A Tale of Two Systems

The DAS system offers a convenient and inexpensive way for an applicant to perfect a priority claim under Article 4 of the Paris Convention.   WIPO implements this well and the USPTO implements this poorly. 

By way of background, an applicant files a priority document in what we might call the OFF (office of first filing).   (The OFF is termed a “depositing office” in the world of DAS.)  The applicant does whatever is needed to request that the OFF make the priority document available to the DAS system. (Learn how to do this in my blog article dated June 2, 2018.)

At a later time the applicant files a second application in what we might call the OSF (office of second filing).   (The OSF is termed an “accessing office” in the world of DAS.)  The applicant is guided by what I call “the dreaded 4-and-16 date”, being the date by which the applicant needs to have presented the priority claim.  (Four months from the filing date of the second application, or sixteen months from the filing date of the first application, whichever is later.)

Common sense tells us that in any OSF, it will be necessary that the Office design some mechanism by which the Office receives from the applicant a small number of crucial pieces of information:

• • • the priority application number
    • the filing date of the priority application
    • the two-letter code (ISO-3166 code) for the OFF
    • the DAS access code

Once the applicant has communicated these pieces of information to the OSF, things are no longer within the control of the applicant.  What the applicant hopes is that at some point thereafter, the OSF will actually carry out the retrieval of an electronic certified copy of the priority document and will place the certified copy into the application file.

This table summarizes some similarities and differences in which two Offices handle their OSF responsibilities.

Office of Second Filing	WIPO	USPTO
platform	ePCT	Patent Center
how you enter the retrieval request	PCT Request or ePCT “action”	ADS or Form PTO/SB/38
how the information is communicated	in a computer-readable way	visually
what happens to your request	auto-loads into downstream system	hand-keyed by Office personnel
does a real-time cross-check against DAS take place?	yes	no
when will you find out if you got the month and day of the priority filing date transposed?	instantly	weeks or months later if at all
when will you find out if you got the two-letter Office code wrong?	instantly	weeks or months later if at all
when will you find out if you got the DAS access code wrong?	instantly	weeks or months later if at all
when will you find out if you got a digit of the application number wrong?	instantly	weeks or months later if at all
when will you find out if you entered an application number for an application that does not actually exist?	instantly	weeks or months later if at all
when they tell you if they think your request is defective	instantly, in real time	weeks or months later if at all
when the retrieval takes place	promptly after being asked	weeks or months later if at all
when will you find out if OSF personnel misread or mistyped a digit or letter of the DAS retrieval request?	it can’t happen	weeks or months later if at all
when they tell you if the retrieval request failed	this doesn’t really happen, see nine lines above	weeks or months later if at all

It will be recalled that starting in the year 2020, the patent community has offered more than fifty feature requests to the USPTO for improvements in Patent Center.   As of now in the year 2025, the number of feature requests that the USPTO has implemented is … wait for it … zero.

Here are some of the feature requests relating to DAS.  Each of these feature requests was presented to the USPTO on July 6, 2020.  None has been implemented by the USPTO.

• • FR20.  Patent Center should validate a would-be priority claim against DAS in real time.
  • FR21.  Patent Center should display, in the priority tab, the results of the cross-check against DAS.  It needs to show a smiley face or a puzzled face or a frowny face.
  • FR22.  Patent Center should display, in the priority tab, the results of the retrieval attempt from DAS.  If the retrieval from DAS worked, it needs to say so, along with the date that it happened and whether or not that date satisfies the 4-and-16 date.  If the retrieval from DAS failed, it needs to say so.

Each of these feature requests was also submitted to the USPTO by means of Ideascale.

This was all discussed in detail in my blog article dated July 6, 2020 entitled Patentcenter should validate priority claims against DAS.

Have you ever run into difficulty getting the USPTO to retrieve an electronic certified copy of a priority application from DAS?  If so, please post a comment below.