Getting a prompt Filing Receipt in a 371 case?

In the community of US practitioners who regularly enter the US national phase from a PCT application, it is a well-known problem that it takes an unreasonably long time for the USPTO to mail out a Filing Receipt.  There is, I am sorry to say, a dirty little secret way to get prompt filing receipt in such cases.  Normally I do not make use of it, but just now I plan to use it in one of my cases. 

By way of background, if an applicant at the USPTO files almost any kind of patent application that is not a 371 case (by which we mean, almost any kind of patent application that is not an entry into the US national phase), it usually takes the USPTO just a few days to mail out a Filing Receipt.

But if the filing path selected by the practitioner is the 371 filing path, one of the unhappy consequences of this decision is that it will usually take half a year or longer for the USPTO to get around to mailing a Filing Receipt.

There is, of course, no good reason for such foot-dragging by the USPTO.  There is, I imagine, some actual explanation, such as poor decisionmaking involving staffing or training.  But there is no good reason.  There have been times when the waiting time for such Filing Receipts has been as bad as a year and a half.  Forty-Two Patent Practitioners wrote to Director Vidal on April 26, 2022 about this problem of the USPTO being so slow to mail out Filing Receipts in 371 cases.  Regrettably the USPTO has not corrected this problem since then.

The chief way that this foot-dragging harms science and the useful arts is in those cases where the application is on the Patent Prosecution Highway, and yet has not yet been given a Filing Receipt.  In such a case, what ought to have happened is that the case ought to have received its first Office Action a few days after the grant of the PPH request.  Instead, the case languishes in the DO/EO/US until some USPTO person decides that the application has aged sufficiently to be deserving of a Filing Receipt.  (As I say, these days the aging is usually around six or seven months.)  This eviscerates the policy goals of the PPH program.

But now we turn to the dirty little secret.  The dirty little secret is that there is somebody at the USPTO who is tasked with a nit-pick screening of every newly filed 371 case, looking for any cases in which fees are due.  An example might be a filer who forgot to pay the search fee or the exam fee, or the filer who needs to pay for excess claims beyond 3-and-20.  The nit-pick screener fires off a nearly instant Filing Receipt along with a Notice of Missing Requirements.

So the alert reader knows where I am going with this.  If you want your Filing Receipt promptly, rather than having to wait maybe six or seven months for it, the way to get it is, I am sorry to say, to make extra work for the USPTO.  Leave out a fee.  Or foot-drag the filing of your preliminary amendment that you normally file as quickly as you can, the PA that eliminates multiple dependency in the (foreign-drafted) claims.

I have known about this secret way of getting prompt Filing Receipts for some ten years now, and I have until now held back from blogging about it.  There were at least three reasons why I had until now held back from blogging about it:

The standing-up-in-the-bleachers problem.  If everybody in the bleachers stands up to get a better view, nobody gets a better view.  If everybody uses this trick to get instant filing receipts so that they won’t have to wait seven months, then everybody will once again have to wait seven months.

The waste-USPTO-person-time problem.  The US national phase gets entered around 35K times per year.  As it now stands, maybe 5K times per hear some USPTO person has to mail out a Notice of Missing Requirements.  If everybody uses this trick to get instant filing receipts so that they won’t have to wait seven months, then it will be 35K times per year that some USPTO person has to mail out a Notice of Missing Requirements.

The asking-nicely approach.  For about ten years I have been asking various people at the USPTO nicely to fix this problem.  I keep hoping that asking nicely would work.  Unfortunately as you can see, asking nicely has not worked.  But I kept hoping it would work.

So I guess now everybody will know the secret way to get a prompt Filing Receipt in a 371 case.  Might as well make use of it.  Maybe this will somehow embarrass somebody at the USPTO into doing the right thing and taking steps to mail out all of the Filing Receipts promptly.

I have until now held off from using this secret approach.  But I will use it in one of my 371 cases that is entitled to Highway treatment but would not receive its Filing Receipt until many months from now, but for the use of the secret approach.

Do you feel as disappointed about the USPTO as I do on this?  Please post a comment below.

2 Replies to “Getting a prompt Filing Receipt in a 371 case?”

  1. The delay in receiving a 371 filing receipt is frustrating. But they do typically issue within a year and I’ve been told this does not affect examination because at that time, it goes to the front of the examiner’s queue (I’ve never tested that but I was told that by a USPTO clerk).

    Right now my frustration is with an issue fee we paid in July 2021. We still have yet to receive an issue notification. We’ve emailed, we’ve called, the Examiner has since left the USPTO, but we have attempted to contact his supervising examiner and still nada. We filed a formal status inquiry. I was told by a clerk to trust their system that eventually this application will issue. But this particular application is languishing in the twilight zone. Any other ideas on how to get the USPTO to act on the issue fee we paid for this application?

    1. Thank you for posting.
      If the case is not on the Highway, and if the backlog in a given art unit is longer than the Filing Receipt delay, then yes you are correct that the Filing Receipt delay does not delay examination.
      But that is not what I am talking about. I am talking about cases where the case is on the Highway, and yet the DO/EO/US has not yet mailed out a Filing Receipt. In such a case, then by definition the foot-dragging by DO/EO/US is certainly “affecting examination” because it prevents the case from reaching an Examiner.

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