United States Patent and Trademark Office OG Notices: 26 June 2007
Simplification of the Electronic
Exchange of Priority Documents
Effective immediately, the United States Patent and Trademark
Office (USPTO) is simplifying the procedure for the direct electronic
priority document exchange with the European Patent Office (EPO) that
was implemented in January 2007. See Changes to Implement
Priority Document Exchange Between Intellectual Property Offices,
72 FR 1664 (January 16, 2007), 1315 Off. Gaz. Pat. Office
63 (Feb. 13, 2007) (final rule) (hereinafter "Priority Document
Exchange Final Rule").
The Priority Document Exchange (PDX) Final Rule sets forth a
procedure whereby an applicant may request that the USPTO retrieve a
copy of a foreign priority application when the priority application is
available from a foreign intellectual property office participating
with the USPTO in a priority document exchange agreement (participating
foreign intellectual property office) in accordance with 37 CFR
1.55(d). This procedure requires the applicant to file a request (in a
separate document) that the USPTO retrieve a copy of the foreign
priority application from a participating foreign intellectual property
office. See Form PTO/SB/38. If the foreign priority application was
originally filed in a participating foreign intellectual property
office (currently the EPO is the only such office), the applicant is
required to identify the participating office, the foreign priority
application number, and the filing date of the foreign priority
application. However, if the applicant wishes the USPTO to retrieve a
copy of an application that was originally filed at a non-participating
office, in accordance with 37 CFR 1.55(d)(2), the applicant must also
provide the application number and filing date of the corresponding
participating foreign intellectual property office application in which
the non-participating office priority document is located.
As a result of discussions with EPO and the Japan Patent Office
(JPO), a soon-to-be participating foreign intellectual property office,
this procedure will be simplified as follows: if a US application filed
under 35 U.S.C. 111(a) claims priority to an earlier foreign
application that was filed directly with a participating foreign
intellectual property office (e.g., the EPO) and identifies the foreign
application in compliance with 37 CFR 1.55(d)(1)(ii), the USPTO will
automatically attempt to electronically retrieve a copy of that foreign
(e.g., EPO) priority document without the need for the applicant to
file a request to retrieve in a separate document (e.g., form
PTO/SB/38). In this situation, the requirement under 37 CFR
1.55(d)(1)(i) that the applicant file a request to retrieve, in a
separate document, is hereby waived and the requirement for the
certified copy of the foreign application will be considered satisfied
if the requirements of 37 CFR 1.55(d)(1)(ii) and (iii) are met.
Thus, if an applicant files a US application under 35 U.S.C.
111(a) claiming priority to a prior-filed EPO application that is
identified in the oath or declaration under 37 CFR 1.63 or in an
application data sheet under 37 CFR 1.76, the USPTO will automatically
attempt to electronically retrieve a copy of that EPO application
through the PDX. If the copy of the EPO application is then received by
the USPTO within the period set forth in 37 CFR 1.55(a) (e.g., prior to
the payment of the issue fee), the requirement under 37 CFR 1.55 for a
certified copy of the foreign priority application will be considered
satisfied.
On the other hand, if an applicant files a US application under
35 U.S.C. 111(a) claiming priority to an application previously filed
with a non-participating office (e.g., a French national application
filed with the French office) and the applicant desires the USPTO to
electronically obtain that priority document from a corresponding EPO
application file, the applicant is still required to file a request to
retrieve, in a seperate document, pursuant to 37 CFR 1.55(d)(1)(i),
identifying both the EPO application file number and the file number of
the French priority application. Such identification is required
because there currently is no cross reference from the EPO file number
to the prior non-participating office application file number (in this
example, the prior filed French application).
The USPTO will not automatically attempt to retrieve copies of
priority applications in US national stage applications under 35 U.S.C.
371 since the USPTO already, in most cases, receives copies of such
priority applications from the International Bureau in accordance with
PCT Rule 17.2.
The EPO is currently the only foreign intellectual property
office participating in the electronic PDX program. Accordingly, the
only foreign priority applications that the USPTO will automatically
attempt to retrieve at this time will be EPO priority applications.
However, it is expected that this service will be expanded later in
2007 to include electronic exchange of priority documents between the
USPTO and the JPO. At that point, the JPO will become the second
participating foreign intellectual property office, and then the USPTO
will also automatically attempt to retrieve electronic copies of JPO
applications to which priority is claimed in US applications filed
under 35 U.S.C. 111(a) on or after that date. More detailed procedures
concerning electronic priority document exchange between the USPTO and
the JPO will be published in due course.
Form PTO/SB/38 entitled "Request to Retrieve Electronic
Priority Application(s)" for making a request in accordance with 37
CFR 1.55(d)(1)(i) is available from the USPTO website at
http://www.uspto.gov/web/forms/sb0038.pdf. Note, however, that the
USPTO will not attempt to retrieve an identified priority application
until the applicant identifies the indicated priority application in an
oath or declaration or an application data sheet in compliance with 37
CFR 1.63(c).
Retrieval may not be effected until several months after the
filing of qualifying new US applications or submission of an
appropriate request to retrieve (e.g., form PTO/SB/38).
The EPO and USPTO are currently developing an enhancement to
the PDX system that will simplify the process for retrieving copies of
non-participating office foreign priority documents under 37 CFR
1.55(d)(2). The enhancement will enable the USPTO to retrieve any
priority document originally filed in a European Patent Convention
(EPC) member state that is contained in the dossier of an EPO patent
application without the need to identify the EPO application number
specifically. This enhancement is expected to be implemented in mid
2008. Accordingly, it is expected that as of mid 2008 the USPTO will no
longer require a request to retrieve in a separate document (e.g., form
PTO/SB/38) from the applicant before attempting to electronically
retrieve priority documents originally filed in EPC member states.
Applicants are advised that until such time as the USPTO can
update the PDX system that is currently in place, for each US
application in which the USPTO successfully retrieves a foreign
priority document through the PDX system, the filing receipt for that
application will include the following text regardless of whether or
not the applicant actually filed a request to retrieve (e.g., form
PTO/SB/38):
A proper Request to Retrieve Electronic Priority Application(s) has been
received by the USPTO.
The USPTO is working to revise the PDX system to provide more
accurate language on the filing receipts but this may take several
months to accomplish.
Applicants continue to bear the ultimate responsibility for
ensuring that the priority document is filed by the time of patent
grant as required under 37 CFR 1.55(a). Accordingly, applicants are
encouraged to check Private PAIR as necessary to confirm receipt of
appropriate documents. Priority documents retrieved from the EPO will
bear the IFW document title of "Priority documents electronically
retrieved by USPTO from a participating IP Office."
In similar fashion, if an EPO application claims foreign
priority to a US application, the EPO will automatically attempt to
retrieve an electronic copy of the US application. However, the USPTO
will release copies of US applications-as-filed to the EPO only if the
US priority application has received a national security clearance and:
(1) the applicant of the US application provided an appropriate written
authority to permit access to application by participating offices
(e.g., form PTO/SB/39) under 37 CFR 1.14(h) and 35 U.S.C. 122 (if the
US application has not yet been published); or (2) the US application
has been published or patented. Written authority under 37 CFR 1.14(h)
and 35 U.S.C. 122 may be provided by filing a properly signed
"Authorization to Permit Access to Application by Participating
Offices" (Form PTO/SB/39) in a US application. Form PTO/SB/39 is
available from the USPTO website at
http://www.uspto.gov/web/forms/sb0039.pdf
Applicants are advised that EPO regulations require a copy of a
priority document to be filed with the corresponding EPO application no
later than 16 months from the priority date. See EPC Rule 38(3).
Because applications are ordinarily published by the USPTO at 18 months
from filing, most US applications that are the basis for a foreign
priority claim in an EPO application will be unpublished at the time
the applicant is required to provide a copy of the US application to
the EPO. This means that in most cases it will be necessary to provide
the USPTO with appropriate written authorization (under 35 U.S.C. 122
and 37 CFR 1.14(h)) for the EPO to access the US application and obtain
a copy, e.g., by submitting a properly signed Form PTO/SB/39. To date,
however, the USPTO has received very few such written authorizations.
As a result, the USPTO is unable to fulfill the vast majority of
requests for US priority documents received by the USPTO from the EPO.
Applicants are strongly encouraged to file written authority in
accordance with 37 CFR 1.14(h) and 35 U.S.C. 122 for applications in
which there is any chance that they will file a subsequent counterpart
EPO or JPO application so that those participating foreign intellectual
property offices may timely and successfully retrieve the US priority
document at no charge to the applicant.
There continues to be no fee for this service.
For further information please contact one of the individuals
identified below:
Debbie Kyle Diana Oleksa
TDA Project Manager Legal Advisor for IT Policy
US Patent and Trademark Office OR US Patent and Trademark
Office
571-272-3785 571-272-3291
PDX@uspto.gov PDX@uspto.gov
June 4, 2007 John J. Love
Deputy Commissioner for
Patent Examination Policy
United States Patent and Trademark Office