EBC foot-drags handling of Form 2248

It’s been a month now since I followed the instructions of the Electronic Business Center (EBC) and faxed Form 2248 to the USPTO (in two different patent application files).  As of today, a month has passed and the EBC has failed to act upon either of the Forms 2248.

What, you might ask, is Form 2248?  What is the problem for which Form 2248 is the solution?  You might ask yourself whether you have one or more active patent application files for which you ought to have sent in Form 2248.  How would you know?   What might one do to avoid getting into a situation where you are vulnerable to this “Form-2248 problem”? 

What, you might ask, is Form 2248?  You can see Form 2248 by clicking on the image above right.  You can read about it at MPEP section 1809.

What is the problem for which Form 2248 is the solution?  Form PCT/RO/101 (the “Request”) explicitly requires that the filer of a new PCT application provide an email address.  And there are many Offices within the PCT system which make use of that very email address.  The USPTO, unfortunately, is not one of them.

For an Office within the PCT system that declines to make use of the email address provided by the applicant in the Request, what would be the single other non-crazy way to send correspondence to the applicant?  The answer of course would be “send the document to the IB”.  The document auto-loads into ePCT.  And then ePCT automatically sends an email notification to the applicant, letting the applicant know that something has been added to the PCT application file in ePCT.  So the applicant would learn of the correspondence in an automatic way.

So let’s focus on one particular way that the USPTO handles this poorly.  Suppose the RO selected by the applicant is an RO other than RO/US.  And suppose the ISA selected by the applicant is ISA/US.  Now let’s remind ourselves of some of the extremely important PCT forms that the ISA/US might send out to the applicant:

1. 1. PCT/ISA/202 – Notification of Receipt of Search Copy
   2. PCT/ISA/206 – Invitation to Pay Additional Fees and, Where Applicable, Protest Fee
   3. PCT/ISA/210 – International Search Report
   4. PCT/ISA/220 – Notification of Transmittal of the International Search Report and the Written Opinion of the International Searching Authority, or the Declaration
   5. PCT/ISA/225 – Invitation to Furnish Nucleotide and/or Amino Acid Sequence Listing and to Pay, Where Applicable, Late Furnishing Fee
   6. PCT/ISA/237 – Written Opinion of the International Searching Authority

It turns out that the defined behavior of the ISA/US is that of these six forms, the only ones that ISA/US sends to the IB are items 1, 3, 4, and 6.

Why does the ISA/US refuse to send items 2 or 5 to the IB?  I don’t know.  But the fact is that the ISA/US chooses not to communicate electronically with respect to items 2 and 5.  The ISA/US merely prints out item 2 or 5 on paper, and then puts it into a window envelope, and carefully makes sure the mailing address is completely visible through the window, and applies postage to it, and drops it into the mail.

What good reason is there for the ISA/US to handle items 2 and 5 differently from items 1, 3, 4 and 6? I do not know the reason. But it is the actual observed behavior of the ISA/US to single out items 2 and 5 for non-electronic communication.

Keep in mind that for many applicants that selected an RO other than RO/US, it might be that the applicant is located outside of the US. For many such applicants, delivery by postal service might take a long time. For some such applicants, delivery by postal service might be unreliable.

In our case, in one of our files, item 2 apparently got lost in the mail. We checked our mail log, and I am sure we never received it. I say “lost in the mail” because of course it is out of the question that anything could have gone wrong at the ISA/US in the process of printing it, or stuffing it into a window envelope, or double-checking that the entire mailing address is completely visible through the window, or applying the correct postage to the envelope, or dropping it into the mail.

Now let’s review what the consequences are if items 2 or 5 fail to reach the applicant.

Item 2 failing to reach the applicant.  Suppose that Form PCT/ISA/206 (Invitation to Pay Additional Fees) from the ISA/US fails to reach the applicant.  This form is much like a Restriction Requirement.  It is the way that ISA/US tells the applicant that the ISA/US thinks there is more than one invention in the PCT application.  If the applicant accepts the invitation to pay the additional fees, then the ISA/US will search and examine all of the inventions.  if the applicant fails to accept the invitation (perhaps because it got lost in the mail or perhaps it arrived in the applicant’s mailbox only after the stated response period had come and gone) then the ISA/US will only search and examine less than all of the claims.  Indeed the first that the applicant will even learn that form PCT/ISA/206 was lost in the mail is when Form PCT/ISA/210 (the International Search Report) arrives via ePCT.  The ISR will state that since the applicant failed to pay the additional fees, some of the claims did not get searched or examined.

Item 5 failing to reach the applicant.  Suppose that Form PCT/ISA/225 (Invitation to Furnish Nucleotide and/or Amino Acid Sequence Listing) from the ISA/US fails to reach the applicant.  What will likely happen next is that the ISA/US will decline to search or examine some or any of the claims.  The first that the applicant will even learn that form PCT/ISA/225 was lost in the mail is when Form PCT/ISA/210 (the International Search Report) arrives via ePCT.  The ISR will state that since the applicant failed to furnish the sequence listing, some or all of the claims did not get searched or examined.

How do other ISAs handle this?  ISA/KR, which is the ISA that most clients of our firm tend to choose, is very applicant-friendly about this.  ISA/KR communicates all of items 1 through 6 by email.  ISA/KR also sends many of these items to the IB.  But regardless of whether the item gets sent to the IB, the item always gets sent to the applicant by email.  In a further form of applicant-friendliness, ISA/KR also sends out an email to the applicant every month with a summary of all of the items that it had emailed to the applicant during the past month.

ISA/EP is also applicant-friendly about this. Several years ago the EPO set up a “mailbox” system for users of ISA/EP. You can create a mailbox in the EPO’s online systems for the purposes of receiving items 1 through 6. You define the mailbox as being linked to a particular email address. The idea is that this matches the email address that the applicant provided in the Request. If they match, then any outbound correspondence from ISA/EP (including items 1 through 6) gets sent to the mailbox, and the EPO sends an email to the applicant that says “look in your mailbox for something important”. When EPO set up this system, EPO invited yours truly to be one of the presenters for the webinar explaining how to set up this mailbox. I was delighted to participate.

ISA/US, however, is very applicant-unfriendly about this, as you see from the discussion above. The sole method for receiving items 2 or 5 electronically is for the applicant to somehow know in advance that the applicant should prepare Form PTO-2248 and send it to the USPTO. This would be maybe a just barely acceptable USPTO requirement if the USPTO did actually act upon Form PTO-2248. But it is clear from the above discussion that USPTO foot-drags this. As mentioned above, we have sent in two such forms a month ago by fax (as USPTO specifies they should be sent in) and even after a month, they have not been acted upon.

Here are examples of ways that ISA/US could be less applicant-unfriendly.

Reveal the PTO-2248 procedure at the time of sending out Form PCT/ISA/202.  Consider that Form PCT/ISA/202 always gets sent out from ISA/US in every case, and the ISA/US does send it to the IB, and the IB does communicate this event electronically to the applicant.  So for every PCT application that does not have “US” in the PCT application number, the USPTO could simply include in or with Form PCT/ISA/202 a mention of the need to file Form PTO-2248.  The applicant would then know to hand in Form PTO-2248, and then items 2 and 5 would get communicated electronically to the applicant.

Reveal the secret rule by which the EBC will silently discard Form PTO-2248.  Although it is nowhere mentioned in Form PTO-2248 itself, and is nowhere mentioned in MPEP section 1809, what I learned from the PCT Help Desk person is that the EBC has a secret rule about handling of Form PTO-2248.  I am told that the EBC looks at the mailing address specified in the customer number, and cross-checks this against the mailing address specified in the Request.  And in the event of any real or imagined failure for these two mailing addresses to match, the EBC will silently discard the form, not giving the applicant the courtesy of telling the applicant that the Form PTO-2248 has been discarded.  The secret rule needs to be disclosed to the applicant, both in Form PTO-2248 itself, and in MPEP section 1809.

Stop being stubborn about items 2 and 5.  The computer systems of the ISA/US are linked to the computer systems of the IB in such a way that items 1, 3, 4 and 6 get sent automatically to the IB.  This is the sort of thing that computers are good at!  Why then is the USPTO stubborn about pulling items 2 and 5 out of this automatic information flow?  Why does the USPTO communicate items 2 and 5 only by postal mail?  The action step would be for ISA/US to remove this block and to allow items 2 and 5 to get communicated automatically to the IB in the same way that items 1, 3, 4 and 6 get communicated automatically to the IB.

Stop foot-dragging the handling of Forms 2248.  Right now I have two active files in which the USPTO has allowed more than a month to pass without acting upon a Form 2248.  This foot-dragging should stop.

How would you know whether you yourself have one or more active patent application files for which you ought to have sent in Form 2248?  The way to figure out whether you have one or more active application files for which you ought to have sent in Form 2248 is … you look at every PCT application that you are responsible for, that was filed in a Receiving Office that is not RO/US.  This might be a PCT application that you yourself filed.  Or it might be a PCT application that some other firm filed and later it was entrusted to you to do something with this PCT application.

The easy way to know whether the PCT application was filed in an RO that is not RO/US is to look at the application number, for example “PCT/IB2025/051382”.  It is seventeen characters long.  Or look at this example “PCT/IB25/51383” which is fourteen characters long.  Look closely at the fifth and sixth characters (here, “IB”).  These characters tell you the RO that was used to file the PCT application.  So for this discussion, you are looking through your portfolio of active PCT applications, picking out the ones that have something other than “US” in the fifth and sixth positions.

Having identified some PCT application that was filed in an RO that is not RO/US, the next thing to check is to see which ISA the applicant selected.  If the applicant selected ISA/US, then this is an application that has a “Form-2248 problem”.  Somebody needs to fill out Form 2248 and send it to the EBC.  And then someone needs to docket aggressively to see whether the EBC ever gets around to acting upon the Form 2248.

But you’re not done yet.  Having identified some PCT application that was filed in an RO that is not RO/US, the next thing to check is to see whether a Demand was filed, and if so, then to check to see which IPEA the applicant selected.  If the applicant selected IPEA/US, then this is an application that has a “Form-2248 problem”.  Somebody needs to fill out Form 2248 and send it to the EBC.  And then someone needs to docket aggressively to see whether the EBC ever gets around to acting upon the Form 2248.

What might one do to avoid getting into a situation where you are vulnerable to this “Form-2248 problem”?   A chief way to avoid becoming vulnerable to the Form-2248 problem is simply to select an ISA that is not ISA/US (in any application that is being filed in an RO that is not RO/US).   And if a Demand is being filed, the protective measure is to select an IPEA that is not IPEA/US (in any application that was filed in an RO that is not RO/US).   It is rare, for example, that any client of our firm selects ISA/US or IPEA/US.  But other applicants make other choices.

Meanwhile, I wish the ISA/US would:

• • Reveal the PTO-2248 procedure at the time of sending out Form PCT/ISA/202.  
  • Reveal the secret rule by which the EBC will silently discard Form PTO-2248.  
  • Stop being stubborn about items 2 and 5.  
  • Stop foot-dragging the handling of Forms 2248.