USPTO won’t fix the missing “corrective ADS” features in Patentcenter

It is recalled that one of USPTO’s stated goals for Patentcenter is that before it shuts down EFS-Web (scheduled to occur on November 8, 2023), the USPTO will bring forward all of the functions and features of EFS-Web into Patentcenter.  It is also a matter of common sense that each function and feature in Patentcenter that works for one application type needs to be implemented for all other relevant application types.   This blog article reports that the USPTO is now doubling down on a baffling refusal to implement the “Corrected Application Data Sheet” function for 371 applications.   USPTO’s position is, apparently, that so long as the USPTO documents the defect, then this relieves the USPTO of any need to actually correct the defect. Disappointingly, the USPTO extends this refusal to Hague and provisional applications as well.

In any patent application, in any patent office, the need arises from time to time to update bibliographic information.  In PCT applications, such updates are quite easy.  It is a matter of a few mouse clicks in the ePCT system and the update (called a “92bis change request”) auto-loads into the PCT database.

For many years now, practitioners have been urging the USPTO to emulate the ePCT approach, but these urgings have fallen on deaf ears.  The USPTO’s way of receiving a filer’s request to update bibliographic information is the “Corrected Application Data Sheet”.

The legacy path for a Corrected ADS is that the filer marks up a PDF of a previous ADS with strikethroughs and underscores to indicate the nature of the requested update.   The marked-up PDF ADS then gets uploaded to IFW, where any computer-readable characters get discarded and the PDF is flattened to a pure image-based format.  This profoundly wrongheaded path harms the USPTO in many ways, including:

• • The USPTO person is required to go on a “treasure hunt” from the top to the bottom of every page of a six- or seven-page ADS, hoping to spy each of the strikethroughs and underscores, each of which might only be changing as few as one or two characters.  This is costly to the USPTO in terms of the valuable time of the USPTO employee.  And it is perfectly understandable that the USPTO person, despite diligent searching, might overlook one or another of the strikethroughs or underscores.
  • At such time as the USPTO person spies a strikethrough or underscore, the USPTO person has no choice but to hand-key the change or changes into the relevant USPTO system.  This is costly to the USPTO in terms of the valuable time of the USPTO employee.  And it is perfectly understandable that the USPTO person, despite care, might inadvertently mistype the change.

Which brings us to an important feature that was implemented in EFS-Web about five years ago, the “web-based Corrected ADS” function.  The idea of the web-based Corrected ADS” function is that the filer uses mouse clicks to select the particular field or fields of the ADS that need changing, and enters the change into a computer-readable text field in the web-based screen.

The alert reader will realize exactly where I am going with this.  With the web-based Corrected ADS, there is no “treasure hunt”.  The USPTO person sees a screen that is uncluttered by the six or seven pages of fields that do not need to change.  Instead, the only thing on the screen is the field that needs to change.  This saves a lot of valuable time for the USPTO person.

Not only that, but the characters of the update are computer-readable.  When the filer clicks “submit” on the web-based Corrected ADS, the characters are still available to be auto-loaded into the relevant USPTO systems.  With proper handling of the characters within the USPTO, there would be no need for USPTO personnel to hand-key the updated bibliographic information.

So it is a matter of common sense that in Patentcenter, the USPTO ought to implement the web-based Corrected ADS function for every relevant application type.

Some readers may be aware that the many failings of Patentcenter prompted the establishment, several years ago, of a listserv (email discussion group) for users of Patentcenter (click here for more information or to join the listserv).  This listserv has by now grown to a community of more than four hundred users.  The listserv members share their findings about defects in Patentcenter and possible workarounds for some of the defects.  The listserv members have by now compiled a list of dozens of Patentcenter trouble tickets and a list of dozens of feature requests for Patentcenter.  (Regrettably, the USPTO has not implemented even a single one of the requested features from the feature request list.)

Which brings us to the following three Patentcenter trouble tickets:

• • CP98.  Patentcenter refuses to permit the use of its web-based Corrected ADS function for provisional patent applications (reported February 18, 2023).
  • CP101.  Patentcenter refuses to permit the use of its web-based Corrected ADS function for 35-series cases (US designation from a Hague application) (reported March 5, 2023).
  • CP102.  Patentcenter refuses to permit the use of its web-based Corrected ADS function for 371 cases (US national-phase entry from a PCT application) (reported March 5, 2023).

On September 19, 2023 the USPTO conducted one of its “training events” relating to Patentcenter.  During the event, an attendee observed that Patentcenter was refusing to permit use of the web-based corrected ADS function for 371 (US national-phase PCT entry) applications, and asked when the USPTO would fix this problem in Patentcenter.  One might have expected an answer from the USPTO along the lines of “it will get fixed real soon now”.  Instead, the USPTO takes the position that it will never fix this defect that is trouble ticket CP102.  The USPTO doubles down on this wrongheaded response, stating that it will document its refusal to fix the defect by adding some language to “the quick start guide” stating that the defect will never get fixed.  The doubling-down got expanded to Hague (35-series) applications (trouble ticket CP101) and provisional patent applications (trouble ticket CP98) as well.

You can hear the presenter’s own voice (MP3 file) here:

Here is a transcript:

Question:  In Patentcenter the web-based Corrected Application Data Sheet does not work for 371 applications, correct?

USPTO answer:  The answer to that is, the Corrected Application Data Sheet is not permitted in PCT, 371, Hague, provisional, reexam, plant and supplemental examination submissions.  So we will put a link to this information that was outlined on page 3 of the Corrected ADS Quick Start Guide.

So it’s not that the Corrected ADS does not work for the 371s, it’s not permitted for the 371s.  So again, all that is listed in the Corrected Web ADS Quick Start Guide and we will provide a link to that.

The USPTO’s view, apparently, is that so long as the USPTO documents a defect, this relieves the USPTO of any need to actually correct the defect.

The USPTO presenter seems to suggest that the hands of the Patentcenter developers were somehow tied, because in some unspecified way the provision of the web-based Corrected ADS function is somehow “not permitted”.   There is, however, no statute or rule or other authority for this suggestion.  The USPTO presenter was just making this up.

The wrongheadedness of the USPTO on this point seems to know no bounds.  The correction of trouble tickets CP98, CP101 and CP102 would be to the USPTO’s own advantage, as it would save time and trouble for the USPTO’s own personnel, and would improve data accuracy in bibliographic data updates.  It would also benefit filers.  It is as if the USPTO wishes to go out of its way to refuse to act upon a trouble ticket if the origin of the trouble ticket is the Patentcenter listserv.