United States Patent and Trademark Office OG Notices: 04 Sep 2007
Electronic Transfer of Priority Documents to the International Bureau On 31 August 2007, the United States Patent and Trademark Office (USPTO) will deploy an update to the USPTO electronic system that supports administrative processing of international applications. The update will include an enhancement that will enable the USPTO to electronically transfer certified copies of US priority applications to the International Bureau (IB) of the World Intellectual Property Organization. Accordingly, as of 31 August 2007, the USPTO will begin electronically transferring certified copies of US priority applications to the IB for PCT applications filed in the US Receiving Office (RO/US) where the applicant has made a request in accordance with PCT Rule 17.1(b) and 37 CFR 1.451(b). This electronic transfer of US priority documents to the IB will be highly automated. As such, the USPTO will not require a fee for the electronic transfer of certified copies of US priority documents to the IB for PCT international applications filed with the RO/US on or after 31 August 2007. Accordingly, the fee set out in 37 CFR 1.19(b)(1)(iii)(A), for electronically providing a copy of a patent application as filed, is hereby waived, for certified copies of US priority applications electronically transmitted to the IB in accordance with PCT Rule 17.1(b) and 37 CFR 1.451(b) for PCT international applications filed with the RO/US on or after 31 August 2007. Thus, if an applicant files an international application with the RO/US on or after 31 August 2007, and checks the box on the Request (Form PCT/RO/101) requesting the RO/US to transmit a certified copy of a US priority application to the IB, the USPTO will electronically transmit the copy of the US priority application to the IB. Further, there will be no fee for this electronic transmission of the US priority application to the IB. The $20 fee under 37 CFR 1.19(b)(1) will continue to be required for the transmittal of a US priority document to the IB in accordance with PCT Rule 17.1(b) and 37 CFR 1.451(b) for international applications filed with the RO/US prior to 31 August 2007. Please note that the USPTO will not transmit a copy of a US priority application until the priority application receives both a filing date and a foreign filing license. Applicants will continue to receive acknowledgement of receipt of priority documents from the IB via Form PCT IB/304. 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 OR US Patent and Trademark Office Office 571-272-3377 571-272-3291 PDX@uspto.gov PDX@uspto.gov August 13, 2007 JOHN J. LOVE Deputy Commissioner for Patent Examination Policy United States Patent and Trademark Office