failed to be trendy, modern and up-to-date and if they wonder why you never send reciprocal work to them, this is one of the reasons for it.

Returning to “free from error”.  What about that DAS access code that instructing counsel communicated to you.  You are going to faithfully copy it into your ADS or your Form PTO/SB/38, right?  You are going to carefully have a Second Pair Of Eyes in your office check to see that you made no error when you copied the DAS access code from that email from instructing counsel into the ADS or into the Form SB38, right?  So now you can relax, right?

Of course not.  What if instructing counsel fat-fingered the DAS access code when they sent the email to you?  Or, worse, what if the foreign patent office fat-fingered it when they sent the DAS access code to your instructing counsel?

Simple.  Trust but verify.  When first you lay your hands on what purports to be the DAS access code, you assume it to be in error until it is proven not to be in error.  Without delay you log in to the DAS system and you set up an “alert” for the foreign application.  This requires you to punch in five pieces of information:

• the identity of the OFF
• the application number
• the application type (design, trademark, patent, utility model, international application number)
• the filing date
• the DAS access code

Having punched in the five pieces of information, you will either get a smiley face or a frowny face from DAS.  The smiley face means, among other things, that the DAS access code that you punched in was free from error.  Then without delay, and with a Second Pair Of Eyes, you get the DAS access code (and the identify of the office, and the application number, and the filing date, all of which you have confirmed are free from error due to the smiley face) loaded into Form PTO/SB/38 (Request to Retrieve Electronic Priority Document) or Form PTO/AIA/14 (Application Data Sheet).  And without delay, you get the retrieval request e-filed at the USPTO so that there is absolutely no question that a suitable DAS request, free from error, was timely filed at the USPTO.

When you set up the alert in DAS, there are two possibilities about how it will go:

1. DAS might tell you that someone already has an alert set up for this priority application, or
2. DAS might not say any such thing, meaning that you were the first to set up an alert for this priority application.

The thoughtful reader will be able to guess where I am going with this.  Of course what you are hoping for is that DAS will tell you that instructing counsel had already set up an alert in DAS for this priority application.  This means that instructing counsel is truly and by far extremely trendy, modern and up-to-date.  If there were ever a foreign firm to which you might confidently entrust a piece of reciprocal work, maybe this is the firm.

Now to return to the presenting question.  The 4-and-16 date is imminent, and the PDX/DAS people at the USPTO are up to their usual very disappointing foot-dragging and have intentionally not retrieved the ECC from PDX or DAS.  Who will blink first?  Will you give up and e-file an Interim Copy on the last day of the 4-and-16 time period?  

There are many drawbacks to filing the Interim Copy.  One thing is that it takes time and costs money in terms of your valuable time.  Another is, what if you accidentally file the wrong document in the wrong application file?  Another is, what if you do it wrong, and don’t realize you did it wrong, and then you clear the docket for filing the Interim Copy?  (For example there is a picky thing about having to say “Interim Copy” on a separate sheet, there by satisfying a “magic words” requirement.)  There is also just the wimping-out factor.  It seems to me that filing an Interim Copy is like admitting to the whole world that the practitioner lacks confidence in the practitioner’s own ability to do seemingly simple things like fill in four characters in the “DAS access code” field of an ADS.  

Having said all of this, there is a practitioner whom I respect (whose initials are Suzannah S) who simply always files an Interim Copy as a matter of routine on or shortly after Filing Day, just so that it is done and she never has to think about it again.  Such a practitioner is then safe against many of these things that could otherwise go wrong later.  This assumes, of course, that the Interim Copy was itself filed correctly and without any error, that the Magic Words were duly inscribed on the separate sheet, and so on.  The point here is that a correctly filed Interim Copy reduces greatly the risk that she would later have to file a $400 petition for forgiveness for failing to hand in the certified copy, and greatly reduces the risk that she would fail completely to perfect a priority claim.  I cannot fault a practitioner if the practitioner chooses such a path, particularly given the USPTO’s present approach of intentionally foot-dragging on the retrieval of ECCs until after it is too late to file an Interim Copy as a protective step.  This is a matter of personal preference as a practitioner.

Again back to the presenting question.  The 4-and-16 date is imminent, and the PDX/DAS people at the USPTO are up to their usual very disappointing foot-dragging and have intentionally not retrieved the ECC from PDX or DAS.  Who will blink first?  Will you give up and e-file an Interim Copy on the last day of the 4-and-16 time period?  Or will you tough it out?  Here’s how I decide.

I look in DAS, at my workbench.  This is a place that lists the identity of the OFF, the filing date, the application number, and the DAS access code.  I cross-check this against the ADS or SB38 that I view in IFW.  If they match perfectly, then my choice is to tough it out.  I figure that later if the USPTO plays dumb and pretends they are unable to get the document retrieved in DAS, I can prove them wrong.  If they match perfectly, then I don’t file an Interim Copy.  

But they better match.  If they don’t match, then it means I screwed up the ADS or the SB38, which darn well better not have happened.

But the problem is, it’s not enough simply to have handed in an error-free DAS request timely.  The burden is still on the applicant to be a watchdog on the USPTO, to badger the USPTO to make sure that despite all of the foot-dragging, eventually the USPTO does get around to actually retrieving the ECC.  The problem is that according to the Rules, if the USPTO still fails to retrieve the ECC, no matter why this failure happens at the USPTO, it still counts as being the applicant’s fault.  You could end up with a granted US patent that has a failed priority claim, for no better reason than that somebody at the USPTO in the PDX/DAS department failed to do the two mouse clicks required to retrieve the ECC, and you did not notice that they failed to do the two mouse clicks.

So it’s on you, the practitioner, to look closely at that Office Action or at that Notice of Allowance to make sure the Examiner checks Box 4 or Box 12 as an admission by the USPTO that yes you did somehow get the certified copy into the file.  Layered on top of this is that you might as well not wait for the Office Action or the Notice of Allowance to arrive to check for this kind of thing.  You should be checking IFW itself repeatedly to make sure that the PDX/DAS people at the USPTO finally decide they have aged your retrieval request long enough, and that they finally do get around to retrieving the ECC.

By the way, why is it that anything about USPTO’s retrieval of ECCs is left in the hands of human being workflow?   This is the sort of thing that computers are supposed to be good at.  The retrieval of the ECC should simply happen automatically within mere seconds of when the filer provides the DAS access code to the USPTO system.  I will point out that in the ePCT system, if you enter a DAS access code into ePCT for a pending PCT application, the retrieval of the ECC is automated.  It does not rely upon human being workflow.  USPTO should look to WIPO to see how to do this sort of thing better.

Which brings us back to the “alert” that you had set up in DAS.  Yes of course you did set up an “alert” in DAS, right?  And this means that the moment the DAS people get around to retrieving the ECC, the DAS people will trigger a tripwire in Geneva and you will receive an email from the DAS system.  The email from the DAS system will notify you that the USPTO did in fact retrieve the ECC.   You can then follow up by looking in IFW to make sure the USPTO correctly carried out its internal workflow and loaded the ECC into IFW.

What do you consider to be the Best Practice regarding filing of an Interim Copy?  Please post a comment below.