The “Captain May I?” problem can arise in PCT cases too

In an earlier blog article I wrote about the “Captain May I?” problem.  This is the problem that arises if a Hague Agreement filer (the filer of an international design application) designates the US, and if the filer claims priority from a non-US design application, and if the filer relies upon DAS as the way to provide the certified copy of the priority application to the USPTO.  In that blog article I described that for two and a half years now, the USPTO has been aware of the fact that Hague filers often use Form DM/1 as a way to provide a priority claim and its DAS access code.  USPTO interprets its own 37 CFR § 1.55 in such a way that the electronic copy of the priority application that USPTO retrieves from DAS, using that DAS access code, does not count as a “certified” copy unless the Hague filer also files an Application Data Sheet presenting the priority claim all over again.  

It would have been helpful if USPTO had touched up 37 CFR § 1.55 a year ago, or two years ago, or two and a half years ago, to fix the perceived problem in the rule that leads to this otherwise completely unnecessary duplicate presentation of the priority claim.  USPTO’s foot-dragging on this has led to an accumulation of two and a half years’ worth of issued US design patents that have a cloud over them if they claim foreign priority and made use of DAS.

Upon a bit of reflection I realize that this “Captain May I?” problem with USPTO’s interpretation of its own 37 CFR § 1.55 can also put a cloud over a US utility patent if it comes from a PCT application. 

Now of course the great majority of PCT applications claim priority from some previous patent application.  And in the great majority of such applications, the filer of the PCT application does manage to get a certified copy of the priority application into the hands of the International Bureau timely.  When that condition is satisfied, then the filer who files papers to enter the US national phase does not need to devote very much time or energy to getting a certified copy of the priority application into the hands of the USPTO.  The DO/EO/US will generally retrieve an electronic certified copy of the priority application from the IB as a routine part of the process of US national-phase entry.

But every now and then there will be a PCT application where the PCT filer slipped up and failed to get the certified copy into the hands of the IB on time.  When that happens, the priority claim is not lost, but the consequence is that the filer is going to need to provide certified copies to each of the designated offices individually, at the time of national-phase entry.  In the old days, this was a lot of trouble because it required physically delivering a physical certified copy to the USPTO.  In recent years, however, this can be trivially easy because most of the Offices where the priority application might have been filed are Depositing Offices in the DAS system.  These include for example Argentina, Australia, Austria, Brazil, Chile, China, Colombia, Denmark, Estonia, Eurasian Patent Office, European Patent Office, Finland, Georgia, India, Israel, Italy, Japan, Morocco, Netherlands, New Zealand, Norway, South Korea, Spain, Sweden and United Kingdom.  

How is it that an issued US utility patent might end up with a cloud over it from this “Captain May I?” problem?  To see this, we need to review a bit about the procedure for entry into the US national phase.  If you were to click through PAIR or Patentcenter to review the file wrappers of a hundred randomly selected granted US utility patents that were each a national phase from a PCT application, you would find that in at least 99 of those cases, the filer filed an ADS.  (Another name for a case that is a US national phase of a PCT application is “a 371 application”.)  But strictly speaking, US rules do not require that a filer entering the US national phase from a PCT application file an ADS.  I actually tested this recently in one of our firm’s cases.  I filed papers for entry into the US national phase, intentionally omitting the ADS.  And indeed we did eventually receive an official Filing Receipt and a Notice of DO/EO Acceptance, just as usual.  

So the way to end up with a “Captain May I?” cloud would be to have a PCT application where the PCT filer failed to get the certified copy of the priority application into the hands of the IB timely.  And then where the PCT filer entered the US national phase, and did not file an ADS.  (It will be appreciated that each of these things is a thing that happens quite rarely.)  But if these two things happen, and if the filer then uses DAS as the way to get the certified copy into the hands of the USPTO, then that case will have a “Captain May I?” cloud hanging over it.

So given that this “Captain May I?” problem applies not only to Hague applications but also to PCT applications, then I reiterate that here are things that the USPTO simply must do.

First, USPTO must publish an Official Gazette notice setting forth USPTO’s interpretation of its own 37 CFR § 1.55.  That in a Hague Agreement US-designation case where no ADS was filed, or a PCT US national-phase case where no ADS was filed, and where a priority claim has been made, and where DAS was used as the way of getting an electronic copy of the priority application into the US file, that it is the USPTO’s position that the electronic copy of the priority application is not a certified copy.  And that it is the USPTO’s position that the only way to convert the non-certified copy into a certified copy is to file an ADS presenting the priority claim (the identity of the office of first filing, the filing date, and the application number).  This OG notice 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 make it that the electronically retrieved copy of the priority document from DAS does not count as a certified copy, then of course USPTO needs to amend Rule 55 to eliminate the defect.  The rule change should simply state that any electronic copy of a priority document retrieved from DAS counts as a 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 or Form SB/38.  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 electronic copy retrieved by the USPTO from DAS to count as a 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 or Form SB/38.  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 371 case for which one is responsible, looking to see whether it relies upon a priority claim, and whether no ADS was filed, and whether DAS was relied upon as the way of getting the certified copy into the US case.  In such a circumstance, 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.