USPTO leadership has taken corrective action

On November 5, 2023, I predicted (blog article) that the USPTO leadership would take corrective action in response to the situation that EBC would often tell a caller that the way to overcome a bug in Patent Center was to go back and do the task using PAIR or EFS-Web.  And my prediction has turned out to be correct.  USPTO leadership has indeed taken corrective action about this situation. 

As I wrote on November 5, 2023,  what I was not predicting was that USPTO leadership would postpone the shutdown of PAIR and EFS-Web (planned as of November 5 for November 8) until Patent Center is “ready”.  Likewise, I was not predicting that USPTO leadership would actually do the hard work of making Patent Center “ready” between November 5 and November 8.

What I predicted on November 5 was that a memo would get circulated from USPTO management to the EBC, telling the EBC that it is forbidden for a user to be told that the workaround for a Patent Center bug is to “use PAIR instead” or “use EFS-Web instead”.

And indeed my prediction has turned out to be correct.  USPTO leadership has taken corrective action about this situation.   The corrective action was to forbid EBC representatives from saying that the way to work around some defect in Patent Center is to use EFS-Web or PAIR.  Here is what happened in a call to the EBC yesterday.

The USPTO customer (a practitioner registered to practice befor the USPTO) had just tried filing a paper in a Hague application that originated outside the US and is not associated with a USPTO customer number.   Patent Center blocked the practitioner from filing the paper.  It seems that Patent Center apparently now checks to see whether a customer number is associated with an application, and rejects any filing if there is none.   Here is the readout:

    • Practitioner to EBC:  Please advise how to file papers in application 35/515,xxx.
    • EBC to Practitioner: You aren’t able to file documents in this application because your customer number isn’t associated in this application and there isn’t a POA.
    • Practitioner to EBC: Thanks. I should be able to act in a representative capacity under 37 CFR § 1.34 without a power of attorney.
    • EBC to Practitioner: Without the customer number being associated to the application you won’t be able to access it in Patent Center. This isn’t a glitch.
    • Practitioner to EBC:  How can I file a power of attorney if I need a power of attorney to file the power of attorney?
    • EBC to Practitioner:  In order to associate the customer number to the application you need to fax form AIA/122 to the Central Fax Number 571-273-8300.

The practitioner described the situation like this:

I couldn’t have made this up…  but I guess now that the EBC is no longer allowed to answer “use EFS-Web” — the answer from the EBC has become “send a fax to the Central Fax Number.”

5 Replies to “USPTO leadership has taken corrective action”

  1. So if a foreign associate asks you to file a last minute response in an Office action, you’ll have to 1) first fax-file a change of correspondence form, 2) keep checking Patent Center to see if the case is now associated with your customer#, and only when that has occurred can you, 3) file the Office action response (and POA)? Sounds like there will be some extensions taken, unless you also want to file the response by fax, and then docket to see if it shows up in the file wrapper.

    1. It is even worse: The change of correspondence form can only be signed by the applicant, or a practitioner of record. So before step 1) you have to obtain and file a power of attorney.

      Practically, I think this means we will start doing business in Hague cases by fax, as you suggest. Not sure yet what to do if new drawings are required.

      PatentCenter effectively bars practitioners from acting in a representative capacity. That is, the USPTO treats domestic design cases and Hague cases originating outside the US differently. That appears to be a violation of Article 12 of the The Hague Agreement Geneva Act of July 2, 1999, which states that “(b) The holder shall enjoy the same remedies as if any industrial design that is the subject of the international registration had been the subject of an application for the grant of protection under the law applicable to the Office that communicated the refusal. “

  2. I do a lot of incoming Hague designs, and now I’m going to have to file everything by fax???? Has the USPTO acknowledged that this is a problem, or is this just going to be the standard procedure? Filing design drawings by fax is not a viable option, so as mentioned above, the client will be paying for needless extensions until the power of attorney is accepted. Suggesting fax as a remedy to address Patent Center problems just shows that Patent Center is not ready to be the exclusive portal for USPTO business.

  3. I’m not familiar with these filings—can someone please explain why it’s not feasible to fax drawings? Is it a quality issue?

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