By Joshua Goldberg, Co-Managing Partner
Throughout the past year, we have occasionally seen certain processing delays from the
USPTO for various submissions. For the most part, these processing delays are nothing more
than a minor annoyance. However, at times these processing delays can present a real barrier
to progress. How should an Applicant work to resolve such an issue?
Take, for example, the filing of a Patent Cooperation Treaty (PCT) application at the USPTO,
specifically at the U.S. Receiving Office (USRO), to aid in international filings of your patent
application. Upon electronically filing a PCT application at the USRO, an Applicant either
immediately or within hours should receive an electronic acknowledgment receipt including the
application serial number and filing date. This is important, as it allows the PCT application to be
further processed and gives the Applicant sufficient information to track the application’s
progress. However, certain further activities for the application can be limited until the USPTO
issues the Official Filing Receipt for the application.
Most of the time, this is not an issue, as the PCT Official Filing Receipt is usually Issued in 2–6
weeks, after the USPTO reviews the application details, formally assigns the international
application number/filing date, and processes basic formalities. Unfortunately, we are now at
times seeing delays in this process, with no Official Filing Receipt being issued even months
after filing a PCT application at the USPTO.
The question is, does this matter if you already know the serial number and filing date?
The answer? Maybe!
In one scenario, without the Official Filing Receipt, the Applicant cannot order a certified copy of
the application or priority document because an official filing date and serial number have not
yet been formalized. If the intent is to delay national phase filings as long as possible, this likely
does not matter. However, should there be any interest in accelerating national filings, or in filing
corresponding applications in non-PCT countries, this is a big deal.
This happened to us in a PCT application we filed recently. Months after we filed the application,
our client asked us to order certified copies of the application to assist in foreign filings. One
problem – we had not yet received the Official Filing Receipt.
In contacting the USPTO Electronic Business Center (EBC), we were informed the USPTO has
been experiencing delays in processing these Official Filing Receipts, which are allegedly now
taking one year or longer to issue. Imagine our surprise!
Thankfully, we were able to convey the urgency of the situation to get the Official Filing Receipt
processed, permitting us to proceed with our further activities.
In this situation, the delay mattered.
Should something similar happen to you, I would strongly encourage you to contact either the
EBC or the Ombudsman at the USPTO to break through the delay. Should these delays
happen, there is at least a remedy, as both the EBC and the Ombudsman have been very
helpful on numerous occasions. So, don’t panic!
Stay tuned for the next surprise USPTO update!
