USPTO has eviscerated Form PTO/SB/38

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The WIPO DAS system is an important part of the daily work of the practitioner who files US patent applications that claim priority from non-US patent applications.  And Form PTO/SB/38 is an important part of that daily work.

The USPTO has quietly eviscerated Form PTO/SB/38, and has not said why it did so. 

The USPTO became an Accessing Office in the DAS system on April 20, 2009.  For more than twelve years, it has been possible for an applicant to request the USPTO to retrieve a priority document from the DAS system by either of two paths:

    • ADS path:  recite the priority claim in an ADS (application data sheet), or
    • Form PTO/SB/38 path:  present the request by means of Form PTO/SB/38.

For more than twelve years, Form PTO/SB/38 has had a section entitled “Option B” (screen shot above right).  In the Option B section, the filer can specify the Office Code, the Application Number, the Filing Date, and the DAS Access code.  You can see the legacy Form PTO/SB/38 here.

Now, some time after February 8, 2023, the USPTO has quietly eviscerated Form PTO/SB/38.  The version of the form dated “2-2023” no longer has the section entitled “Option B”.  All that remains in this form is the former “Option A” which is used in the rare fact pattern that a filer might try to “reach through” some filing at the EPO to obtain a certified copy of some non-EPO priority document that is contained in the EPO application file.

It looks like the USPTO is trying to deny (or at least discourage) use by filers of the Form PTO/SB/38 path.  Instead, the USPTO is apparently trying to force filers to use the ADS path.

The ADS path is, of course, more cumbersome for the filer than the Form PTO/SB/38 path.  The PTO/SB/38 path is easy — a few mouse clicks and that’s it.  In contrast, the ADS path requires the filer to use strikethroughs and underscores to communicate the Office Code, the Application Number, the Filing Date, and the DAS Access code.   This gives the USPTO many opportunties to nit-pick the strikethroughs and underscores for real or imagined defects.

One can try to make use of the online “corrected ADS” form for such purposes.  The online corrected ADS form has strikethroughs and underscores that are generated by the online form itself.  This presumably denies the USPTO the opportunity to nit-pick as to whether the strikethroughs and underscores were presented correctly.  But the online corrected ADS form is not available for all types of patent applications.  It is not, for example, available for 371 cases (entry into the US national phase) and is not available for 35-series cases (cases that are a US designation from a Hague application).

I imagine this evisceration of Form PTO/SB/38 was done to somehow save some internal cost for the USPTO.  Previously, USPTO personnel had to be trained on how to handle either of two paths.  With this evisceration of Form PTO/SB/38, USPTO personnel only need to be trained on how to handle one path.  But this change increases paperwork burdens for filers.

3 Replies to “USPTO has eviscerated Form PTO/SB/38”

  1. As a practical matter, I think I’ve got the old SB/38 somewhere on my computer, if the need arises I’ll use that, and the PTO’s computer systems can hiss at me that it’s not a USPTO approved form. Tough for them. As I understand it, that “approved for use” that appears in the corner of the form means approved by OMB for the PTO to offer to use it, not that we’re precluded from using it.

    But I am as disappointed as you, Carl, that whereas the motto that most of us go by is, “If it ain’t broke, don’t fix it”, the PTO’s motto seems to be, “If it works, break it.”

  2. I have to say that Option A is not so rare if you have German clients who want European coverage outside of Germany – such clients frequently file a DE application filed by an EPO application or a PCT application with RO/EP. And since DPMA is not trendy, modern, and up-to-date, we are able to use Option A to avoid having to schlep a certified copy from Germany to the US and then into a PME envelope.

    Separately, I wonder if the web-based corrected ADS procedure is working for anyone. I have tried a few times over the past month, using both EFS and PatentCenter, and I simply receive error messages when attempting to enter the web-based corrected ADS flow.

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