An open letter to the Commissioner for Patents

I request that the Commissioner for Patents publish an Official Gazette notice along the lines of the proposed notice appearing below.

The unfortunate situation prompting this request is that the wording of 37 CFR § 1.55(i)(2), as interpreted by the Office of International Patent Legal Administration, is such that there is a trap for the unwary in every US design patent application in the “35” series code that claims foreign priority and that makes use of DAS.  The trap for the unwary is that if the application claims foreign priority, and if the application relies upon DAS for the retrieval of the certified copy, then the USPTO’s interpretation of Rule 55 is such that the priority claim is defective unless the applicant knows to jump through a certain hoop.  The hoop to jump through is the filing of a “corrected ADS” that does not actually correct anything.  

Many an issued US design patent is, on this interpretation, a patent that appears to have a perfected priority claim but is vulnerable to attack if the applicant had failed, during the pendency of the application, to file the “corrected ADS” just mentioned.

Some Examiners in Technology Center 2900 have, since about June of 2020, begun warning applicants in 35-series applications of this circumstance.  But I know from my own docket that many 35-series cases having such fact patterns are slipping past the notice of Examiners.  There is thus an extremely urgent need for the Commissioner to publish an Official Gazette notice warning the filing community of this interpretation of 37 CFR § 1.55(i)(2) by the Office of International Patent Legal Administration.

Here is the proposed Official Gazette notice:


Official Gazette Notice

Making use of the Digital Access System in US designations from International Design Registrations under the Hague Agreement

The United States became party to the Hague Agreement on May 13, 2015. This was the first date upon which the filer of an international design application pursuant to the Hague Agreement could designate the United States. The first US design patent issuing upon such an international design application issued on April 26, 2016 as US Patent Number Des. 754922.

An applicant making use of the Hague Agreement has the option of making a priority claim to an earlier-filed industrial design application. So far as a US designation is concerned, the priority claim could for example be to an earlier-filed industrial design application filed in a foreign patent office in a state, i.e. country, belonging to the Paris Convention for the Protection of Industrial Property or to the World Trade Organization.

In such a US designation, perfection of a foreign priority claim requires that the applicant fulfill two distinct requirements – timely and proper presentation of the priority claim, and timely and proper provision to the USPTO of a certified copy of the priority application.

As for the first requirement, namely the timely and proper presentation of the priority claim, the most common way that an applicant fulfills the requirement is by satisfying the Hague Agreement and the Hague Agreement Regulations. This is generally carried out by filing the international design application by means of Form DM/1 which provides bibliographic data including information about a priority claim, if any. The priority claim is communicated in Box 13 of the Form DM/1, and includes at least an identification of the Office in which the priority application was filed, the filing date of the priority application, and the application number of the priority application.

Part of the international design application process is that the International Bureau (IB) of the World Intellectual Property Organization (WIPO) communicates the international design application (IA) to each designated Office. In the case of a US designation, the IB transmits the IA to the USPTO electronically. This transmission includes electronic communication of the bibliographic data contained in Form DM/1. If the applicant presented a priority claim properly in the international design application, and if the US was designated, then this priority claim is automatically communicated electronically to the USPTO and is loaded automatically into USPTO’s systems. In this way the above-mentioned first requirement for a perfected priority claim is satisfied.

Commencing from February 28, 2018 it became possible for an applicant filing an international design application to include in box 13 of Form DM/1 not only the Office and filing date and application number of a priority claim, but also a DAS access code. A designated Office might then make use of the DAS access code from Form DM/1 to facilitate retrieval of an electronic certified copy of the priority document from the DAS system.

The USPTO became an Accessing Office with respect to designs on October 1, 2018. Prior to this date, an applicant in a US designation of an international design application would be able to satisfy the second requirement for perfection of a priority claim (provision of a certified copy of the priority application) only by providing a physical certified copy of the priority application to the USPTO. Commencing on October 1, 2018, however, an applicant in a US designation of an international design application has had a second option for satisfying this second requirement for perfection of a priority claim (provision of a certified copy of the priority application), namely the use of the DAS system.

For an applicant to be able to make use of the DAS system, it is necessary that the priority application be available to the DAS system. In October of 2018 only a few Offices were Depositing Offices to the DAS system. By the present day, however, design Offices in Australia, Austria, Canada, Chile, China, Colombia, Georgia, India, Israel, Italy, Japan, Norway, South Korea and Spain are Depositing Offices in DAS. The European Union Intellectual Property Office and the International Bureau of WIPO are also Depositing Offices in DAS.

37 CFR § 1.55(i)(2) sets forth conditions under which the USPTO will consider an electronic copy of a priority document from the DAS system to constitute a certified copy for purposes of perfection of a foreign priority claim. One of those conditions is that the priority claim must have been presented in an Application Data Sheet.

In US designations of international design applications in which the applicant has provided all of the pieces of information needed to carry out a retrieval of an electronic copy of a priority document from the DAS system, the USPTO has on some occasions carried out retrieval of the electronic copy of the priority document even in cases where the priority claim had not been presented in an Application Data Sheet. It is the USPTO’s view that such an electronic copy of a priority document fails to serve as a certified copy for purposes of perfection of a foreign priority claim.

In a US designation of an international design application in which the priority claim has not been presented in an Application Data Sheet, and in which the applicant has not provided a physical certified copy of the priority application, and in which the USPTO has carried out retrieval of the electronic copy of the priority document, the applicant can perfect the priority claim by filing an Application Data Sheet presenting the priority claim. The filing of the Application Data Sheet causes the retrieved electronic copy of the priority application to constitute a certified copy. 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.

The Application Data Sheet filed for purposes of causing the electronic copy to constitute a certified copy may be a corrected ADS pursuant to 37 CFR § 1.76(c)(2) which includes “only those sections containing changed or updated information”. Filing a corrected ADS which include only those sections containing changed or updated information has the advantage for the Office and for the applicant that it permits the applicant to omit the inventor information, the correspondence information, the application information, the representative information, the domestic benefit information, and the applicant information. Omitting those six sections saves the Office from having to review those six sections to see whether any changed or updated information is being provided therein. Omitting those six sections saves the applicant from having to provide those six categories of information, thus saving work for the applicant and avoiding any risk of inadvertently providing erroneous information. It is thus suggested that such a corrected ADS filed for purposes of causing the electronic copy to constitute a certified copy provide only the foreign priority information.

37 CFR § 1.55(i)(2) requires that a corrected ADS filed for purposes of causing the electronic copy to constitute a certified copy list the Office of filing, the filing date, and the application number of the priority application. 37 CFR § 1.55(i)(2) does not require that a corrected ADS filed for purposes of causing the electronic copy to constitute a certified copy provide the DAS access code. It is thus suggested that such a corrected ADS filed for purposes of causing the electronic copy to constitute a certified copy omit the DAS access code, unless the applicant has not previous provided the DAS Access code to the Office. Omitting the DAS access code saves work for the applicant and avoids any risk of inadvertently providing erroneous information.

It is recognized that the requirement of 37 CFR § 1.55(i)(2) for an applicant in a US designation in an international design application that makes use of DAS to present a priority claim in a corrected ADS will in nearly all cases mean that the ADS communicates nothing to the Office beyond information that the applicant previously communicated to the Office through the Hague Agreement and the Hague Agreement Regulations, that is, by means of Form DM/1. The Office intends to explore whether it may be able to amend 37 CFR § 1.55, or take some other official action, so as to relieve an applicant in a US designation in an international design application that makes use of DAS of the need to to present a priority claim in a corrected ADS. The Office also intends to explore whether such amendment or other official action might be able to be carried out with retroactive effect.

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.