Category: Patents

Is it just me, or is there no IFW in the Public PAIR today?

The question is, what to do about the statutory penalty of $400 which Congress established when it passed the America Invents Act.  This penalty is for paper-filing when you should have e-filed.  And for many applicants it probably seems a bit unfair if the applicant’s reason for paper-filing was that USPTO failed to provide a mechanism for e-filing.

I wrote about this problem, and about Director Iancu’s comment, here.

The folks at the USPTO have faced a problem for the last few days.  They know that Congress said paper-filers should be punished with a $400 penalty.  They know that when Congress did this, Congress was relying upon the USPTO to make sure that e-filing would always be available.  This would, as a matter of common sense, require that USPTO provide a backup e-filing server that would continue working even if the main e-filing server might crash.  Unfortunately despite what amounts to a Congressional mandate to the USPTO to provide a reliable backup server, the USPTO never did provide the mandated reliable backup server.

So what to do about the $400 penalty?  USPTO realizes it would face a firestorm of criticism if it were to fail to refund the $400 penalties, and yet USPTO realizes that because the penalty is statutory, USPTO would need to go to Congress, with hat in hand, to ask for a special bill to permit giving the refunds.  Presumably such a trip to Capitol Hill to ask for a special bill would be met with embarrassing questions like “why did the USPTO not take steps many years ago, prompted by the previous massive system crashes, to make sure that the backup server would still be working even if the main server were to crash?”

So the problem for folks at the USPTO right now is to try to figure out a way to make an end-run around the plain language of the America Invents Act which imposes this statutory penalty.  Give back the $400 even though the plain language of the statute says that the $400 must be paid.  And here are the first hints of the end-run that is apparently being devised:

Applicants affected by this outage will have an option to avoid or receive a refund of paper filing fees. For such applicants, the director will prescribe a procedure for re-submitting applications electronically to receive a refund of the paper filing fee (or to not incur a fee if not yet paid). Applicants who follow this procedure will maintain their original filing dates for applications filed by paper during the outage. Details of this procedure will be identified on this page when they are ready. In the meantime, applicants should continue to file and pay associated fees pursuant to current laws and regulations.

The idea, it seems, is that anyone who has been hit by this penalty for paper-filing during the breakdown of the EFS-Web Contingency server will be invited to “resubmit” the patent application in EFS-Web.  Then, according to a procedure that is still in the making, USPTO would give this later electronically filed application the benefit of the earlier paper filing date.

The filer who included the $400 penalty fee with the paper filing would, it seems, be able to get a refund of that fee.

What about the filing fee, search fee, and examination fee that were likely already paid in the paper-filed case?  What will happen to all of that money?  Maybe USPTO will somehow waive rules right and left to permit those already-paid fees to be transferred over to the new application that came into existence by means of the EFS-Web filing.

Or maybe the USPTO will maintain a fiction that the new e-filed case is somehow “the same application” as the previously filed paper application, sort of like what USPTO says when a Request for Continued Examination is filed.

Meanwhile what will be done about the lost PTA (patent term adjustment) that will surely follow due to the e-filed filing date being some days or weeks after the paper-filed filing date?  Will USPTO manually adjust the PTA clocks for all of the cases affected by this massive system crash?  Or will patent owners have to file (and pay for) petitions, years from now, to get back those days of PTA that were lost due to this massive system crash?

Enormous time costs and professional-fee costs will likely be imposed upon practitioners and applicants by this procedure, all so as to save the USPTO the embarrassment of doing the right thing, which would be to go to Congress and get a special bill passed that would give the Director authority to waive the $400 penalty due to system failures.

Oh and one’s heart goes out to the patent owner who, TYFNIL, asserts one of these patents in court.  It is very predictable that the accused infringer will point to the fact that the application was paper-filed, and the fact that the statute says what it says about the requirement of paying the $400, and the fact that the $400 was not paid in the application that led to the patent-in-suit.  Yes, I imagine that after perhaps $50K of motion practice, the patent owner might manage to overcome the inevitable attack upon the patent for failure to pay the $400 penalty.

I have to assume that some patent owners might just suck it up and let the USPTO keep the $400 fee, just to save the $50K that would later have to be spent fighting that litigation motion practice.

As a general matter, if you are filing something by fax at the USPTO, you should be faxing it to the Central Fax Number at +1-571-273-8300.  Keep in mind that there are quite a few things that you are not allowed to fax to the USPTO, for example the filing of a new patent application or the entry into the US national phase from a PCT application.

Several members of the EFS-Web listserv (which you should join if you have not already done so) have reminded me that in the special case of payment of an Issue Fee by fax, the best fax number to use is +1-571-273-2885.  (See USPTO web site here and here.)

The USPTO does not, unfortunately, mention this on its “Filing documents during an outage” page.

Note as well that Form PTOL-85B has a Certificate of Transmission designed into the form.  This will satisfy the requirements of 37 CFR § 1.8.  Note that you will probably need to include Form 2038 if you are trying to pay the Issue Fee by fax, and note further that USPTO rules say that when you send in Form 2038 by fax, it is required to be ink-signed, not virgule-signed (in other words you are not allowed to use an S signature under 37 CFR § 1.4).

Keep in mind, too, that given the migration away from landlines and over to VOIP telephone lines, the use of facsimile (fax) is getting less and less reliable (WIPO for example is discontinuing incoming faxes because of this).  It is unfortunate that USPTO continues to rely upon fax as its backup system in the event of a crash of EFS-Web.

 

Update:  the USPTO web site now says:

Applicants affected by this outage will have an option to avoid or receive a refund of paper filing fees. For such applicants, the director will prescribe a procedure for re-submitting applications electronically to receive a refund of the paper filing fee (or to not incur a fee if not yet paid). Applicants who follow this procedure will maintain their original filing dates for applications filed by paper during the outage. Details of this procedure will be identified on this page when they are ready. In the meantime, applicants should continue to file and pay associated fees pursuant to current laws and regulations.

I have posted a new blog article about this.

The EFS-Web system crashed early in the morning of Wednesday August 15, 2018.  Many filers will be forced to pay the $400 penalty for failing to e-file, despite the fault lying with the USPTO.  What, if anything, can be done about this? Continue reading “Getting back your $400 penalty for failing to e-file”

USPTO has published a content-free page about the massive system outage that (among other things) has broken Private PAIR and EFS-Web:

At approximately 4:30 a.m. ET on August 15, 2018, PALM experienced an issue during maintenance that impacted its ability to function properly.

Yes, that tells us a lot about what happened (not!).

It is sort of true that the EFS-Web Contingency Server is sort of working.  I successfully e-filed a design application on Friday using that server — or at least I think I succeeded.  Of course I will not really know whether I succeeded until USPTO gets Private PAIR working again.

There are anecdotal reports that the EFS-Web Contingency Server does not work for entry into the US national phase.

See two webinars about workarounds, for which recordings are available.

The chief takeaway from the content-free page is that USPTO commits to posting updates every day at 10AM and 4PM until things are back to normal.

 

 

 

When it became clear that the massive USPTO system crash was not going to end very soon, I very hurriedly prepared and presented two pop-up webinars:

• How to file a US patent application by Priority Mail Express, and
• How to respond to an Office Action at the USPTO by fax or mail

The first was at 10AM Mountain Time this past Friday, and the second was an hour later.

Many hundreds of people attended.  Given the short notice and trying conditions I think both webinars went pretty well.  (Maybe you attended one or both webinars, in which case I would be grateful if you could post a comment below.)

I managed to record both webinars and have uploaded them to Youtube.  Please understand the recordings are unedited and unpolished.  (For the Office Action response webinar, skip ahead to about 1:55;  for the e-filing webinar, skip ahead to about 1:01.)  But I offer the recordings here in case people might find them helpful during this very trying time:

• How to respond to an Office Action at the USPTO by fax or mail (Youtube, presentation materials), and
• How to file a US patent application by Priority Mail Express (Youtube, presentation materials)

The programs are CLE accredited in California and you might get lucky and might be able to obtain credit in your state using the Certificate of Attendance that is provided.  If so, please let me know at this link.

 

 

(Note that if you are going to file by fax, USPTO has a special fax number just for payment of issue fees.)

(Update as of 11:30 AM Eastern Time … the 10:30 AM repair time came and went with all patent systems still broken, and now the USPTO status page does not offer any particular prediction as to when things will be repaired.)

There have been massive outages at the USPTO before — the longest lasting one having been a four-day outage between Christmas and New Years in December of 2015.

Yesterday’s outage was originally listed on the web site of the USPTO has being scheduled to be repaired by 12:01 PM yesterday, then 4PM yesterday, then 5:15 AM today.  As of right now (7 AM Eastern Time) the main patent systems EFS-Web and EFS-Web Contingency and Private PAIR are still broken.  The new predicted repair time is 10:30 AM.

As the repair time has slipped three times already, one must keep in mind that the new predicted repair time of 10:30 AM might slip again.

This prompts us to remind ourselves of the workarounds for various important functions. Continue reading “How to cope with the massive outage at the USPTO”

Well, as may be seen from this chart, today’s traffic on my blog is more than double the traffic of any recent day.

I attribute this to the fact of PAIR and EFS-Web having been broken for some six hours now.  Patent practitioners who can’t do their regular work then turn to my blog to help them pass the time.

The most popular articles today so far are:

• USPTO trading cards
• How to mail promotional post cards
• Unacceptable situation at the USPTO
• Best Practices for filing a US provisional patent application
• USPTO relocates “contingency” EFS-Web server to Denver patent office
• Interviewing an Examiner at the Denver patent office