The thirty-one practitioners receive a response from the Commissioner for Patents

I am delighted to be able to report that the thirty-one practitioners received a response from the Commissioner for Patents.  This was the letter with four “asks” about the DAS (Digital Access System) for electronic retrieval of electronic certified copies of priority documents.

You can see the letter from the thirty-one practitioners here.  You can see the response from the Commissioner for Patents here.  I think your reaction, like mine, will be a good feeling about the office of the Commissioner for Patents.  I think the Commissioner and his colleagues tried very hard to be responsive and to quite some extent they were responsive.  The results are favorable to patent applicants.

For each of the four “asks” I will summarize the response of the Commissioner and I will offer a comment or two.

Ending the foot-dragging on the retrieval of electronic certified copies.  For a utility application, it is a big problem for a patent applicant if the applicant fails to get the certified copy of the priority application into the file prior to the expiration of the crucial “four-and-sixteen” date.  USPTO’s stated policy until now was to foot-drag the DAS or PDX retrieval until such time as the case was about to be examined by an Examiner, which would in most cases be well after the crucial date.   This forced many applicants, out of an abundance of caution, to feel no choice other than to file an “interim copy” of the priority application.  

Other applicants, wishing to avoid going to the potentially unnecessary extra steps of filing an “interim copy”, faced the risk of having to file a petition to perfect the priority claim if and when the USPTO belatedly announced that the DAS request suffered from some real or imagined defect.

What was needed was for USPTO to end the foot-dragging and to henceforth retrieve the electronic certified copy (“ECC”) when asked to do so by the applicant.  This would in most cases lead to the ECC being present in IFW well in advance of the crucial date.  The presence of the ECC in IFW in advance of the crucial date would permit the applicant to relax, secure in the knowledge that there would be no need to file an “interim copy”.

I first asked the USPTO to stop this foot-dragging on May 10, 2014 in this blog article.  Given that more than five years had passed and the USPTO had not stopped the foot-dragging, I asked other practitioners to join me in writing a physical letter to the Commissioner for Patents.  This happened on February 8, 2020 and this was a public request that you can see here.  The point that I am making is that I am quite certain that on or shortly after February 8, 2020 some reader in the Commissioner’s Office printed out the not-yet-signed letter from the February 8 web page and showed it to the Commissioner.  The Commissioner knew that the letter was going to arrive, the only questions being when exactly it would arrive and the exact number of signers.

Here is the Commissioner’s response of earlier today:

I am pleased to inform you that, as of late last year, the USPTO changed the timing of retrievals from docketing to a patent examiner to when the application is released from the Office of Patent Application Processing.

The USPTO website has been recently updated to reflect the new timing of retrievals.

The wording of this response made me smile.  We are told that even before receiving our letter the USPTO had already started doing the thing that we said needed to be done.  Now just to keep close track of things, the first time that the USPTO actually publicly committed to doing this was after receiving our letter, but who’s counting, right?  (I am still going to take credit for this, based on my “ask” from May 10, 2014.)  And indeed the USPTO web page on this subject, which you can see here, now says this:

For foreign applications (to which priority is properly claimed in a U.S. application) filed in a participating foreign IP office, automatic retrieval will be attempted by the USPTO when the U.S. application is released from the Office of Patent Application Processing.

This update to the USPTO web site happened on March 3, 2020, chronologically after the thirty-one practitioners wrote to the Commissioner.

The very happy result here is that henceforth, applicants will almost never face the need to file an “interim copy”.  

Pulling the plug on PDX.  The signers asked that USPTO discontinue the PDX system, so that going forward, priority document retrieval from the EPO can take place through the DAS system.  The USPTO did not do this when I asked it to do so in 2018 — see this blog article.  The problem of course is that USPTO cannot do this unilaterally — it requires coordination with EPO.  Here is the response from the Commissioner:

The USPTO has a goal of migrating eligible priority document exchanges to WIPO DAS. This migration must be agreed to and undertaken bilaterally as there are significant transition issues that require coordination. The USPTO intends to initiate discussion with the EPO on this in the near future.

What is gratifying here is a written commitment from the USPTO to its own goal of migrating from PDX to DAS.  This makes clear that the foot-dragger here is EPO, not USPTO.  The letter says that USPTO intends to discuss this with EPO “in the near future”.  One can imagine the USPTO person showing the “thirty-one practitioners” letter to the EPO person during the discussion, and one can hope that this might be of at least a little help in nudging the EPO in the desired direction.

Reformatting Form PTO/SB/38.   I asked the USPTO to reformat this form on October 14, 2019 — see this blog article.  My request alone was not, unfortunately, enough to induce the USPTO to reformat the form.  When thirty-one patent practitioners asked, however, USPTO reformatted the form.  Here is the relevant portion of the old form:

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And here is how USPTO reformatted it after seeing our “ask”:

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As you can see we got what we wanted.  The boxes for the previously hard-to-read information — the two-letter code for the Office of First Filing, the application number, the filing date, and the DAS access code — are now much bigger.  I am delighted at this result.  

Become a Depositing Office for RO/US.  Finally, the signers ask that USPTO become a Depositing Office with respect to international patent applications (PCT applications) that have been filed at the RO/US (the receiving office of the USPTO).  I asked the USPTO to do this a year ago — see this blog article.  It did not happen.  When thirty-one patent practitioners asked, would USPTO make it so?  Here is the response:

The USPTO is not currently in a position to make the technical and procedural changes necessary to implement due in part to the agency’s focus on modernization and stabilization of our IT systems. When resources permit, the USPTO will revisit this issue and consider implementation.

Well, we did not get a “yes” on this “ask”.  Nor did we get even a “Real Soon Now”.

In summary.  I think it is important to step back and consider the overall situation.  A group of stakeholders wrote a letter to the Commissioner for Patents.  The Commissioner for Patents answered the letter.  This in and of itself deserves some comment.  (I am aware of other times in the past that letters have been directed to other Offices within the USPTO with no response of any kind ever being received.)  So let’s please recognize responsiveness when it happens.

We can then turn to the content of the letter from the Commissioner for Patents, and what we see is undeniably an effort to be responsive.  Any applicant or practitioner reading this letter from the Commissioner will sense an effort to be responsive.  Repeating back the “ask” in a way that recognizing why the “ask” was being asked.  Then giving the response to the “ask”, in as near to a direct way as I have ever seen from a government agency.  (I have no difficulty bringing to mind other letters from the USPTO in the past from other Offices where the part of the letter that is supposedly responsive was very close to being content-free.)  So again let’s please recognize responsiveness when it happens.

Then we can turn to the actual scoreboard.  Of the four “asks”, which responses actually worked out to be along the lines of “yes”?  And to oversimplify, I count the score for today’s letter as “yes”, “we will try”, “yes”, and “maybe some day”.  Would I have preferred four “yes’s”?  Sure I would have preferred that.  But I am certainly very glad to see what I see in today’s letter.  One could have imagined a string of “no’s”.  (I think of one letter that I received not so long ago from a different Office at the USPTO where the part of the letter that might have been responsive was instead a string of what seemed to me to be content-free word-salad paragraphs.)

So I am going to give the Office of the Commissioner for Patents high marks for being responsive here.  Thank you to the Office of the Commissioner for Patents!

10 Replies to “The thirty-one practitioners receive a response from the Commissioner for Patents”

  1. I note that PDX can also be used for submitting priority documents filed with the EPO to the USPTO (” the EPO will also make available to the USPTO priority documents from first filings in other offices, where they are available in its electronic files.” ). Is this a functionality that is desired / should be kept?

  2. Nice to the USPTO being responsive. Thanks for organizing this, Carl.

    I notice the PTO says it will pull priority filings via DAS when the case when released from pre-exam. There’s a certain sense to that from the PTO’s standpoint: if an applicant files an application without paying fees, and doesn’t intend to actually do anything with it, it’s silly for the PTO to expend resources pulling documents from other patent offices in a case that’s of no interest to the applicant. So the PTO waits until the filing has been perfected. But I wonder if that isn’t overkill. When an application is considered incomplete, the PTO will mail a notice of missing parts, but there are various things that can trigger that: non-payment or underpayment of fees (e.g. due to there being multiple-dependent claims), or some perceived problem with the drawings. The timing of the mailing of the notice of missing parts is variable. And sometimes, when responding to a notice of missing parts, an applicant makes a good-faith attempt to respond within the two-month deadline, but the PTO isn’t satisfied with something, tells the applicant so, and doesn’t release the application from pre-exam until the perceived imperfection is “corrected” to the PTO’s satisfaction. Or the applicant may simply take extensions. So it’s not inconceivable that the case isn’t released from pre-exam until after the 4/16 date, and only then will the PTO attempt to retrieve the documents via DAS. Moreover, sometimes the PTO may have trouble retrieving the documents – maybe the applicant entered an erroneous retrieval code in the ADS, or some other glitch occurred. What are the implications of the PTO retrieving the priority document after the 4/16 date? I wonder if a smarter way to go would be to retrieve the documents via DAS as soon as the basic filing fee has been paid, rather than waiting for release from pre-exam.

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