USPTO is now passive-aggressive about accessing from DAS

It is discouraging to see a recently increased level of passive-aggressiveness on the part of the USPTO about its role as an Accessing Office in the DAS system.  This blog article briefly describes four ways in which the USPTO has recently started acting as if it wishes that the DAS system did not exist at all. 

The background for the WIPO DAS system is that in the old days, the way that a certified copy of a priority application somehow got transmitted from an OFF (office of first filing under Article 4 of the Paris Convention) to the USPTO as an OSF (office of second filing) was that a physical certified copy would get sent by courier from foreign patent counsel to US patent counsel, and then the physical certified copy would get sent by courier from the US patent counsel to the USPTO.  In the old days, the sole exception to this was if the US application happened to be a 371 case (an entry into the US national phase from a PCT application).  The accession by the USPTO to the PCT (which happened in 1978) required the USPTO to accept the priority document from the IB (International Bureau) in whatever format the IB saw fit to employ in its transmission of the priority document to the USPTO.  Within the past fifteen years, this has meant that the way that the USPTO has received such priority documents from the IB is electronically.

Communicating priority documents electronically instead of physically is, of course, the smart thing to do, and what you might expect is that every patent office around the world would enthusiastically embrace such progress.  You might expect that every patent office around the world would painstakingly promulgate rules that would actively reward the applicant for migrating away from physical certified copies.  You might expect that every patent office around the world would design its systems and procedures to facilitate such a migrating-away from physical certified copies.  You might expect that every patent office around the world would try to eliminate traps for the unwary for the applicant that uses electronic means instead of physical certified copies as the applicant’s way to perfect a priority claim under Article 4 of the Paris Convention.

The International Bureau does indeed promulgate such rules.  The International Bureau does indeed design its systems and procedures that way.  The International Bureau does indeed eliminate traps for the unwary.

The alert reader will have no difficulty guessing where I am going with this.  From the applicant’s perspective, the clear impression is that the USPTO treats DAS as a profit center so that applicants will from time to time have to pay big fees to the USPTO for petitions that would need to be granted due to the applicant’s migration away from physical certified copies to DAS, and due to the USPTO seemingly actively setting up traps for the unwary with DAS, and the USPTO seemingly going out of its way to design failure into its ways of working with DAS.

USPTO foot-drags the retrieval from DAS.  The applicant that chooses, now in 2023, to continue using physical certified copies as the way to perfect a priority claim at the USPTO, has complete control over when the USPTO receives the physical certified copy.  Just to give one example of this, the applicant could, if it wishes, physically deliver the physical certified copy to the USPTO on the day the applicant files the US patent application.  The USPTO is, by its own rules that relate to the physical-certified-copy approach, not allowed to say “no” to whatever date the applicant chooses for delivering the physical certified copy.

Let’s look at what happens if the applicant tries to do the right thing and use DAS instead.  The USPTO punishes the applicant for doing the right thing by foot-dragging the retrieval from DAS.

How it was from 2009 onwards.  In the early days of the USPTO’s status as an Accessing Office in DAS, the foot-dragging was so extreme that the USPTO actively postponed the retrieval from DAS until the patent application had been docketed to a particular Examiner.  This was usually well after the dreaded 4-and-16 date, exposing the applicant to petition-fee costs and risks of losses of substantive rights.

On May 10, 2014, I asked the USPTO to stop this foot-dragging (see blog article).

This foot-dragging at the USPTO got so bad that on February 22, 2020, Thirty-One Patent Practitioners sent a letter to Drew Hirshfeld, the Commissioner for Patents.  You can see the letter here.  The letter presented four “asks” about DAS, one of which was to stop this foot-dragging.

And it worked.  The USPTO would not do it in 2014 when it was only me asking, but in 2020, when thirty-one patent practitioners asked, the USPTO reduced its foot-dragging on DAS retrieval.  You can read about it here.  The Commissioner carefully avoided acknowledging that its reduced foot-dragging was in response to our “ask”, but the timing was the way it was.  The ready-to-sign letter got posted publicly for signature, and the USPTO reduced the foot-dragging shortly thereafter.  Shortly after that, the physical letter signed by the thirty-one patent practitioners got physically delivered to the Commissioner.  Here is what the Commissioner wrote back to the thirty-one patent practitioners:

I am pleased to inform you that, as of late last year [late 2019], 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 [after the letter got posted for signature] updated to reflect the new timing of retrievals.

This shift in “when will the USPTO do the retrieval” from “when the case is docketed to the Examiner” to “when OPAP releases the case to the Examining Corps” was, without a doubt, an improvement in the USPTO’s relationship with the DAS system and with the USPTO’s relationship with applicants who were trying to migrate from physical certified copies to copies from DAS.  It is, however, disappointing that the USPTO did not make this shift in 2014, when I first asked.  And it is disappointing that anybody had to ask!  A normal responsible patent office would have set up its systems and procedures this way from the outset.  No, it took the imminent arrival of the letter from the thirty-one patent practitioners to get the USPTO to be less bad about its timing of retrieval.

The foot-dragging by the USPTO persists to this day.   Again keep in mind that the applicant that picks “physical certified copy” as the way to perfect a priority claim at the USPTO has complete control over the date that the USPTO gets the priority document.  The USPTO can’t say “no” if the applicant picks filing day, for example, as the day to thrust the physical certified copy into the USPTO’s hands.

But even now in 2023, the USPTO stubbornly refuses to retrieve the electronic certified copy from DAS on the actual day that the applicant asks it to.  It is USPTO policy even now in 2023 to foot-drag the retrieval until the application reaches “status 30”, meaning “the date that OPAP releases the application to the Examining Corps.”

What should happen of course is that if the applicant asks the USPTO to retrieve the electronic certified copy from DAS on any particular day, the USPTO ought to retrieve it from DAS promptly upon being asked.  Again if the applicant picked the “physical certified copy” approach, the USPTO would not be able to say “no” and the certified copy would show up in IFW shortly thereafter.  The applicant could check IFW and could clear the docket, and the applicant could relax, safe in the knowledge that the priority claim had indeed been perfected as of that date.

But even now if the applicant picks the DAS approach, the USPTO punishes the applicant for it instead of rewarding the applicant for it.  The USPTO foot-drags the retrieval until some much later date over which the applicant has little control, namely the later date when OPAP decides that it will release the application to the Examining Corps.  The applicant has no choice but to keep its docket entry in place for weeks or even months, until the release to the Examining Corps happens.  Only then is the applicant able to check IFW and, perhaps, conclude that it is safe to clear the docket entry.

I now realize that this is likely the reason why the USPTO recently eviscerated Form PTO/SB/38 (see blog article).  The USPTO’s deletion of “Option B” from Form PTO/SB/38 makes it much harder for the applicant to try to ask for the retrieval from DAS to happen on the date that the applicant wants it to happen.  The deletion of Option B from the Form PTO/SB/38 leaves the applicant with only the “corrective ADS” path as the way to beg the USPTO to make some future plan for doing the retrieval.

The USPTO goes out of its way to avoid letting the applicant know if the USPTO somehow was unable to accomplish the retrieval from DAS.  What you would wish is that if a patent office were to try to retrieve a priority document from DAS, and if for some reason the attempted retrieval were not a success, then the patent office would promptly notify the applicant of the failed attempt.  This would then permit the applicant to try again.  Ideally the “trying again” would be well in advance of the dreaded 4-and-16 date.  Such applicant-friendly behavior by a patent office would reduce to a minimum the need for a petition-fee cost and the risk of loss of substantive rights due to a failed priority claim.

And if that patent office were the IB, you would get your wish.  The IB goes out of its way to help with this.  For a user of the ePCT system, there is an automated email message that the ePCT system sends to the applicant if the dreaded 4-and-16 date is imminent and a priority document remains outstanding.  For a user of the ePCT system, it is a matter of just a few mouse clicks to generate a report of all of the applicant’s pending PCT applications for which at least one priority document remains outstanding.  For any PCT applicant, there is the form PCT/IB/304 that actively warns the applicant (by the dreaded “NR”) if a priority document is outstanding.

In contrast, at the USPTO, it is commonplace for the USPTO to fail to say anything to the applicant if an attempted retrieval were to fail.  Put plainly, the USPTO fails to extend to the applicant the courtesy of letting the applicant know of a failed retrieval from DAS.

In one of my pending US cases, the “release to the Examining Corps” happened on November 8, 2021.   By USPTO’s own policy the USPTO should have attempted to retrieve the priority document at that time.  According to an EBC person that I spoke with recently, the USPTO did attempt the retrieval at that time and it failed (due to a real or imagined defect in our formatting of the application number in the ADS).

What you would hope is that in the event of such a retrieval failure, the USPTO might have done me the courtesy of telling me.  Nope.  And the failed retrieval did not even appear in the Transaction History in the year 2021.  The only hint of it is an entry in the TH more than three months later, in the year 2022:

Final PDX/DAS request for priority document has failed.

This is the epitome of a trap for the unwary.  The USPTO’s idea of how to handle this is that the applicant needs to somehow go and check the TH, over and over again, for many months, to see if there has been a retrieval failure.  The USPTO sees no need to actually communicate the failure, say, by an outgoing correspondence notification in IFW.  This trap for the unwary is completely the USPTO’s making.

The USPTO fails to validate the applicant’s DAS request in real time.  In the ePCT system, if an applicant asks the IB to use the DAS system to retrieve a priority document, the ePCT system cross-checks the applicant’s information against the DAS system in real time.  If the applicant somehow mistyped the DAS Access Code, or somehow failed to format the application number in the way that the system expects, the applicant would learn in real time of the problem.  The applicant can immediately try again and get it right.

This real-time cross-checking and validation is provided to the applicant at the time that the applicant is preparing the PCT Request (when the applicant is getting ready to file the PCT application).    But suppose the applicant did not know the DAS Access Code at the time of filing the PCT application?  Suppose it was only some days later that the applicant learned the DAS Access Code?  Well, just as you would wish it to be, if the applicant uses an ePCT “action” to provide the DAS Access Code some time after the filing date, the ePCT system cross-checks that data entry in real time during the “action” workflow.  So once again, if an applicant provides a DAS Access Code after the filing date, and if there were some problem with the DAS Access Code (or with the formatting of the application number, or any other real or imagined defect in the retrieval request), the applicant would learn in real time of any problem.

But the USPTO seemingly goes out of its way to build traps for the unwary into its user interfaces for DAS requests.  Here are two of the traps:

• • The applicant is getting ready to file a US patent application, and the applicant decides to use DAS rather than a physical certified copy.  The applicant enters the priority application number, priority filing date, priority Office of First Filing two-letter code, and DAS Access Code into the ADS.  The applicant uploads the ADS into EFS-Web or Patentcenter to file the patent application.  What you would wish is the USPTO system would cross-check the priority information against DAS in real time and do the courtesy to the applicant of reporting a failed cross-check in real time.  But you would not get your wish.  The USPTO postpones any cross-check against the DAS system until months later when OPAP releases the application to the Examining Corps.
  • The applicant filed a US patent application and only learned the DAS Access Code later.  So the applicant communicates the DAS Access Code to the USPTO through the online web-based Corrective ADS function of EFS-Web or Patentcenter.  What you would wish is that the online web-based USPTO system would cross-check the DAS Access Code against DAS in real time and do the courtesy to the applicant of reporting a failed cross-check in real time.  But you would not get your wish.

Again, I remind the reader that in the two corresponding places in ePCT workflow, matching the two bullet points above, the ePCT system does cross-check in real time.

The members of the Patentcenter listserv (join here) requested this feature for Patentcenter on July 6, 2020 (see Feature Request 20 here).  More than two years have passed and the Patentcenter developers have not provided such real-time cross-checks.

A USPTO customer also posted this request to USPTO’s Ideascale system in 2020 as Ideascale idea number 555.  (It is recalled that Ideascale is “the place where good ideas go to die“.)  The USPTO only very rarely actually acts upon ideas posted to Ideascale, and the USPTO has never, to my knowledge, ever actually acted upon any Ideascale feature requests relating to Patentcenter or DAS.

But the USPTO would not have needed to be asked by users.  The USPTO could have gone to the trouble to see how WIPO does it, and could have seen this real-time cross-checking in ePCT, more than four years ago.  The USPTO could have emulated WIPO on this.

USPTO avoids validating the user’s priority application number format in real time.  This is of course the sort of thing computers are supposed to be good at.  The USPTO systems are, it turns out, very picky about the format of the priority application number at the OFF (office of first filing).  You can see here (USPTO web page about DAS) a table with many dozens of entries detailing the “recommended” application number formats.   The use of the word “recommended” gives the (false) impression that other application number formats might still be okay and gives the (false) impression that the USPTO clerk carrying out the retrieval might try to get the retrieval to work even if the application number format deviated from the “recommended” format.  Nope.  The trap for the unwary here is if the applicant mistakenly gets an impression that “recommended” only means “recommended”.  The real situation, one learns from hard experience with the USPTO, is that any real or imagined deviation from the supposedly merely “recommended” format will lead to a passive-aggressive bounce of the retrieval request by the USPTO.   The real behavior of the USPTO clerk is to click the “retrieve” button once, based only on the exact characters provided by the applicant in the DAS request.  If that single click of the “retrieve” button does not succeed, the USPTO clerk does not look to see whether some other format other than the “recommended” format might permit the retrieval to work.

A first example of this relates to OFF application numbers that have a decimal point followed by a check digit.  Maybe the “recommended format” is to delete the decimal point.  Maybe the “recommended format” is to insert the decimal point.  Maybe the “recommended format” is to delete the check digit.

A second example of this relates to the common practice in some OFFs to include the two-letter Office code at the beginning of the application number.  Will the presence of the two-letter Office code lead to the USPTO system puking on the retrieval request?

These are the sorts of validations that computers are supposed to be good at.  What you would wish is that the USPTO systems would validate the “recommended” format of the priority application number in real time.  Nope.  The USPTO postpones any such format validation until retrieval time, which again is likely to be weeks or months later.  And even then, if the USPTO system pukes on the retrieval request due to failure to match the “recommended” format, the USPTO will not do the courtesy of actually communicating this to the applicant.

Oh, the long-suffering alert reader will know where I am going with this.  Every WIPO system actively validates the format of a priority application number in real time.  This is so for the user who is setting up “tracking” in DAS.  This is so for the user who is entering a priority claim into a PCT Request in ePCT.  This is so for the user who is presenting a DAS retrieval request in ePCT after the PCT application has been filed.

The USPTO’s systems fail to validate the “recommended” priority application number format at the time of uploading the ADS into Patentcenter, and fail to validate the format if later the applicant makes use of the online web-based “corrective ADS” function.

Other Patentcenter feature requests relating to DAS that USPTO has failed to act upon.  While we are on the subject of the USPTO failing to reward users for doing the right thing by migrating away from physical certified copies, we can look briefly at some additional feature requests for Patentcenter that have apparently been ignored at the USPTO.  See for example:

• • Feature request 21 dated July 6, 2020.  If you go into Patentcenter and click on the “foreign priority” tab, what should appear is an icon reporting the results of the cross-check against DAS.  (ePCT of course makes clear in the similar place whether the cross-check succeeded or failed.)  This was also suggested in Ideascale in 2020 as idea number 558.
  • Feature request 22 dated July 6, 2020.  If you go into Patentcenter and click on the “foreign priority” tab, what should appear is an icon reporting the results of the retrieval attempt from DAS.  (ePCT of course makes clear in the similar place whether the retrieval succeeded or failed.)  This was also suggested in Ideascale in 2020 as idea number 559.

These are the sorts of status reports that computers ought to be good at.  WIPO figured out how to do such status reports in ePCT.  But the USPTO has not provided such status reports in Patentcenter, even after being asked more than two years ago in both the feature requests for Patentcenter list and in Ideascale.

Did I mention that Ideascale is where good ideas go to die?

To see how hostile the USPTO is to the applicants who choose to use the DAS system (rather than sending physical certified copies to the USPTO), one needs only to peruse Section 215 of the MPEP.   See for example this out-of-date language:

In general, an attempt to retrieve an eligible foreign application to which priority is claimed in a U.S. application will be made by the USPTO when the application is docketed to an examiner.

(emphasis added.)

This out-of-date language also appears in TIP #2 at USPTO’s web page about DAS (screen shot at right), which is mistitled as Electronic Priority Document Exchange (PDX) Program.

And see this sentence at MPEP § 215 which sets a false expectation that if an applicant communicates a DAS retrieval request to the USPTO, the USPTO will act upon it within a week:

A successful request to retrieve an electronic foreign priority application takes approximately 1 week to complete.

In fact if the applicant requests the retrieval on the day the patent application is filed, it never happens that the retrieval is “completed” within 1 week.

The USPTO rejects any notion that the USPTO ought to try to get the DAS retrievals right, and rejects any notion that the USPTO ought to even do the courtesy of letting the applicant know if the USPTO found any real or imagined defect in the formatting or content of the DAS retrieval request, and rejects any notion that the USPTO ought to even do the courtesy of letting the applicant know if the DAS retrieval request was not successful.  Here is the “in your face” reminder that if you want to be on the safe side, what you need to do even now in 2023 is send in a physical certified copy:

Applicants continue to bear the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued.

The USPTO offloads to the applicant all “ultimate responsiblity” for catching it if the USPTO gets something wrong in the retrieval process, or finds some real or imagined defect in the retrieval request.  The clear message to the reader of the MPEP is that the USPTO would greatly prefer that the applicant hand in a physical certified copy of the priority application.

To sum up, the USPTO should do it the way WIPO does it:

• • When an applicant communicates to the USPTO that the applicant would like the USPTO to retrieve an electronic copy of a priority application from DAS, the USPTO should carry out the retrieval promptly thereafter.  This does not mean “when the USPTO feels like it”, perhaps weeks or months later.  This should mean promptly after the applicant asks.  (ePCT does this.)
  • When an applicant communicates a DAS retrieval request to the USPTO, the USPTO should validate the format of the application number in real time.  This applies to a request made when filing a US patent application.  This applies as well to a request made after the US patent application has been filed.  (ePCT does this.)
  • When an applicant communicates a DAS retrieval request to the USPTO, the USPTO should cross-check the request information against the DAS system  in real time.  This applies to a request made when filing a US patent application.  This applies as well to a request made after the US patent application has been filed.  (ePCT does this.)
  • When the USPTO makes a (half-hearted) attempt to retrieve a priority document from the DAS system, and when the retrieval attempt fails, the USPTO should inform the applicant promptly thereafter.
  • USPTO should make it so that in Patentcenter, the applicant can readily check the real-time status of a retrieval request and its results.  (ePCT provides this.)
  • USPTO should make it so that in Patentcenter, the applicant can readily generate a report listing applications for which priority documents remain outstanding.   (ePCT provides such a report.)