The Thirty-One Patent Practitioners got their third “ask” about DAS

I am sure that many loyal readers of this blog have been following closely the progress of the Commissioner for Patents in following through on the four “asks” about the DAS system that The Thirty-One Patent Practitioners presented in their request letter dated February 22, 2020.  Right?  Of course you have been following this closely.  The good news is that today the Commissioner for Patents moved forward on the third of the “asks”.  The Commissioner has announced that he will pull the plug on the PDX system.  This is good news for patent applicants and patent practitioners, as I will describe, and we all owe a note of thanks to those thirty-one patent practitioners for nudging the Commissioner along on this. 

By way of background, you can see the “ask” letter here and you can see the Commissioner’s response here.  The “asks” were:

Ask 1.  Stop the foot-dragging on retrieving electronic certified copies of priority applications from PDX and DAS when asked by the applicant to carry out the retrieval.  For many years the Office had engaged in a weird sort of foot-dragging in which the Office deliberately postponed the attempt at a retrieval until after the dreaded 4-and-16 date had come and gone.  The consequence of this deliberate postponement by the Office was that if the Office then found some real or imagined defect in the retrieval request (for example a real or imagined defect in the DAS access code, or a real or imagined defect in the formatting of the application number such as supposedly wrongly including or omitting the digit after the decimal point) then it would be too late for the applicant to remedy the real or imagined defect and the applicant would have to pay $400 and file a petition to get forgiveness for having failed to hand in the certified copy on time.

The Thirty-One Patent Practitioners asked the Commissioner to stop the foot-dragging.  And indeed back when the Commissioner learned that the “ask” letter was out for signature but had not yet been sent to the Office, the Commissioner directed the relevant people to stop the foot-dragging.  So by the time the “ask” letter reached the Commissioner, the Commissioner was able to say that he had already stopped the foot-dragging.  

Merely posting the letter for signature achieved its desired result!

Ask 2.  Reformat Form PTO/SB/38 so that the box for DAS code was big instead of tiny.  It had always been the case that the box was so small that by the time that a completed Form PTO/SB/38 found its way into IFW, the DAS code was generally illegible.  You can see an example of this at right.  The Thirty-Nine Patent Practitioners got their “ask”.  The Commissioner reformatted the box to be big enough that the DAS code was consistently legible.

Ask 3.  Scrap the PDX system.  The DAS system is designed by WIPO, and you know what that means.  It means it is well designed and is user-friendly.  Back when WIPO was designing the DAS system, they asked for my input, and I told them they needed to provide a retrieval log showing when each Office had carried out an attempted or successful retrieval.  I told them they needed to provide a tripwire system so that the user could be notified each time any Office tried to retrieve an electronic certified copy.  I told them they needed to provide some document certifying that a particular priority application was indeed available to Accessing Offices, so that any particular Accessing Office would be denied the opportunity to play dumb and pretend that they did not have the ability to retrieve the priority application.  And indeed WIPO provided all of these features and more.  In contrast, the much older PDX system did not provide any of these features.  

The situation as of February 2020 was that PDX continued to be the only way that a US applicant could accomplish an electronic retrieval of a priority application from the EPO.  This meant that the US applicant was denied the ability to check a log to see whether the USPTO had indeed successfully or unsuccessfully carried out the PDX retrieval.  This meant that the US applicant was denied the ability to set up the tripwire that might have tipped off the applicant when the USPTO attempted such a retrieval.  This meant that the US applicant was not really able to independently check in advance to be sure that the particular priority application was really available in the PDX system.

For all of these reasons, The Thirty-One Patent Practitioners presented this third “ask” to the Commissioner for Patents.  They asked the Commissioner to scrap the PDX system.  

This did not, however, result in an immediate scrapping of the PDX system.  It takes two to tango, and the second participant in this tango was the EPO.  This probably took a while.  What got announced today is that the scrapping of the PDX system will happen effective January 1, 2022.  You can read about it here.

As I say, if you happen to know one or more of The Thirty-One Patent Practitioners, you should drop them a thank-you note for this happy result.

Ask 4.  Get RO/US to become a Depositing Office in the DAS system.   Sometimes when you file a PCT application, you later need to claim priority from it under Article 4 of the Paris Convention.  When this happens you would of course need to provide a certified copy of that PCT application to the Office of Second Filing.  In today’s world of Covid it is almost always extremely difficult to do this kind of thing with old-fashioned physical certified copies.  Electronic certified copies are the trendy, modern and up-to-date way to do this sort of thing.  And DAS is the way to do it.

Most of the high-volume PCT Receiving Offices did what was needed to be Depositing Offices in the DAS system long before Covid, and reinforced their trendy, modern and up-to-date status.  Such PCT Receiving Offices include:

  • Australia
  • Austria
  • Brazil
  • Chile
  • China
  • Colombia
  • Denmark
  • Eurasian Patent Office
  • European Patent Office
  • Finland
  • France
  • Georgia
  • India
  • Israel
  • Italy
  • Mexico
  • Morocco
  • Netherlands
  • Norway
  • Spain
  • Sweden
  • World Intellectual Property Organization

Conspicuous by its absence on this long list of Receiving Offices is the USPTO.  And this was and remains the fourth “ask”.  Maybe today’s blog article will be yet another gentle reminder to the USPTO to move along with getting RO/US to become a Depositing Office in the DAS system.  This is the sort of thing that computers are supposed to be good at!

2 Replies to “The Thirty-One Patent Practitioners got their third “ask” about DAS”

  1. How about the USPTO actually acting on SB/39 forms? Can we add that to the “wish list”?
    Sadly, I often have to deal with self-filed Provisionals. Inventors self-file and use only a Provisional Cover Sheet instead of the ADS, hence it’s not automatically in DAS.
    It normally takes two or three uploads of SB/39 forms (even if I make sure to have a properly signed and dated form for each signed inventor), sometimes even two or three faxes of said forms until the USPTO releases the priority document into DAS. Why on earth do they sometimes react only to a x-times faxed form, but not the uploaded one? Or vice-versa? And sometimes not even after that?
    Some may remember that this subject was discussed last week during the PCT Webinar, and there is a work-around for that. I’ve had cases where the IB got involved and then the USPTO magically released the priority document into DAS. But that does not necessarily help, if the priority document is needed in other countries.

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