The USPTO makes much of the importance of receiving information in computer-readable formats. For example the USPTO has proposed to charge a $400 penalty to the patent applicant who would fail to provide the body of a patent application in Microsoft Word format. Why, then, does the USPTO so consistently fail to practice what it preaches? For example when the applicant provides issue-fee information (assignee name and attorney-agent-or-firm information) in computer-readable format, the USPTO discards the provided computer-readable characters and hand-keys it, often making mistakes (keying “Radom, Poland” as “Random, Poland” or keying my name “Oppedahl” as “Oppendahl”). The most recent glaring example of this has revealed itself in USPTO’s mishandling of incoming designations from international design applications, as I will describe. (These are the applications having application numbers in the series code “35”.)
We have by now noticed two categories of mistakes by the USPTO.
The first category of mistake that we observed had to do with priority claims. When a design applicant files an international design application (called a “Hague application”), the applicant usually claims priority from some earlier design application. The applicant also indicates which “designations” are desired. Each designation is an Office in which the applicant hopes to obtain design protection. One of the Offices frequently selected by a Hague applicant is the USPTO. The USPTO is rare among design protection Offices in requiring that the applicant provide a certified copy of the priority application, failing which the priority claim will be deemed to be defective.
Often the Hague applicant will be so fortunate as to have filed the priority application in an Office that is a Depositing Office in the WIPO DAS system. If so, then the applicant can provide the DAS access code in Form DM/1. (Form DM/1 is the electronic form by which the applicant provides bibliographic data in computer-readable form to the IB, which in turn provides the bibliographic data in computer-readable form to the designated Offices.) This provision of a DAS access code in Form DM/1 first became possible on February 28, 2018, as I blogged here.
What I am astonished to have learned is that the USPTO, as a designated Office, fails to auto-load all of the fields of bibliographic data in the electronic Form DM/1 into USPTO’s systems. Instead, what I am disappointed to learn is that USPTO’s workflow is to hand-key much of the information from the Form DM/1 into USPTO’s systems.
The first way that this came to my attention is in a recent US designation of a Hague case which my firm was asked to handle. We received an Office Action and we were disappointed to see that the Examiner had not acknowledged, in Box 12, the presence of the certified copy of the priority application in the application file. Close scrutiny of the application file revealed a very innocent explanation for this seeming lapse by the Examiner, namely that indeed there was no certified copy of the priority application in the application file. Why, we wondered, had the USPTO not retrieved the electronic certified copy of the priority application from the DAS system?
We eventually figured it out. Even though the Hague applicant had provided the DAS access code in Form DM/1, and even though the IB had provided the Form DM/1 (and thus the DAS access code) to the USPTO in computer readable format, the USPTO did not auto-load it into USPTO’s systems. The USPTO only hand-keys such bibliographic data into its systems, and the Application Branch snoozed through the part about the DAS access code in this case. The official Filing Receipt said, falsely, that the applicant had not provided an access code.
Apparently the USPTO personnel who later have the responsibility for retrieving electronic certified copies from DAS saw that in this case, no access code had been provided (which was false, but they did not know it was false) and so did not carry out the retrieval. Which then explains why there was no certified copy in the file, and which then explains why the Examiner did not acknowledge the certified copy in the file.
I can guess how this disappointing situation came to pass. The volume of designations reaching the USPTO from the Hague system was small at first. The USPTO only joined the Hague system late in 2013 and the volume of Hague filings itself was very modest in 2013. Only now in very recent years has the volume of designations reaching the USPTO grown to be of some measure. Probably USPTO management figured it was cheaper to pay people to hand-key all of the workflow than to spend the money for software development to automate the data inflow from the IB.
The problem, of course, is that hand-keying is by definition error-prone.
We then just yesterday ran into another example of such a mistake by the USPTO. In another of our Hague cases, in the form DM/1 the title is “All-in-one computer” but the Application Branch apparently mistyped it as “Allinone computer”. I suppose in that particular case the other possibility is that the field of data did autoload but the software that the USPTO person wrote was defective and failed to handle the hyphens correctly.
Anyway, in this particular case the way the Application Branch mistake got fixed is that the case got allowed and then the case passed to the Issue Branch where Final Data Capture takes place. The Issue Branch person did what the Application Branch person failed to do, which was to cross-check between the Form DM/1 and the information on the Filing Receipt. And the Issue Branch person mailed out a Corrected Filing Receipt.
I will never learn the name of the nice Issue Branch person who caught the mistake. Thank you anyway, nice Issue Branch person!
What needs to happen right away is that the Application Branch needs to suck it up and spend the money to do what it takes so that the bibliographic data from the Forms DM/1 will auto-load (accurately!) into the USPTO systems. It is not acceptable that the USPTO hand-keys this information.
Between now and when the USPTO does this urgently needed work, there is no choice about it but that Hague applicants who designate the US are going to have to proofread their Filing Receipts closely to see what kind of fat-fingering mistakes may have been made by the Application Branch people. Indeed it is an action item for such Hague applicants to go back and proofread all of their Filing Receipts going all the way back. Any and all Filing Receipts with application numbers in the series code “35” are candidates for this review.
It crosses my mind to suggest that at this point that it would be a great service to USPTO’s customers if USPTO were to sua sponte carry out a cross-check for every 35-series case, pending or issued, as to the bibliographic data in the Forms DM/1 and in the USPTO systems. Maybe the USPTO could mail out Corrected Filing Receipts as needed for the pending cases sua sponte. For the issued cases, maybe the USPTO could mail out letters as needed, disclosing the errors detected, and letting patent owners know of the option of requesting Certificates of Correction.