Trap for the unwary effective January 1, 2022 – EPO and USPTO and priority documents

Folks, the USPTO is going to pull the plug on the PDX system on January 1, 2022.  I blogged about this here.  This was in part due to the efforts of The Thirty-One Patent Practitioners.  You can read about the pulling-of-the-plug on the USPTO web site here.  In almost every way this is very good news:

  • You will be able to set a tripwire to let you know the moment the USPTO tries to retrieve the electronic certified copy of the EP priority document.
  • A log will be available to you that keeps a history of the USPTO’s retrieval of the electronic certified copy of the EP priority document.
  • You will be able to independently confirm ahead of time that the electronic certified copy of the EP priority document is indeed available to the USPTO, so as to eliminate any question about the ability of the USPTO say that it supposedly cannot retrieve the electronic certified copy.

But there is one way that this is a potential trap for the unwary, and that is the purpose of this blog article.  You should probably forward this blog article to every patent practitioner that you know who ever files a US patent application that claims priority from an EP patent application. 

The trap for the unwary is that for any US patent application that you file on or after January 1, 2022 that claims priority from an EP application, for which you want to accomplish a retrieval of an electronic certified copy, you are going to have to satisfy three new conditions that previously were not required of you.  Here are the three conditions:

  • You need to make very certain that EP counsel have done what is needed so that the EP priority application has been made available to the WIPO DAS system.
  • You need to get your hands on the DAS Access Code for that EP priority application.
  • You need to communicate the DAS Access Code timely to the USPTO as part of a request to the USPTO to retrieve the EP priority application from the DAS system.

If in the past you have used the WIPO DAS system for US filings that claim priority from applications filed in foreign offices other than EPO, then you will already be very familiar with these three conditions.  The one thing that you must focus on is that these three conditions will now apply to your new US filings that happen on and after January 1, 2022 that happen to claim priority from an EP application.

But if you are not completely familiar with the WIPO DAS system, then you need to become familiar with it, and fast.  What you do not want to do is to stay in a rut and continue with your filings that used to depend on the PDX system, doing them the same way that you did before.  You need to focus on all of this.

One way to gain familiarity with this is to go through The DAS Quiz.  Once you have completed The DAS Quiz then you will be much more familiar with the DAS system.

Here are your Best Practices to follow, effective January 1, 2022, for any new US patent application filing that claims priority from an EP filing:

  • Having had the US filing task entrusted to you, obtain the DAS access code from instructing counsel in Europe.  (Ideally instructing counsel will be trendy, modern and up-to-date and will know to provide it to you without your having to ask for it.)
  • Without delay, go to the WIPO DAS system and add the EP priority application to your DAS workbench using the “add tracking” button.  This provides many docketing and quality control benefits to your workflow:
    • you will have independently validated the digits and formatting of the EP priority application number (no worries about that pesky decimal point or check digit)
    • you will have independently validated the filing date of the EP priority application (no worries about mixing up April 6 or June 4)
    • you will have independently validated the DAS code of the EP priority application
  • Use the downarrow button to obtain a Certificate of Availability.   Check to see that “US” is listed among the capable Accessing Offices. Save the CofA to your file to eliminate any question as to the ability of the USPTO to claim some imagined inability to retrieve the electronic certified copy.
  • Click the pencil button to insert your file number in the “comments” field for this application and optionally, the file number of instructing counsel.
  • Look in the “tracked by” column to see if anybody else has set up tracking for this priority application.  If you see that some other firm has set up tracking, this tells you that the firm is trendy, modern and up-to-date.  You should probably entrust work to that firm in the future.
  • Copy and paste the priority application number, filing date, and DAS access code from the DAS workbench into your Application Data Sheet or your Form PTO/SB/38.  Of course it is preferable to use the ADS, and it is preferable to include the ADS in your very first EFS-Web or Patentcenter submission, the submission in which you do not yet know your US application number, so that the bibliographic data will auto-load into the USPTO systems.  
  • After obtaining your US application number, check to ensure that your priority information including DAS access code did auto-load into the USPTO systems.  
  • When the Filing Receipt arrives, check to ensure the USPTO admits that you did provide the DAS access code.  
  • Docket well in advance of the dreaded 4-and-16 date to make sure that you receive the tripwire email from DAS thta USPTO did retrieve the electronic certified copy.  Check that the electronic certified copy is visible in IFW in advance of the 4-and-16 date.
  • Check that Box 12 is checked in the first Office Action or that Box 4 is checked in the Notice of Allowance, acknowledging that the priority claim was presented.
  • Check that Box 12 is checked in the first Office Action or that Box 4 is checked in the Notice of Allowance, acknowledging that the certified copy has been provided.

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