Best Practice for getting a priority document to the IB?

A member of the PCT-L listserv recently asked:

For a PCT application filed with the RO/IB, what is the Best Practice for getting a certified copy of my priority document to the IB?

The Best Practice is to use WIPO’s Digital Access Service.

By way of background, in the majority of cases a PCT applicant will choose to file the PCT application in the same Receiving Office as the office where the priority application was filed.  In such a case of course the easiest way to get the certified copy of the priority document into the hands of the IB is to check the box in the Request, asking the RO to please transmit the certified copy to the IB.

This listserv member was, however, asking a different question, namely what to do if the RO selected by the filer is RO/IB?  In general where the RO is RO/IB, it will almost never turn out that the above-mentioned check box in the Request will lead to the RO transmitting the certified copy of the priority document to the IB.

(There is one rare fact pattern in which, for a PCT application filed in the RO/IB, the above-mentioned check box in the Request will in fact lead to the RO transmitting the certified copy to the IB.  The first reader to post a comment describing this rare fact pattern will win two free NFC key fobs — a first one of which is pre-programmed with a link to something interesting, and a second one of which is blank and ready for you to program yourself using your smart phone.)

So returning to the question presented, namely for a PCT application being filed in RO/IB, what is the Best Practice for getting the certified copy of the priority document into the hands of the IB?  And for sake of discussion and illustration I will assume that the priority document was filed at the USPTO.

As mentioned above, the Best Practice is to use WIPO’s Digital Access Service.  I will now describe step by step how to do this.

First, you need to get the priority application into DAS.  There is a Best Practice for doing this, which is that 11¾ months ago, when you filed the priority application, you did what was needed to get the priority application into DAS.  There were two ways to do this:

• When filing the priority application at the USPTO, use an Application Data Sheet, and in the ADS, check the box that says “Authorization to Permit Access to the Instant Application by the Participating Offices”, or
• when filing the priority application at the USPTO, include Form PTO/SB/39.

After doing this, docket a week or two to check for two indications that the USPTO has made the application available to DAS:

• in the Transaction History (“TH”) tab in Private PAIR, it says “Applicants have given acceptable permission for participating foreign”, and
• in the Filing Receipt (“FR”), it says “A proper Authorization to Permit Access to Application by Participating Offices (PTO/SB/39 or its equivalent) has been received by the USPTO.”

Note that for USPTO to make the priority application available to DAS, three things need to have happened:

• you gave permission using the ADS or the Form PTO/SB/39, and
• the USPTO gave an official Filing Date to the application, and
• the USPTO granted a Foreign Filing License (“FFL”).

So for example if your application is one of the unlucky applications that does not get an FFL right away after it was filed, then quite some time may pass before the USPTO actually makes the application available to DAS.

Or for example if OPAP has not yet gotten around to giving an official Filing Date to the application, then USPTO will not make the application available to DAS.

The other situation might be that 11¾ months ago, when you filed the priority application, you did not do what was needed to get the priority application into DAS.  You would identify this situation because (1) the above-mentioned magic words do not appear in the TH, and (2) the above-mentioned magic words do not appear in the most recent FR.  In such a case, you should run, not walk, over to EFS-Web and e-file Form PTO/SB/39.  Having done so, you should check Private PAIR daily for the all-important magic words to appear in the TH.  If more than a day or two passes and the magic words have still not appeared, you should send an email to PDX@uspto.gov to ask that the Form PTO/SB/39 be acted upon.

Once TH shows the magic words that you “have given acceptable permission”, you might think that USPTO has in fact made the application available in DAS.  Unfortunately USPTO tends to drag its feet about this.  So you need to test the DAS system to find out for yourself whether USPTO has made the application available in DAS.  (In general it will turn out that the USPTO has not actually made the application available in DAS, despite its having stated that you gave acceptable permission for USPTO to do so.)

To test this, sign in at DAS, click on “workbench”, and toward the bottom of the page click on “add tracking”.  A dialog box will pop up.  Fill in your application number (preceded by “US”), your filing date, and the “access code” which is the four-digit Confirmation Number from the USPTO.

At this point what might happen is that the application might get added to your workbench.  If so, then that is good news and you can relax a little.  Click on the downarrow and save the Certificate of Availability to your file server.  This proves not only that the USPTO really did make the application available to DAS but also that the certified copy of the priority document is actually available to other Offices.

Unfortunately, as I blogged a year ago, USPTO tends to drag its feet about this.  In the year that has passed, USPTO has gotten no better about this.

So what will probably happen is that you will attempt to “add tracking” and it will not work.  You will receive an error message that USPTO has not yet made the application available to DAS.  When this happens, send an email to PDX@uspto.gov asking that USPTO make the application available to DAS.

Continue to check DAS daily and hopefully, eventually USPTO will actually get around to making the application available to DAS.

If you are doing all of this 11¾ months after you filed the priority application, then there is a non-negligible risk that when the drop-dead day arrives for filing the PCT application, USPTO will still have failed to make the priority application available to DAS.  I will cover that eventuality below.

But let’s assume for sake of discussion that you followed the Best Practice back when you filed the priority application at the USPTO.  You found the magic words in TH and in the FR.  You logged in at DAS and you successfully added the priority application to your DAS workbench.  You saved the Certificate of Availability to your file server.  So now you are getting ready to e-file your PCT application at RO/IB.  What is the Best Practice at this point?

As you know, there are two ways to e-file a PCT application in RO/IB.  One way, perhaps the most familiar way for US filers, is to use PCT-SAFE File Manager (“FM”) to carry out the filing.   The other, more trendy, modern, and up-to-date way to file is by means of ePCT.  There are a host of reasons why you should use ePCT rather than FM.

• unlike FM, ePCT permits you to collaborate with co-workers, for example saving a submission that a co-worker can review or continue to work on
• unlike FM, ePCT has a shared address book feature so that you can draw upon address book entries in the address book of a co-worker
• ePCT carries out more data validations than FM
• you might accidentally use an outdated version of FM, while ePCT is by definition always up to date
• FM only runs on Windows computers, while ePCT can run on any computer
• FM will eventually be phased out at which point you would absolutely need to know how to use ePCT so you might as well learn now how to use ePCT

Either way, regardless of whether you are using FM or ePCT to file your PCT application in RO/IB, you will reach a screen that permits you to explain to the RO/IB how you intend that it will receive the certified copy of the priority document.  Ideally you will check the box that says that RO/IB should retrieve the priority document from DAS.

In ePCT, at this point the ePCT will actually go and query the DAS database and will independently confirm whether the priority document is available in DAS.  Assuming that you have a Certificate of Availability in hand, then ePCT will report back that the priority document is available in DAS.  This is very good news and now you can really relax.

But as mentioned above, if you only started to work on this DAS project 11¾ months after you filed the priority application, then there is a non-negligible risk that when the drop-dead day arrives for filing the PCT application, USPTO will still have failed to make the priority application available to DAS.  In that unhappy event, ePCT would report to you that the priority application is not available in DAS.  So what you will have to do is to tell ePCT that you plan to send the physical certified copy of the priority document yourself to the IB.

Not to worry.  I do not mean that you will actually have to send the physical certified copy of the priority document yourself to the IB!  It is merely that if the application is not yet available in DAS, then you can’t get past this validation, and you can’t actually click “submit”, unless you say that you plan to send it physically to the IB.

(Oh and by the way.  If your invention was made in the US, you need to worry about whether you have an FFL for your invention.  You had better make sure about this before you click “submit”.  Hopefully your priority application (a) discloses substantially everything that is in the to-be-filed PCT application, and (b) has already received an FFL.  In which case you can move forward.  Otherwise you are going to need to obtain a faxed expedited FFL from the USPTO.)

Okay.  So now you click “submit” and you e-file your PCT application in the RO/IB.  What next?

If as of the PCT filing date you had not yet gotten the priority document to be available in DAS, then you need to continue to badger the folks at PDX@uspto.gov daily until they get their work done.  And you need to continue your daily checking DAS to see whether you can obtain a Certificate of Availability.

Once you get your CofA in hand, then return to ePCT.  Open up your application in ePCT and click on “actions” and pick “obtain priority document from DAS”.  A screen will appear in which you can type in the DAS Access Code (the four-digit USPTO confirmation code).  Click “submit”, and Bob’s your uncle.

Okay, so the PCT application has been filed.  What else is required for the Best Practices?  Of course you will already have docketed a month or so to check for receipt of Form PCT/IB/304, in which the IB reports whether it has or has not received the certified copies of the priority documents.  When the Form PCT/IB/304 arrives, check it to make sure that you do not see the dreaded “NR” (not received) next to any of the priority documents.  And check it to make sure that it lists all of the priority applications from which you intended to claim priority.

That’s it.  A piece of cake.

Well, it’s a piece of cake if you took steps at the time of filing the priority application to get it into DAS.  Clearly the Best Practice is that whenever you file any patent application in the USPTO, you should check the “permission” box in the ADS.  Or include Form PTO/SB/39 if you are not filing with an ADS.

Right now USPTO’s PDX and DAS workflows do not accommodate design patent filings.  But I suggest you not let this stop you from checking the “permission” box.  Get in the habit now of always checking that box, even for design applications, so that when USPTO does get around to accommodating design patent filings in PDX and DAS, your habit will already be well established.