(Update: A letter got sent on February 22, 2020 to the Commissioner for Patents at the USPTO, asking the USPTO to stop its foot-dragging on retrieval of electronic certified copies from DAS. See blog post.)
The other day I taught another webinar about PDX and DAS. And the usual gripe about the USPTO came up — why does USPTO actively age the DAS retrieval attempts? Why doesn’t USPTO simply suck it up and carry out the retrieval of an electronic certified copy when asked to do so?
I blogged about this in 2014, urging the USPTO stop the aging of such requests. Now in 2019 the USPTO continues its policy of aging the retrieval attempts. So now, dear reader, you are treated to another rant.
What got me started on today’s rant was a well-intentioned inquiry from one of my long-suffering administrative staff people. She was checking some of our upcoming dockets. One of the dockets was in a US design application that we filed last October. And here it is February of 2019 and the docket says “check to see that USPTO has retrieved the electronic certified copy of the priority document from DAS”. And she was wondering what she should do about this docket item.
She had checked in PAIR, and no, there was no indication in PAIR that the USPTO had retrieved the electronic certified copy (ECC) from DAS.
Before contacting me she checked a bunch of things as possible explanations for this problem of the USPTO having not retrieved the ECC.
One thing she checked was, might the explanation simply be that the priority document is too old for DAS to be employed? The USPTO pulled the plug on the PDX connection to the Chinese patent office fairly recently, namely September 1, 2018. Our priority application was filed before that date. Could that be the problem? And the answer is no, even if the priority document happens to have been filed before pull-the-plug day, the DAS system can be used by USPTO on and after pull-the-plug day to retrieve it. So the main point here is that we filed our US design application after pull-the-plug day, so DAS was in fact available for any Chinese priority application in that case.
Of course on the day that instructions came in from Chinese instructing counsel to file the US design case, we immediately obtained a Certificate of Availability from the DAS system for the Chinese priority document. Just now I checked it and yes, it said that the priority application has been available to the USPTO through DAS since October 15, 2018. There is simply no question about it. Ever since the day that we filed this US design application, the USPTO could have retrieved this ECC from DAS.
I figured I might as well look for myself. My assistant had already looked in IFW, but I might as well look in IFW. And no, there is no ECC in IFW.
Could it be that somehow we failed to ask the USPTO to retrieve the ECC? But no, that cannot be the explanation for this problem. I looked in the Transaction History and it says right there that on October 19, 2018 the USPTO did admit that we asked the USPTO to retrieve the ECC.
Back when we obtained the Certificate of Availability from the DAS system, of course we also set up “tracking” for this Chinese document. Indeed two people in our office have set up such tracking. So if and when the USPTO does find time to carry out this retrieval task, we will hear about it by means of an alerting email from the DAS system.
Which brings us back around to the main point of today’s rant. The point of today’s rant is to complain about this USPTO policy of actively aging each ECC retrieval attempt until the bitter end. One of the things that of course runs through a person’s mind when they learn about this policy at the USPTO is, “why the heck doesn’t USPTO just suck it up and retrieve the ECC at the time that the applicant actually asks the USPTO to retrieve it?” Why go to all of this trouble to actively age the retrieval attempt for months or years, stubbornly waiting until Palm says the case has reached the desk of an Examiner?
I have tried and tried to guess what could possibly be the reason for this policy of actively aging the DAS retrieval attempts rather than simply acting on the DAS requests as they come in. I have also asked and asked various people at the USPTO about this, and each person I ask says that he or she has no idea why the USPTO ages the DAS retrieval attempts. Which might be true or might be the person’s way of ducking the question.
I suppose one conceivable answer for the aging could be “well, it is prodigiously costly to the USPTO to carry out the retrieval from DAS, and some fraction of applications go abandoned before the case reaches the desk of an Examiner, and so the aging policy makes it so that we save this prodigious cost each time such a case goes abandoned.”
I sure hope this is not the actual answer. If the internal cost to the USPTO to carry out a DAS retrieval is more than about a nanocent, then Something Is Very Wrong at the USPTO. The DAS retrievals should by now be the kind of thing that computers do (not people). And the computers should be doing this in a completely automated way (not requiring human supervision steps except when there are errors that need handling). By now in 2019 what ought to have happened is that USPTO people ought to have gotten all of this stuff so that it happens in an automatic way that incurs no recurring cost at all other than the electricity consumed in a few processor cycles of a few computers.
I would also say that to the extent USPTO somehow arrived at some ill-advised policy of actively aging these DAS retrieval requests rather than simply acting upon them when they arrive, it seems to me that there are many drawbacks to such a policy.
First, any time you decide to touch a file twice (once later in addition to now) you are incurring internal costs that could have been avoided. It is better, I submit, simply to suck it up and retrieve the darned ECC when you are asked to do so.
Second, any time to decide to actively postpone something that could have been done today, you are putting yourself in the position of having to set a docket to try to remember to do whatever that is. You then burden somebody in the future with the task of generating a report of dockets, and then running their finger down the list, and eventually taking the action, and then eventually clearing the docket. This then opens a host of further issues. What if you forget to set the docket? What if the docket item somehow gets cleared through inadvertence even though the task never actually got done? What if the task gets done and somehow the docket through inadvertence does not get cleared? Now somebody will have to do some exception processing to work that out.
I submit that any time you avoid even having to set a docket (for example by sucking it up and just doing whatever it is that you were considering postponing, which would have required setting the docket) then you are actually doing yourself a great favor.
Back to trying to guess what might be USPTO’s reason for this policy of actively aging the DAS retrieval rather than simply acting on the request promptly. I suppose another possible answer from USPTO might be something like “well the people who act on the DAS requests have really a lot of work to do and they can’t keep up, and our way of dealing with it is to age the DAS requests and maybe way down the line we will have somehow addressed the problem that our people can’t keep up with their work.” And if this is the answer, then my comment is, why is USPTO proceeding in such a dinosaur way as to have human beings carrying out manual steps for these DAS retrievals? Why in 2019 hasn’t the USPTO done whatever is needed to set it up so that the DAS retrievals are carried out in an automated way, by computers?
And the related comment being “if you can’t manage your workforce and their workload well enough that you are feeling the need to go to the extra step of actively aging some tasks, don’t you see that this aging makes the workload even worse because now, in addition, you have to do all of that docketing to try to remember to do the tasks?”
Okay let’s continue in an effort to try to guess why USPTO might have felt the need for this policy of actively aging the DAS retrieval requests. How about something like this? “Back before DAS there was PDX, and in the days of PDX it often happened that we would attempt a retrieval, and it would fail, and of course we would not know exactly why, but if we knew anything we knew it was not the fault of USPTO! In case you wondered, it is always someone else’s fault. And anyway then we would be stuck having to docket to try the request again later, and you know how internally costly it is to set and clear a docket! So then we would try the retrieval again at some random later time, and it might work later. So eventually we decided that sometimes it just takes a long time for that Office of First Filing to get around to making their priority document available in PDX, and so we might as well age the retrieval attempt so as to improve the chances that the retrieval attempt would succeed on the first try.”
And if this is indeed the explanation, then my comments include the following. First, PDX is almost completely dead. The USPTO pulled the plug on PDX for Japan on October 1, 2017, the USPTO pulled the plug on PDX for China on September 1, 2018, and the USPTO pulled the plug for Korea on December 1, 2018. The only remaining bit of functioning PDX is the connection with EPO. USPTO will pull the plug on the PDX connection with EPO Real Soon Now. So this excuse for aging the retrieval requests, namely that PDX is so flaky and USPTO sometimes had to try a particular retrieval a couple of times to get it to work … that excuse is no longer available. USPTO ought to scrap its policy of aging the retrieval attempts.
If the USPTO policy of aging its ECC retrievals only caused harm to the USPTO itself, that would be one thing. But the policy actively causes harm to applicants, and it does so in many ways. I will mention a couple of the ways.
A first way that the policy actively causes harm to applicants arises in the particular case of utility applications. It relates to the dreaded 4-and-16 time period. The rules say that if the applicant were to fail to get the certified copy of the priority document into the hands of the USPTO within the dreaded 4-and-16 time period, then the consequence is that the priority claim is lost. This penalty (loss of the priority claim) happens even if the failure was due to the USPTO itself (failing to carry out the DAS retrieval properly, along with some real or imagined flaw in the original DAS retrieval request as presented by the applicant). Now if only the USPTO were to attempt the retrieval promptly (at the time the applicant requested it) along with telling the applicant promptly if there were a failure, then there would be plenty of time for the applicant to deal with the (real or imagined) flaw in the DAS request before the expiration of the dreaded 4-and-16 time period.
But try to make a guess what USPTO’s policy is for how long it will age the DAS retrieval attempt. You will never guess. USPTO’s policy, for utility applications, is to age the DAS retrieval attempt until P+18. Yes, the USPTO looks to see when the priority application was filed, and adds 18 months to that date, and then sets a docket to wait until then to try, for the first time, to carry out the DAS retrieval. Which then guarantees that if the USPTO were to find some (real or imagined) flaw in the applicant’s original DAS request, then it will be too late for the applicant to try to correct it before the expiration of the dreaded 4-and-16 time period. This further guarantees that the applicant will have to file a petition (and pay a government fee) for forgiveness for having failed to hand in the certified copy timely.
USPTO also apparently has an unpublished business process rule (BPR) that if it notices in Palm that a utility case has been assigned to an examiner before P+18, then USPTO will attempt the DAS retrieval early.
This is all unnecessarily complicated. As things now stand, USPTO has to incur the internal costs of setting a P+18 docket for each case containing a DAS request, and layered on top of this, USPTO has to incur the internal costs of a complicated BPR that requires some machine to go and check Palm maybe once a week to look for cases that satisfy the complicated four-part BPR (the case has a DAS request, P+18 has not yet arrived, an Examiner who is not a SPE has been assigned to a case, and the ECC has not yet been successfully retrieved). That entire BPR could be eliminated if USPTO were to simply suck it up and carry out the DAS retrieval when requested to do so.
Yes there is a complicated procedure that applicants can follow if they wish, involving handing in an “interim copy” of the priority document. This is a fiddly error-prone procedure (for example what if by accident the filer hands in the wrong document, or misspells something on the “interim copy” cover sheet?) and applicants should not have to do this at all.
A second way that the policy actively causes harm to applicants arises for design or utility cases alike. This is the risk of the case proceeding all the way to issue with somehow everyone involved (including the applicant and the examiner) overlooking the problem of the certified copy having somehow failed to find its way into the file. Yes of course we all docket very diligently to watch to make sure the Examiner checked box 4 on the office action form. Yes of course we all docket very diligently to watch to make sure the Examiner checked box 12 on the notice of allowance. But still, if only the USPTO were to suck it up and simply retrieve the certified copy when requested to do so rather than dragging its feet about it, this would reduce the risk.
Five years ago I urged the USPTO to clean up its act about this. It did not do any good. Now I am urging USPTO again.
Maybe there was some time in the past when there was some good reason for USPTO to age the certified copy retrievals. But those times are gone. DAS works well, and there is no good reason in 2019 to foot-drag on retrieving certified copies.