typo in priority claim

[mbison]

I recently took over a case from another US firm with a typo in the priority claim in the ADS.  The pending application is a continuation of a US application, which was a 371 of a PCT.  The previous US firm fixed several errors in the priority claim over the course of multiple communications with the PTO, but unfortunately they never fixed the PCT number, which is off by one digit.  They did finally get a filing receipt which appears to accept the priority claim as US CON -> US parent -> PCT X.  But PCT X has a typo and should be PCT Y.  PCT Y was properly listed in the now issued US parent case. 

We are past four months from filing.  My question is whether I can submit an amended ADS which corrects X to Y without filing a petition and paying a large petition fee.  I would argue that we claimed priority the correct US parent case, which could only ever be a national phase of PCT Y.  The ADS submitted in this case could not change the priority PCT of the US parent.

Thoughts?

[Wolfcastle]

Was the typo also in the first sentence of the patent?

[mersenne]

We are past four months from filing.

This is a big revenue center for the USPTO -- it's outrageously expensive to fix.  And they could fix it themselves, simply by pre-populating the fields of the ADS backwards & forwards from a single priority claim that you enter.  And they could do before you click "submit."

If you want some other priority claim, you can enter it, and then all fuckups are on you.  But the way the PTO actually does it, encourages errors, then magnifies them if possible, leading to the large-fee endgame.

Don't even get me started on the fact that multiple different date formats are used, sometimes even on the same form.

[mbison]

Was the typo also in the first sentence of the patent?

For some reason, unlike the parent case, no priority information was included in the specification.

[mbison]

We are past four months from filing.

This is a big revenue center for the USPTO -- it's outrageously expensive to fix.  And they could fix it themselves, simply by pre-populating the fields of the ADS backwards & forwards from a single priority claim that you enter.  And they could do before you click "submit."

If you want some other priority claim, you can enter it, and then all fuckups are on you.  But the way the PTO actually does it, encourages errors, then magnifies them if possible, leading to the large-fee endgame.

Don't even get me started on the fact that multiple different date formats are used, sometimes even on the same form.

Sounds like you are saying the only recourse is to pay the fee?

[mbison]

As a follow-up, I re-reviewed the file and noticed that a correct priority claim was amended into the first page of the specification on the day of filing.  This application was filed in 2017 but claims priority back to 2010 and was prosecuted under pre-AIA provisions.  Does this help us at all in terms of fixing the priority claim in the ADS without needing a petition and fee?

[mbison]

I also learned that "in U.S. national stage applications it is permissible, but not required, to present the claim for priority in an application data sheet."

Given that, in a CON of a U.S. national stage application, is it required to present the claim for priority in the ADS all the way back to the PCT?

[MYK]

I also learned that "in U.S. national stage applications it is permissible, but not required, to present the claim for priority in an application data sheet."

Given that, in a CON of a U.S. national stage application, is it required to present the claim for priority in the ADS all the way back to the PCT?

Edit: I looked up the phrase you used, and you're right, that's in MPEP 1893.  I don't know which is correct, or if PCT differs from ordinary filings in that regard.  I'd strongly suggest putting it in both.

Original reply:
That's no longer correct.  Since the AIA passed in 2012, the priority claim is required to be put in the ADS.  Putting it in the application no longer counts according to the statute and regs, but IIRC caselaw says it has to be there too because some random judges said "we like the old way".  (I could be mistaken regarding the existence of caselaw.  I still think it's good practice and gives much better notice than something buried in filing paperwork.)

https://www.uspto.gov/web/offices/pac/mpep/s210.html

The inventor's oath or declaration provisions of Public Law 112-29, sec. 4, 125 Stat. 284 (the Leahy-Smith America Invents Act) and the rules related thereto became effective September 16, 2012. In implementing these provisions the Office revised 37 CFR 1.78 to require that a benefit claim under 35 U.S.C. 119(e), 120, 121, or 365(c) must be in the application data sheet (37 CFR 1.76). Thus for all applications filed on or after September 16, 2012, the specific reference to the prior application must be in the application data sheet; for applications filed prior to September 16, 2012, the specific reference to the prior application must be in an application data sheet or in the first sentence(s) of the specification.

[mbison]

Edit: I looked up the phrase you used, and you're right, that's in MPEP 1893.  I don't know which is correct, or if PCT differs from ordinary filings in that regard.  I'd strongly suggest putting it in both.

I gather that you don't need a priority claim in the ADS for a national stage entry because they pull the PCT information directly.  In the parent case of my case, they also got the PCT number wrong in the ADS, but nobody flagged it and the PCT number was correct in the filing receipt. 

I doubt that helps me here, but perhaps we try a request for corrected filing receipt by itself anyways.  I would take the position that the correctly identified parent case was only ever a national phase entry of a single PCT.  So, we got information about the parent case wrong as opposed to getting the priority claim wrong.