The childhood game of “Captain May I?” (Wikipedia article) irritated me greatly as a child. I had little patience for it. The premise of the game is that words do not mean what they seem to mean. In this game, a string of words which on its face is an instruction to take three steps forward does not actually count as an instruction to take three steps forward unless it is followed up by the query “Captain May I?” which is in turn followed by an automatic grant of permission by the “captain”. The conceit of the game is that any and all requests to the captain for such permission are automatically granted, so that after a few minutes of play one sort of assumes that because the requests are always granted, there should not really be a need to ask. But the “gotcha” in the game is that you must ask, even though the asking is pointless.
Today I was gobsmacked to learn that the USPTO plays “Captain May I?” with US designations of Hague Agreement applications (international design applications). If as a child you were to get tricked and forget to ask “Captain May I?” the consequences would merely be that you return to the starting line of the game. But as a design applicant if you get tricked and forget to ask “USPTO May I?” the consequence is, it seems, that you lose your priority claim. I am not making this up.
To explain this situation fully, I have to review some fundamentals about design applications and priority claims. I will first review a bit about ordinary domestic US design patent applications and will then turn to cases that arise because someone filed an international design application that happens to have designated the US.
When an applicant is trying to obtain a US design patent, the applicant is not obligated to make any priority claim. One path that an applicant may follow, if it so chooses, is simply to file the US design patent application and to rely upon the filing date of that US design patent application. But of course it often happens that a design patent applicant in the USPTO will choose to try to claim priority from some non-US application.
There are two important parts to the perfection of a foreign priority claim in an ordinary domestic US design patent application.
First, the applicant must present the priority claim. By this we mean that the applicant must somehow communicate to the USPTO that the applicant wishes to claim priority. The presentation of the priority claim must be timely (it must be done no later than some particular date in the time line of the US design patent application) and the presentation of the priority claim must be properly done (the filer must use the correct “magic words” and follow the correct procedure).
Second, the applicant must provide a certified copy of the priority application to the USPTO. This, too, must be accomplished timely (no later than some particular date in the time line of the US design application) and must be properly carried out.
Side note: throughout this entire discussion it is of supreme importance for the diligent and alert reader to keep constantly in mind that these are not the same thing. Presenting the priority claim, and handing in the certified copy of the priority application, are not the same thing. You might do one of them correctly and somehow fail to do the other one correctly, or vice versa. Everything that follows depends on keeping these things distinct in our discussions.
When I was first in practice, many years ago, there were a couple of different permitted ways of presenting the priority claim. From USPTO’s point of view, however, this had the great drawback that USPTO people were thus obligated to look around in each newly filed application to see whether any of the several ways might have been employed by the filer. Around fifteen years ago, somebody at the USPTO decided this was too much work for USPTO people to have to do. Instead, the USPTO selected a single unambiguous mode of communication, termed the Application Data Sheet, for such information. The idea is that this would save work for USPTO people. The USPTO person had only to look to see whether any paper had been filed that is entitled “Application Data Sheet”. This is a simple question with a simple yes-or-no answer. If the answer is “yes”, then this document is presumptively the sole source of information about many things including the priority claim if any. If the answer is “no” then the presumptive circumstance is that there is no priority claim in the case. This is so even if half a dozen other documents in the case purport to say that there is a priority claim. The USPTO personnel are permitted to ignore any and all such other documents, so far as any supposed priority claims are concerned.
When I was first in practice, there was exactly one way to provide a certified copy of the priority application to the USPTO. The one way to accomplish this was by physically delivering a physical certified copy of the priority application to the USPTO.
Of course in the year 2020 we are accustomed to the notion that it is pretty rare that a US design patent applicant will find it necessary to physically deliver a physical certified copy of a priority application to the USPTO. Most of the foreign Offices in which a priority application might have been filed are Depositing Offices in the DAS system. These include Australia, Austria, Canada, Chile, China, Colombia, European Union Intellectual Property Office, Georgia, India, Israel, Italy, Japan, Norway, South Korea and Spain in which a national design application might have been filed and to which priority might be claimed, as well as the International Bureau in which an international design application might have been filed and to which priority might be claimed. If the priority application was filed in any of those sixteen places, then it is a simple matter to make use of the DAS system.
How exactly does the US applicant bring about the result of the USPTO retrieving an electronic certified copy of the priority application from DAS? There are three possible ways by which the US applicant can accomplish this:
- filing Form PTO/SB/38 at the USPTO; or
- filing a handmade word processor document the substantive content of which is the same as the Form PTO/SB/38; or
- providing the retrieval information in an Application Data Sheet.
The specific pieces of information which the USPTO requires to be able to carry out the retrieval from DAS are:
- the identity of the Office in which the priority application was filed,
- the priority application number,
- the priority application filing date, and
- the DAS access code.
The US practitioner can easily independently confirm whether these four pieces of information are accurate by going to the DAS system and attempting to add the application to the practitioner’s DAS “workbench”. This involves setting up “tracking” of the application. The experienced practitioner will also download a Certificate of Availability from the DAS system, which provides objective confirmation that the priority application really is available to Offices such as the USPTO.
One way that an applicant can be assured that the USPTO is going to try to retrieve the electronic certified copy from the DAS system is by looking at the Filing Receipt. The Filing Receipt might contain language such as is quoted at right, in which the USPTO admits that the filer provided a DAS access code in an ADS, or provided the DAS access code in Form PTO/SB/38, or filed some document amounting to an “equivalent” of Form PTO/SB/38 that provided the DAS access code.
The trendy, modern and up-to-date practitioner will have set up “tracking” in DAS as mentioned above. This sets up a tripwire so that the instant the USPTO retrieves (or attempts to retrieve) the electronic certified copy, the IB will send the practitioner an email message letting the practitioner know that this happened.
In a domestic US design patent application, the Examiner will usually acknowledge that the applicant has satisfied both requirements — the presentation of the priority claim, and the the presence of the certified copy in the file. The Examiner might do so in a first way or in a second way as I will now discuss.
The first way that the Examiner can acknowledge the presentation of the priority claim, and the presence of the certified copy in the file, is by means of Form PTOL-326 (“Office Action Summary”) at Box 12, quoted at right.
The second way that the Examiner can acknowledge the presentation of the priority claim, and the presence of the certified copy in the file, is by means of Form PTOL-37D (“Notice of Allowability”) at Box 5, quoted at right.
The alert practitioner will have watched closely to make sure that the USPTO does carry out the DAS retrieval chronologically prior to the first Office Action or the Notice of Allowance. The practitioner will have set up the “tracking” in DAS and will have looked for the results in IFW as soon as the tracking reveals that the retrieval took place. The alert practitioner will then watch closely to make sure that the Examiner checks box 12 or box 5, as the case may be.
Having reviewed how it works for ordinary US domestic design patent applications, we can now turn to Hague Agreement applications. An applicant who files a Hague Agreement application (an international design application) can designate the US. If the US has been designated, then the IB eventually communicates the application to the USPTO. When the USPTO receives this communication, the USPTO gives the case an application number in the series code “35”. Such an application reaches Technology Center 2900, which is the same Tech Center that examines domestic design patent applications (which have application numbers in the series code “29”). Many aspects of the examination of a 35-series case are the same as for a 29-series case — for example the standards for patentability are the same, and the standard for restriction is the same.
We can now look closely at the two requirements for perfection of a foreign priority claim, in the context of a 35-series case, namely (1) the requirements for presentation of the priority claim, and (2) the requirements for provision of the certified copy.
First let’s discuss the requirements for the presentation of the priority claim in a 35-series case. We already discussed that in a 29-series case, the applicant is only permitted to use one communications path to present the priority claim, namely an application data sheet (“ADS”). Close study of 37 CFR § 1.55 reveals, however, that in a 35-series case, the applicant has two options available for communicating the priority claim. The applicant can use an ADS, but the other option is that the applicant may simply present the priority claim “in accordance with the Hague Agreement and the Hague Agreement Regulations”. If you were to look at lots of actual 35-series cases, what you would see is that nobody ever uses that first option (the ADS). Hague applicants always present their priority claims “in accordance with the Hague Agreement and the Hague Agreement Regulations”.
The way that the Hague applicant presents its priority claim “in accordance with the Hague Agreement and the Hague Agreement Regulations” is by means of Form DM/1 (“Application for International Registration”). The applicant lists the priority claim in box 13 of the form, quoted at right. There are fields for the name of the Office in which the priority application was filed (first column), the priority application number (second column), the priority filing date (third column), and the DAS access code (fifth column). (Actually, sophisticated Hague filers do not use a paper or fillable PDF version of Form DM/1 but instead carry out e-filing of a purely electronic equivalent of Form DM/1, in which the e-filed information auto-loads into the patent office systems.) When the US is designated, everything about the priority claim or claims auto-loads from an IB system into the USPTO systems and it automatically shows up on the official USPTO Filing Receipt such as I quoted above.
So again, to recap, in a 35-series case the filer will nearly always present the priority claim by means of e-filing the electronic equivalent of Form DM/1, and the priority claim will then auto-load into the IB’s systems and (if the US is designated) the priority claim will likewise auto-load into USPTO’s systems.
So far, so good. USPTO has not, to my knowledge, put into question the notion that there are not one but two permitted ways for a Hague Agreement applicant to present a foreign priority claim in the USPTO, and that one of the two permitted ways is to do it “in accordance with the Hague Agreement and the Hague Agreement Regulations” which in practical terms means “by means of Form DM/1 or its e-filed equivalent form.” And the USPTO has not, to my knowledge, put into question the notion that if a priority claim auto-loads into USPTO’s system from the IB’s system (from that Form DM/1 or its electronic equivalent), this does count as the applicant having duly “presented” its foreign priority claim to the USPTO.
Having skirted around it, we now shine a bright light on the trouble area. This blog article centers on the USPTO’s present-day views about the second of the two things that an applicant must do to perfect a foreign priority claim, namely the provision to the USPTO of the certified copy of the foreign priority application, in the particular context of a 35-series case. I will now describe USPTO’s views about this that I heard yesterday for the first time, and you won’t believe what I tell you.
What made me realize there was some sort of problem was the following language that an Examiner wrote in a June 10, 2020 Notice of Allowance in one of my 35-series cases:
3. Examiner’s Comment Regarding Foreign Priority
Receipt is acknowledged of a certified copy of foreign application (CN) 20183029nnnnn.
However, the foreign priority claim has not been perfected because the claim has not been made in an Application Data Sheet (ADS). 37 CFR § 1.55(i)(2) requires, when utilizing priority document exchange, the priority claim be made in an application data sheet.
The claim for foreign priority will not be perfected until applicant submits a corrected ADS (37 CFR § 1.76(c)) with underlining, which includes a priority claim meeting the requirements of 37 CFR § 1.55(i)(2).
In the case of a design application, the claim for priority must be presented during the pendency of the application, unless filed with a petition under 37 CFR § 1.55(e). If the claim for priority is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. § 255 and 37 CFR § 1.323.
I read this and I re-read this. It made no sense. If anybody ever wished to find out what are the requirements for properly presenting a priority claim, one will not get the answer by looking at 37 CFR § 1.55(i)(2). 37 CFR § 1.55(i)(2) does not direct itself to the question of how you know whether you have or have not correctly presented a priority claim. 37 CFR § 1.55(i)(2) directs itself only to a very different question, namely whether you are or are not entitled to a free pass for having failed to get your certified copy of the priority application timely into your patent file, a free pass because although you failed to get the certified copy of the priority application into the file on time, at least by the due date you did get into the file a properly presented request to the USPTO to retrieve an electronic certified copy (ECC) of the priority application. Saying this differently, if you merely asked the USPTO to retrieve an ECC, and asked by the due date, then it is okay that you did not actually get the certified copy into the file by the due date. That is the purpose and meaning of 37 CFR § 1.55(i)(2).
Importantly, if as of any particular date you had already gotten your certified copy into your file, then as of that date, 37 CFR § 1.55(i)(2) ceases to have any relevance to your application. As of that date you no longer need any free pass for having failed to get the certified copy into your file, because you already got your certified copy into your file.
Another way to describe exactly why the words that the Examiner wrote made no sense is to point out that the phrase “a priority claim meeting the requirements of 37 CFR § 1.55(i)(2)” is meaningless. 37 CFR § 1.55(i)(2) does not set forth the requirements for making a priority claim. 37 CFR § 1.55(i)(2) sets forth the requirements for requesting that the USPTO retrieve an electronic certified copy, a request which if timely made might give you a free pass on having to hand in a certified copy yourself by some particular date.
There is a section of 37 CFR § 1.55 that directs itself to the requirements for making a priority claim, but it is not 37 CFR § 1.55(i)(2). To find out how to make a priority claim in a 35-series case, you have to cast your eyes further and further downwards, until you reach 37 CFR § 1.55(m). 37 CFR § 1.55(m) is the section that explains that if your case is a 35-series case, you get the option of using either of two communications paths to present your priority claim, namely the two paths detailed above. (As a reminder, the two paths are that you may use an ADS, which is a path that nobody ever actually uses in 35-series cases, or you may follow “the Hague Agreement and the Hague Agreement Regulations” which is the path that everybody actually uses in 35-series cases.)
In my particular case that received this weird language from the Examiner on June 10, 2020, the reality is that the electronic certified copy arrived in the file on December 31, 2019. It got there because the USPTO retrieved it from DAS on that day. I knew that USPTO was going to retrieve it from DAS because the official Filing Receipt (quoted above) said that we had provided the DAS access code and said that USPTO promised to try to retrieve the electronic certified copy. And the USPTO tripped the tripwire; when the USPTO retrieved the electronic certified copy, I received an alert from the IB through the DAS system letting me know that the USPTO had done so.
On June 10, 2020 I filed a request for a corrected Notice of Allowance, asking the Examiner to withdraw this nonsensical language about how I had supposedly failed to present my priority claim properly.
Unfortunately, our Examiner ignored the request. Two months passed with no word from the Examiner. After more than two months of silence from the Examiner, I phoned her up. She doubled down on this language about how I had supposedly not presented my priority claim properly. She explicitly threatened to remove the priority claim from the application unless I would give up and present the priority claim in an Application Data Sheet. This was two days ago. I then placed a call to a very nice person at the USPTO, a high-up person at the USPTO who has some connection with these things. I left a voice mail message.
Yesterday the nice person returned my call. Here is what he explained.
He explained that as for the two things that need to be accomplished for a perfected foreign priority claim (presenting the claim, and providing the certified copy), there is no question that in this case the applicant did satisfy the first of the two things. Form DM/1, or its electronic equivalent, is a perfectly satisfactory way of communicating a priority claim to the USPTO if the application is a US designation of an international design application, he acknowledged.
The only problem in my case, he says, relates to the second of the two requirements, namely the requirement that the applicant somehow get a certified copy of the priority application into the file. He says that Form DM/1 or its electronic equivalent is not a satisfactory way to accomplish this second requirement.
The real supposed problem with my patent application, he explained, is that the document in IFW that appears to be a certified copy (quoted from IFW at right) is not, in his view, really a certified copy. Yes, he acknowledges that the way that it got into the IFW is that the USPTO did retrieve it from the DAS system. Yes, the retrieval happened on December 31, 2019, just as it says there in IFW. Yes, the reason that the USPTO’s retrieval from DAS happened is that the applicant provided the application number and filing date and DAS access code in Form DM/1 in the international design application on the day that it was filed. Yes, the IB provided the application number and filing date and DAS access code automatically to the USPTO, and this is why the official Filing Receipt said “access code provided” and this is why the official Filing Receipt said the USPTO promised to try to retrieve the ECC. Yes all of these things are true.
But, he says, the file that we see in IFW would only count as an electronic certified copy if the manner in which the applicant communicated the priority claim had been an ADS. If on the other hand the manner in which the applicant communicated the priority claim was something other than an ADS, then the file that we see in IFW does not count as an electronic certified copy. In particular, if the manner in which the applicant communicated the priority claim was Form DM/1, this means that the document which the USPTO did actually retrieve from DAS does not count as an electronic certified copy.
Okay. Everything I just wrote is nuts. I admit this. And yet that is what I heard on the telephone yesterday from this high-up person at the USPTO, a person who in the past has always sounded perfectly sensible and has never sounded nuts to me.
So this is the place where you get to go back and re-read what I wrote. Twice maybe.
The source of all this, apparently, is indeed 37 CFR § 1.55(i)(2). The weird torturing of the English language that is going on here is that it is true that 37 CFR § 1.55(i)(2) does not actually have anything to do with how you know whether or not you correctly satisfied the first of the two requirements for a perfected priority claim (presenting the priority claim to the USPTO). It is true that if you want to know whether or not you have correctly satisfied the first of the two requirements for a perfected priority claim (the requirement of presenting the priority claim to the USPTO) you must direct your gaze downwards to 37 CFR § 1.55(m). But then we turn to the second of the two requirements for a perfected priority claim (in today’s world, providing an electronic certified copy through the DAS system). And in our torturing-of-the-English-language exercise, 37 CFR § 1.55(i)(2) does set forth what the applicant must do so that the document that the USPTO already retrieved from DAS will count as an electronic certified copy. The thing that the applicant must do so that the document that has been retrieved from DAS will count as an electronic certified copy (again I promise you I am not making this up) is that the applicant must “[present the] claim for priority … in an application data sheet … identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing”. Yes, even though the applicant already duly “presented the priority claim” in a way that fully complies with 37 CFR § 1.55(m), namely by filing Form DM/1 with the priority claim set forth therein, the applicant has supposedly failed to supply the certified copy because the applicant failed to “present the priority claim” in an ADS.
What this apparently means is that if you as a user of the Hague system are going to designate the US, and if you are going to use DAS as your way of getting the certified copy to the USPTO, then you will need to present your priority claim twice — a first time in Form DM/1, and a second time in an ADS. The time that you do it in Form DM/1 will satisfy USPTO’s requirement that you “present the priority claim”. And when you do it again later in the ADS, you will satisfy USPTO’s requirement that the document that USPTO retrieved from DAS will count as an electronic certified copy.
What about that DAS access code? What communications mechanisms are permitted and available for the filer to communicate the DAS access code to the USPTO in a 35-series case? A close reading of 37 CFR § 1.55(i)(2) shows that USPTO does not require that the DAS access code be communicated in that ADS. 37 CFR § 1.55(i)(2) does say that the applicant must “provide the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application” (by which we mean the DAS access code). But 37 CFR § 1.55(i)(2) does not say that “the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application” must be communicated in the ADS. The applicant merely must “provide” the DAS access code.
A first communications path available to the applicant for “providing” the DAS access code pursuant to 37 CFR § 1.55(i)(2) is the fifth column of box 13 of Form DM/1 (or its electronic equivalent). Yes, I am not making this up. The Form DM/1 that USPTO says is defective as a way of presenting a priority claim for purposes of causing a document that has been retrieved from DAS to count as an electronic certified copy is nonetheless in USPTO’s view a perfectly good way to communicate “the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application” as set forth in 37 CFR § 1.55(i)(2) (that is, the DAS access code).
A second communications path available to the applicant for “providing” the DAS access code pursuant to 37 CFR § 1.55(i)(2) is Form PTO/SB/38 or equivalent.
What this very nice person has told me is that he is backing up the threat from the Examiner. If I fail to file the ADS that she says I must file, then the application will be treated as if this document that USPTO retrieved from DAS on December 31, 2019 never actually got retrieved from DAS.
The alert reader will realize that if I wish to be super stubborn and refuse to hand in the ADS that the Examiner demands that I hand in, another option is for me to obtain a physical certified copy of the foreign priority application, and physically deliver it to the USPTO, all prior to the day that I pay the Issue Fee.
But otherwise if I wish to avoid loss of my perfected priority claim, I must say “Captain May I” and hand in a content-free ADS. If I capitulate by doing this, then that document that has been in IFW since December 31, 2019 will be instantly transformed from a non-certified copy into a certified copy. Keep in mind that nothing about the December 31, 2019 document will actually change in any way. The number of pages will not change. The ones and zeroes that make up the PDF file will not change. It will not, for example, subsequently receive a cryptographic signature that somehow “certifies” it. No. The only thing that will change is that in August of 2020, I will have filed a content-free ADS. I will have filed a “corrected” ADS that does not actually “correct” anything but that merely leaves unchanged the priority claim that already got presented to the USPTO on the day that this international design application was first communicated to the USPTO.
I am not making this up!
But my pending case is just one case. I have at least six issued US design patents that are situated just like this case — US design patents that issued on 35-series applications in which the way that the certified copy found its way into the IFW is that the USPTO retrieved the certified copy from DAS, and the priority claim was communicated by means of Form DM/1, not by means of an ADS. There are at least six issued US design patents where an able adversary would be able to point to the same real or imagined flaw that this nice USPTO person described to me yesterday, in an effort to invalidate the priority claim that presently appears on the front page of the issued US design patent.
Here are things that the USPTO simply must do.
First, USPTO must publish an Official Gazette notice stating the things that the nice USPTO person said to me yesterday. What needs to happen is that design applicants and design patent practitioners need to have some document, a thing with words on the page, as a reference for discussion so that they can try to make sense of this strange business of supposedly having to file a content-free ADS on pain of losing a priority claim. Apparently the USPTO has known about this real or imagined problem since at least as long ago as June 10, 2020, given the weird Notice-of-Allowance language that I received on that day (quoted above). It is extremely disappointing that the USPTO has not already published such an OG notice. This needs to happen immediately and without further delay.
Second, assuming for sake of discussion that there really is some defect in the wording of 37 CFR § 1.55 that somehow really does put the applicant in a 35-series case in the position of not being able to rely upon the Form DM/1 as a way of requesting retrieval of an electronic certified copy, then of course USPTO needs to amend Rule 55 to eliminate the defect. Such amendment of the Rule should state that the effect of the amendment is retroactive without limit.
Third, it is of course within the ability of the Commissioner for Patents to waive rules. The Commissioner cannot waive statutes, but the Commissioner can waive rules. The Commissioner should issue an order expressly waiving 37 CFR § 1.55 to the limited extent necessary to permit any certified copy retrieved by the USPTO from DAS to count as an electronic certified copy, regardless of how or why the USPTO carried out the retrieval and regardless of how the USPTO came into possession of the information required to achieve the retrieval, including but not limited to Form DM/1. The order should expressly state that its application is retroactive without limit.
What should practitioners and applicants do? It is not easy to figure out what practitioners and applicants should do. The conservative path would be to rummage through every 35-series case for which one is responsible, looking to see whether it relies upon a priority claim. If it does, then the next question is, how did the certified copy get into the case? Maybe it was a physical certified copy in which case today’s inquiry ends. But if the certified copy got into the case from DAS, then the next question is, did the priority claim get presented to the USPTO by means of an ADS?
An if the answer to this question is “no”, then the conservative path would be to scramble around trying to fix this real or imagined problem. Maybe you would file an ADS even in the case of an issued patent. Maybe you would feel the need to file one of those petitions seeking forgiveness for having failed to hand in the certified copy prior to the relevant due date (which incurs a $400 fee, and which requires that you state that the entire period of delay was unintentional).
On the other hand, maybe you would play a game of chicken, waiting and waiting on the assumption that of course eventually the USPTO will surely do some amendment to Rule 55 eliminating this real or imagined defect in the Rule. Maybe the USPTO will even make the effect of the amendment to the Rule retroactive without limit. Or maybe the Commissioner will fix the problem with an appropriate order that waives the Rule to the extent necessary to make the real or imagined problem go away.
What do you think about all of this? Please post a comment below.