USPTO seems to have walked back the US-designation-Hague-DAS-certified-copy problem


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It is recalled (see blog post “Captain May I?” in Hague Agreement applications, August 20, 2020 and open letter to the Commissioner for Patents, September 2, 2020) that in about June of 2020 the USPTO came up with the notion that there was a trap for the unwary in the use of DAS as a way to perfect a priority claim in a US designation from a Hague Agreement design application.  The USPTO decided that I had supposedly stepped into this trap twice, representing a design applicant in two 35-series design patent applications.

Now the USPTO seems to have walked it back.  Although the USPTO did not communicate the walk-back as clearly as one might wish, the USPTO seems to have decided that this trap for the unwary never actually existed.  It means I never stepped into the trap, given that it never actually existed.  Okay for those who are just joining us, here is the background. 

The first bit of background is that nobody uses physical certified copies of priority documents nowadays unless they have no other choice.  We all know this.  Everybody uses DAS whenever they can, as the way to transmit an electronic certified copy of a priority document from an Office of First Filing (“OFF”) under Article 4 of the Paris Convention, to an Office of Second Filing (“OSF”) so as to perfect the priority claim in the OSF.  So of course we would assume that every design protection office, including the USPTO, surely must have a goal of doing whatever internal things that office needs to do to facilitate the use of DAS for this purpose. 

The second bit of background is that to use DAS in an OSF, of course common sense tells you that the filer is going to need to provide whatever information is required for the OSF to go to the DAS system to retrieve such an electronic certified copy.  What is that information?  Common sense tells you what that information is — it is the application number, the identity of the OFF, the filing date, and the DAS access code.  Those four pieces of information are both necessary and sufficient for an OSF to successfully retrieve an electronic certified copy.  I’ll call them the “Four Easy Pieces”.

If you are a smart filer, you know how to set up a “trip wire” in DAS so that the moment an OSF either attempts to retrieve, or successfully retrieves, an electronic copy from DAS, you will be the first to know.  You will receive an email from DAS letting you know either way.  (Are you a smart filer?  See if you can pass the DAS quiz.)

The third bit of background is that if you are getting ready to file an international design application (that is, a Hague Agreement application), and if you are making a priority claim, and if your OSF is a Depositing Office in DAS:

  • Then of course you are going to want to use DAS, not the physical delivery of physical certified copies, as your way of transmitting your certified copies to your designated Offices in that Hague application.
  • Then of course you are going to want to communicate the Four Easy Pieces to your designated Offices in a way that will auto-load into the computer systems of of those designated Offices.  

Since February 28, 2018 (see blog article) the smart way to communicate the Four Easy Pieces to the designated Offices has been to provide them in Form DM/1 (or its electronic equivalent) when you file your Hague Agreement design application.

The fourth bit of background is that on September 12, 2018 the USPTO became an Accessing Office in DAS for purposes of Designs (blog article).   

And the fifth bit of background is that whenever somebody says “a 35-series case” they mean a US patent application with a series code of 35, and this means a US designation from a Hague Agreement case.  The first 35-series case to issue as a US design patent was US Design Patent number 754922 (blog article).

So now we turn to the “of course” part.  You would think that of course starting around September 12, 2018 the USPTO must have done whatever procedure changes, or software changes, or rules changes, as would be be required to facilitate the use of DAS for retrieval of electronic certified copies in 35-series cases.  But if you could believe the Office Actions that applicants started receiving in 25-series cases in about June of 2020, apparently the USPTO failed to do all of such needed changes.  The Office Actions said things like this:

3. Examiner’s Comment Regarding Foreign Priority

Receipt is acknowledged of a certified copy of foreign application (CN) 20183029nnnnn.

However, the foreign priority claim has not been perfected because the claim has not been made in an Application Data Sheet (ADS).  37 CFR § 1.55(i)(2) requires, when utilizing priority document exchange, the priority claim be made in an application data sheet.

The claim for foreign priority will not be perfected until applicant submits a corrected ADS (37 CFR § 1.76(c)) with underlining, which includes a priority claim meeting the requirements of 37 CFR § 1.55(i)(2).

In the case of a design application, the claim for priority must be presented during the pendency of the application, unless filed with a petition under 37 CFR § 1.55(e).  If the claim for priority is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. § 255 and 37 CFR § 1.323.

Yes the trap for the unwary identified by the USPTO, and communicated in Office Actions like this, was that if you are a Hague Agreement applicant and if you designate the US, then in addition to communicating the Four Easy Pieces in Form DM/1 when you file your Hague application, you must in addition communicate the Four Easy Pieces a second time to the USPTO during the pendency of your 35-series prosecution at the USPTO.

Yeah.  If you were an applicant in a 35-series case, and if you were relying upon DAS for a certified copy, then you were supposed to read 37 CFR § 1.55 from the top to bottom and you were supposed to figure out that supposedly Rule 55 says that you need to tell the USPTO the Four Easy Pieces a second time, this time in the form of a “corrected ADS”.  

Words fail to suffice to communicate the absurdity of this.  Normally when a filer files a “corrected ADS” pursuant to 37 CFR § 1.76(c), this is, oddly enough, for the purposes of correcting something.  Some piece of information got previously communicated to the USPTO (a mailing address of an inventor, perhaps) and then it becomes necessary to “correct” it, and so we filed a “corrected ADS”.  This “corrected ADS” uses strikethroughs and underscores to make clear what was wrong and needs to be deleted and what the new information is. But according to this Office Action, there is no actual need to “correct” anything.  Instead the only thing that is needed is to tell the USPTO these four pieces of information it the USPTO already knew, but you tell the USPTO these pieces of information a second time, and most importantly you do it on a piece of paper that has the words “application data sheet” written across the top.  

And why exactly is this “corrected ADS” supposedly needed in June of 2020?  Keep in mind that in my very 35-series patent applications the USPTO had received the Four Easy Pieces a year earlier, and the USPTO had already used the Four Easy Pieces to carry out a successful retrieval of the electronic copy of the priority application from DAS.  So my US application already had in the file an electronic copy of the priority document, duly retrieved from DAS by the USPTO using the Four Easy Pieces.  What exactly was the problem?

The problem, and I am not making this up, is that around June of 2020 the USPTO had decided that if you read 37 CFR § 1.55 super closely from the top to the bottom, you will supposedly conclude that the electronic copy in my application file, that had been lying there in IFW for some six months now, supposedly did not count as a “certified” copy.  And that only if I file this “corrected ADS” now in June of 2020 (or between now and when I pay the Issue Fee) will that electronic copy dating from December of 2019 be transformed from a non-certified copy into a certified copy.

The trap for the unwary of course is for the 35-series applicant to fail to file this ADS.  The result is that you could pay an Issue Fee, and your US design patent could be granted, and then it could easily be a “walking corpse” because supposedly the priority claim never got perfected.

Between September of 2018 and now, I estimate that that about five thousand US design patents issued on cases where the applicant fell into this trap for the unwary.  The applicant relied upon DAS, and then failed to file an ADS to communicate the Four Easy Pieces to the USPTO a second time during the 35-series prosecution, and so the electronic copy in IFW was not actually a “certified” copy.  

Oh by the way when my Examiner said that my corrected ADS, the one that I had to file if I wanted my electronic copy to get transformed into a certified copy, said that it had to contain all four of the Four Easy Pieces, she was wrong.  Rule 55 only says the ADS has to contain three of the Four Easy Pieces.  (You can communicate the fourth piece, the DAS access code, any way that you like, and you are not required to use the ADS as your way of communicating it.)  I pushed back on that on August 21, 2020 and on September 9, 2020 the Examiner walked that one back:

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So what remained until a few hours ago was the basic trap-for-the-unwary problem, namely that if you were an applicant in a 35-series case, and if you had relied upon DAS for your certified copy, you somehow needed to catch on that if you fail to file this “corrected ADS” that does not actually correct anything, but does provide three of the Four Easy Pieces to the USPTO that it already knew from your previous DM/1, then your certified copy would not actually count as a certified copy.  And if you paid your Issue Fee without filing that content-free “corrected ADS”, then it meant you had stepped into this trap for the unwary.

All of which was a big problem for me because in my two cases where the Examiner said I had stepped into the trap, my Issue Date is tomorrow, September 10, 2020.  

So what arrived by fax a couple of hours ago is the Corrected Notice of Allowability that I requested back on June 10, 2020.  The first important thing it says is:

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This is the Examiner expressly acknowledging the presentation of the priority claim, and expressly acknowledging receipt of the certified copy of the priority document.  The second important thing it says is:

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I think what the Examiner meant to write is not “set for” but “set forth”.  But more importantly the Examiner seems to be saying “we take it back”.  The Examiner seems to be saying:

Remember when we told you that you needed to file a corrected ADS, and if you failed to do what we say about filing a corrected ADS, then your priority claim would be defective?  Well, we changed our minds.  Now we say you don’t need to file a corrected ADS after all.

What the Examiner wrote is not a model of clarity, nor does the Examiner explain what changed between June 10, 2020 and today to make it so that back then, a corrected ADS was supposedly needed even though today supposedly it is not needed, for the certified copy to be a certified copy.

One can make either of two guesses as to what might have changed between June 10, 2020 and today.  One possibility is that somebody at the USPTO found persuasive the arguments that I presented back on June 10, 2020 when I filed my first request for a corrected Notice of Allowance.  The other is that the Commissioner for Patents signed an order waiving Rule 55 to the limited extent necessary to make the trap for the unwary disappear.  If that is how the problem went away, then I hope further that the Commissioner’s order recited retroactive effect, so as to clear the cloud that had been put over the thousands of issued design patents with similar fact patterns.

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