In March I wrote about WIPO's DAS system for the electronic exchange of priority documents in patent, trademark and design applications, and wondered why the Israel PTO charges a fee for making one's Israel application available to other countries via DAS – especially when the USA, for example, doesn't charge a fee (and in fact, for patent applications filed using an application data sheet, makes those applications available available in DAS, unless the applicant checks the opt-out box on the ADS).
Today a colleague pointed out that the USPTO now appears to be playing games with DAS retrieval, by changing its form for instructing the USPTO to retrieve a document from DAS.
The form in question is called “SB38”. In the previous version (Sb0038 old), the form had two parts: part A, which let the applicant instruct the PTO to retrieve a priority application via DAS (including an application from a country that only recently joined DAS); and Part B, in which the applicant could instruct the PTO to retrieve from the EPO or JPO a copy of a priority application from a country that doesn't participate in DAS, which copy was already deposited with the EPO or JPO.
In the revised form (Sb0038 new 2023), Part A has been removed. Now the form can only be used to tell the PTO to retrieve a non-DAS country priority document from the EPO or JPO.
Trying to get into the warped minds at the PTO, I suspect that someone reasoned, "Well, if you want to retrieve a priority document via DAS, you can do so in an ADS (originally-filed or "corrected"), so we don't need to provide space in the SB38 for this". Indeed, if one files an ADS that includes a claim for foreign priority, and in addition to the name of the foreign patent office, patent application number and filing date, one includes the relevant confirmation or access code, the USPTO will try to retrieve that foreign priority document. So maybe someone has now decided, “Hey, we don’t need a separate form, we can just tell ‘em to do it on an ADS.”
Alternatively, maybe the USPTO has suddenly adopted a new way of reading 37 CFR 1.55(i)(2) (which has not changed since at least 2015). That section reads,
2) The claim for priority is presented in an application data sheet (§ 1.76(b)(6) ), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and the applicant provides the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application;
The way I understand that section, and the way the USPTO has understood it until now, is that to make a foreign priority claim, the applicant must file and ADS that includes the foreign filing office, the application number, and the filing date, but that the access code for the foreign application may be submitted separately, e.g. in the old SB38. Maybe now someone at the USPTO has decided that this section should be read as saying that the access code must also be submitted in an ADS as well, rather than separately.
God forbid the PTO make applicants' lives easier.
Ironically, both the old form and the new form say they're approved by the OMB for use through 31 May 2024, even though the link on the PTO's "forms" page only leads to the new form.
Anybody else encounter this or have thoughts on it? I do not make frequent use the SB38, and I always file with an ADS, but still, this is annoying.