The Paris Convention and Flaky USPTO servers

If USPTO’s EFS-Web and PAIR servers were flaky on Tuesday, can you refile on Wednesday and call it good for purposes of the Paris Convention?  I’ll share a few thoughts about this (the answer may well be “no”) but first let’s hear what actually happened to a member of the EFS-Web listserv:

I was attempting to file a couple of design applications on Tuesday night [January 19] and EFS-Web kept locking up on me.  One time I actually made it through the submission process, but then it locked up during the fee payment process.  Eventually I gave up and went to bed, because I was not up against a bar date for the filing and I hadn’t promised the client I would get the applications filed on Tuesday anyway.

On Wednesday morning [January 20], I checked PAIR to see if anything I had tried to upload on Tuesday was visible, and nothing new was there, so I tried to file again.  Then I got both design applications filed, paid fees, and got electronic filing receipts.

Today I go into PAIR and sure enough, there are three new applications.  The second one has everything showing in the IFW, but the other two just have a Placeholder for SCORE (and drawings in SCORE) but nothing else in IFW.

So this brings up a question…

For the “extra” application that was filed on Tuesday with no fees paid, is there any potential problems I should be aware of if I simply just don’t pay the fees?  I will be filing cases in other countries for these designs, so should I file an explicit abandonment so that there is no potential issue with the date of first filing?  Or maybe claim priority to the case filed one day earlier in the case where I paid the fee?  I don’t think there is any real advantage to my client for a one day earlier filing date, but I don’t want the earlier filed application where no fees were paid to screw anything up.

First, my sympathies to the filer for the extra work and professional risks that the filer now faces because of the USPTO’s flaky EFS-Web and PAIR servers.  Now let’s focus on the foreign-filing questions raised by our listserv colleague.

One question is what day our colleague should count as the due date for foreign filing?  A related question is, can our colleague duck having to pay the government fees in the first application?  Yet another question is, will it help to file a paper now that expressly abandons the earlier case?

To make sense of all of this, we need to read Article 4 of the Paris Convention very closely.  (Those who have not already done so should purchase and read Bodenhausen’s exegisis of the Paris Convention.)  Plainly stated, under Paris, if you are going to claim priority from a filing in a particular country, and if you have several filings in that country to choose from, you don’t get to pick and choose which one to count from to work out when the foreign filings are due.  You have to count from the oldest one or you get no Article 4 priority claim at all.

Stated differently, to satisfy Article 4 of Paris, our colleague needs to make sure that the foreign filings get done by June 19, 2016.  Postponing the foreign filings until June 20, 2016 risks losing the Article 4 priority.

This is a general answer.  There is always the chance that the law in some particular foreign country is more forgiving than Article 4 itself.  One wishing to explore the possibility of postponing the filing in a particular foreign country until after June 19, 2016 should consult competent counsel in that country.

Note that June 19, 2016 is a Sunday.  In most (but not all) non-US countries, the office for filing design applications will be closed on June 19 because it is a Sunday.  Such a closure will make it okay to postpone the filing until June 20 while still preserving the Paris priority claim.  But one needs to consult competent counsel in the country or countries involved to be sure about this.

But our colleague asks, can’t he just expressly abandon the January 19 case?  Won’t this reset the six-month priority period to count from the January 20 case?  And under Article 4, the answer is “no”.  An express abandonment of a first filing in a given country (in favor of a second filing in that country) only serves to reset the priority period if the express abandonment is carried out chronologically prior to that second filing.  In this case, an express abandonment of the January 19 case that is carried out some time after the January 20 case will accomplish nothing in terms of resetting the priority period.  (Oh and under Article 4, such an express abandonment only successfully resets the priority period if it “leaves no rights outstanding”.  Whatever that means.)

Next question.  Does our colleague need to pay the government fees in the January 19, 2016 application?

Again our heart goes out to the listserv colleague who, because of the USPTO’s flaky EFS-Web and PAIR servers, may end up having to pay government fees in two cases while perhaps only being able to charge the client for one set of government fees.

First we have to ask what we mean by “need to pay”.  Do we need to pay the fees in the January 19 case to keep from losing the priority claim to the January 20 case?  To this narrow question the answer is “no”.  Under Article 4 of Paris, it is not that you must actually claim priority from that earliest application.  It is merely that you must carry out your foreign filings within the priority period that counts from that earliest application.

Stated differently, our colleague could duck paying fees in the January 19 case while preserving the January 20 priority date, so long as the foreign filing gets done by June 19.  (Except as mentioned above June 19 is a Sunday so maybe June 20 will be good enough for certain foreign filings.)

But does that mean our colleague can really duck paying fees in the January 19 case?  The problem, of course, is that some day that foreign design registration might get litigated, and the presence or absence of a perfected January 19 priority claim might be outcome-determinative as to who wins the litigation and who loses.

So I think the decision to save a few bucks and not pay any fees in the January 19 application is a decision that needs to be made by the client.  As a practitioner I would not want to be the person who ducked paying that fee (without informed consent of the client) and later had a client lose a litigation in some foreign country because the priority date was a day later than it would otherwise have been.

So how much expense are we talking about?  Will our unlucky colleague be forced to pay all three fees — the filing fee, the search fee, and the examination fee — in the January 19 case to preserve the priority claim to January 19?  Fortunately the answer is “no”.  The filer only needs to cough up enough money for the USPTO to be willing to provide a certified copy of the January 19 case.  How much money is “enough”?  The answer is that the filer needs to pay the “processing fee” (fee code 1830/2830/3830).  The processing fee having been paid, the USPTO will be willing to officially give a filing date to the case and will be willing to provide certified copies.

Importantly, the specific language of Article 4 of the Paris Convention makes clear that the priority claim works despite any “subsequent fate” of the priority application.  There is no requirement that the priority application actually get examined by an Examiner, for example.  (Did I already mention that anyone who has not done so needs to purchase and read a copy of Bodenhausen’s exegesis of the Paris Convention?)

What should foreign counsel be told to do in the way of priority claims?  Should foreign counsel be told to make two priority claims — one to the January 19 case and another to the January 20 case?  This is of course the safest course of action, particularly if there is any chance, however small, that the two filings are somehow non-identical in their substantive content, or if there is any chance, however small, that one or the other of the two filings was somehow procedurally defective.  But this requires ordering up (and paying for) two certified copies from the USPTO’s Office of Public Records.  And requires foreign counsel to claim (and to perfect) two priority claims.  Let’s not forget that there are some foreign countries where a separate government fee is charged for each priority claim.  And let’s not forget that there are some foreign associates who charge a separate professional fee for each priority claim.

Maybe the way to proceed is to order up the certified copy of the January 19 case from OPR, and make sure that we have it in hand.  Having the physical certified copy in hand goes a long way toward reassuring us that the USPTO will not later astonish us by putting forth the view the application has some real or imagined procedural defect.  And then we can review the physical certified copy to make sure that it contains all of the subject matter that we care about.  This might permit a judgment call to forgo the priority claim to the January 20 case.

If only the USPTO systems had permitted our colleague to see the January 19 case in PAIR on January 19!  This would have permitted the practitioner to avoid all of this agonizing about when exactly the foreign filings would have to be done, and whether or not to have to pay government fees in two different US application, and whether or not to have to make two priority claims, and whether or not to have to order up two physical certified copies and ship them to the foreign country.

 

USPTO recovers lost patent applications

It is welcome news that today, January 21, 2016, the USPTO has recovered the thousands of patent applications that were filed on January 5 and that were lost within the USPTO.

The ten design cases that we filed that day are now visible to us in Private PAIR.  The US national phase entry that we carried out that day is now visible to us in Private PAIR.

PPH petition languishes for six months

We now have over a dozen PPH petitions that have lain untouched in the Office of Patent Petitions for more than five months, and just today our oldest untouched PPH petition entered its seventh month of pendency.  Yes, more than six months have passed since it was filed and no sign of action by the OPP.

As I mentioned in earlier blog posts here and here and here, the backlog has been getting worse and worse in the Office of Patent Petitions.  The OPP dashboard would have the reader believe that the backlog is 152 days.  In reality it is worse than 180 days.  But even if it were 152 days, that would not be a reasonable pendency.  The PPH petitions are essentially self-certified by the filer.  Very little review by USPTO personnel is actually required for such petitions.

USPTO needs to do better.

Improving QPIDS

QPIDS is pretty good but it could be much better.  The point of QPIDS, of course, is that sometimes you find an urgent need to file an IDS at a time when, unfortunately, the Issue Fee has already been paid.  Before QPIDS, most applicants facing such a problem were stuck filing (and paying for) an RCE, with all of the drawbacks that come with it.

Continue reading “Improving QPIDS”

Dealing with the January 5 problem

Applicants probably need to start thinking now about what they will do if the USPTO eventually concludes that it will never be able to recover the day’s worth of patent applications that were filed on January 5.  I say this because even now, on January 14, 2015, many thousands of patent applications filed on January 5 are missing from PAIR.  This blog post reviews the sequence of events thus far and talks about what applicants may need to do about this problem at the USPTO.

Continue reading “Dealing with the January 5 problem”

USPTO e-commerce systems continue to stumble

USPTO online systems continue to stumble or crash.  Much of this, I expect, is a consequence of cobbled-together temporary fixes to the massive UPS failures that happened on December 22.  Here’s a brief recap of today’s situation:

  • Newly filed patent applications and entries into the US national phase that were filed on January 5 seem to have been lost.  USPTO is trying to recover them but after more than a week they have not been recovered.  See further comments on this “January 5 problem” in a later blog post.
  • EFS-Web petitions that are supposed to be auto-granted are all broken.  We have a case that is scheduled to issue next Tuesday and we need to get it withdrawn from issue.  The auto-granting petition in EFS-Web keeps freezing and crashing.  EBC has acknowledged this as a known problem.  Hopefully USPTO will get this system repaired before next Tuesday.
  • Document display within TSDR has been on-again-off-again for the past couple of days.  As of right this moment it is on again.
  • ETAS sometimes crashes when you try to pay the recordation fee.  (EPAS does not have this problem because of course patent recordations are free of charge!)  There is a complicated workaround that involves saving the submission and taking off your shoes and putting them back on again.  (Just kidding.)
  • Visibility of recently filed documents in IFW is nonexistent.  Newly filed documents are supposed to be visible within one hour.  We are pretty consistently seeing delays of 18 hours or more before a document is visible in IFW.  This is a Big Problem.
  • EFS-Web ack receipts and fee payment pages are flaky.  This happened to many cases filed December 22 and December 27.  Even now as of January 14, USPTO has not yet provided accurate ack receipts and fee payment pages.  This is happening again now on new EFS-Web filings as of January 13.  The short-term survival steps for customers include checking the “fees” tab in PAIR and looking up the transaction in Financial Profile.

Patent applications filed January 5 still missing in PAIR

Today is Monday, January 11.  As of today there are still many patent applications which applicants filed on Tuesday, January 5, that are lost within the USPTO.  They cannot be viewed in PAIR.  I reported this problem on January 8.

It is puzzling that this loss of newly filed patent applications is not mentioned at the USPTO Systems Status and Availability page.

We filed ten new US patent applications that day.  And we entered the US national phase in one case on that day.  And we cannot see any of those filings in PAIR.  USPTO’s internal standard is that a newly filed document should be visible in PAIR within one hour.

We reported these lost patent applications to the EBC, and this is what we heard back from the EBC:

Thank you for contacting the Electronic Business Center regarding this matter. We are currently experiencing issues with applications that were filed on 1/5/2016 not loading into the system properly which caused issues with paying fees and users are experiencing issues with trying to log back into the system to pay fees later or bringing the application up in Private Pair to view.  The USPTO is aware of the matter and are currently working to resolve those issues.  We apologize for the inconveniences.

We have seen many, many cases where it took longer than it should have taken for something filed in EFS-Web to become visible in PAIR.  But this delay of six days is unprecedented.

 

 

Things that got fax-filed during the massive USPTO outage

As I mentioned here, one of the open questions was how long it would take the USPTO to get around to processing the large number of fax and paper filings that filers filed in desperation during the outage of all USPTO systems from December 22 to December 27.

There is a document that we fax-filed on December 26.  And since December 26 we kept checking PAIR every day to see when USPTO people would get around to posting the document to IFW.

The document finally turned up in IFW on January 6.  In other words, it took eleven days for the USPTO to take this fax and put it into IFW.

We’re still not out of the woods on this, because of course the mere presence of a document in IFW does not permit the Examiner to actually do anything with the document.  Once the document gets into IFW, it has to pass through various reviews by paralegals and Legal Instruments Examiners.  Only after they have all blessed the document will it get forwarded to the Examiner.  Today is January 8 and the paralegals and LIEs have not yet processed this document.

Maybe the biggest loser in this débacle was the hapless Examiner.  Recall that this was a finally rejected case in which the Examiner had said if we were to do X, she could allow the case.   And the document, which we had been trying to e-file since December 22, did X.  If things had proceeded normally, the Examiner could have disposed of the case (through allowance) within the calendar quarter ending December 31.  Instead this case is still dragging on in January, and even now the Examiner is not able to dispose of the case.  The Examiner will not even be able to dispose of the case within the present biweek.

The client also loses out.  This case will eventually get issued, but the issue date will be at least two weeks later than it should have been.  The client will lose two weeks of patent term with this débacle.  (The Patent Term Adjustment process will probably not help in this particular case.)