Yesterday for the first time I encountered a particularly nice feature in WIPO’s Digital Access Service (DAS). The feature has been there for some time but yesterday was the first time I actually saw it work. The feature is that you can set up a sort of “tripwire” and when some Office retrieves a certified copy of one of your priority applications from DAS, you will receive an email message letting you know that this happened. Yesterday for the first time I received such an email.
You probably know about DAS. DAS is one of the two systems by which electronic certified copies of priority documents can be passed back and forth among patent offices. DAS works seamlessly. (The other system is PDX, which is decidedly not seamless.) Eleven patent offices (including USPTO) have joined DAS for purposes of sending (“depositing”) electronic certified copies to the DAS system. Ten patent offices (including the IB of WIPO) have joined DAS for purposes of receiving (“accessing”) electronic certified copies from the DAS system.
It’s a Best Practice when filing any patent application to do whatever is needed to make the application available to DAS. In the particular case of filing a US patent application (provisional or non-provisional) the way to do this is:
- check the box in the ADS (application data sheet) to give USPTO permission to send the electronic certified copy to DAS, or
- e-file Form PTO/SB/39.
So what led to this blog post?
What started this is that we filed a US provisional application almost a year ago (August 27, 2014). And of course we made it available to DAS.
A few weeks later we logged in at DAS and we did “add tracking” to add this US provisional application to the DAS tracking system. This established the “tripwire” that I mentioned earlier.
What’s very helpful about this DAS portal is that if the “depositing” office (here, USPTO) had been dragging its feet about making the electronic certified copy available to DAS (which happens all too often with USPTO), the problem would be smoked out many months in advance of need. It would be possible to badger the USPTO to do its job and to get things straightened out well in advance of need.
The recent event is that a couple of days ago (August 12) we filed a PCT application in RO/IB. It claimed priority from that US provisional application.
Normally what would have to happen next is we would have to order up a physical certified copy of the US provisional application from the USPTO (and setting a docket), and then receive the physical certified copy (and clear the docket), and then send the physical certified copy to WIPO (and setting a docket) and then check to make sure that our courier delivered it (and clearing a docket). And then maintaining the docket to check for receipt of Form PCT/IB/304 (see my blog article about docketing PCT).
The benefit of DAS is that it seamlessly pulls the certified copy electronically from USPTO and then seamlessly makes the certified copy available electronically to the IB. This avoids having to carry out most of the steps detailed in the previous paragraph. (It is still necessary to docket to check for Form PCT/IB/304 but you need to docket that no matter which certified copy mechanism you choose to use in your PCT application.)
So in this case as I just mentioned, we e-filed our PCT application by means of ePCT in the RO/IB on August 12. And on August 13 the email showed up letting us know that the IB had successfully retrieved the electronic certified copy of the priority document.
Have you made use of DAS? Do you have suggestions for ways that it could be improved? Please post a comment about this.