| Benefit Claims, Priority, Electronic Exchange of Documents |
Referenced Items (138, 139, 140, 141, 142, 143, 144, 145, 146, 147, 148, 149, 150) |
(139) Addition of World Intellectual Property Office as
Participating Foreign Intellectual Property Office in
Electronic Exchange of Priority Documents
In January 2007, the United States Patent and Trademark Office (USPTO)
implemented a procedure for direct electronic priority document exchange
with participating foreign intellectual property offices. 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). The USPTO established agreements to obtain and provide
priority documents with the European Patent Office (EPO) as of January 16,
2007, with the Japan Patent Office (JPO) as of July 28, 2007, and with the
Korean Intellectual Property Office (KIPO) as of October 14, 2008.
Through the electronic priority document exchange (PDX) system, the
USPTO attempts to electronically retrieve a copy of any EPO, JPO, or KIPO
priority document to which priority is claimed in a U.S. application filed
under 35 U.S.C. 111(a). See Simplification of the Electronic Exchange of
Priority Documents, 1319 Off. Gaz. Pat. Office 150 (June 26, 2007), Addition
of Japan Patent Office as Participating Foreign Intellectual Property Office
in Electronic Exchange of Priority Documents, 1320 Off. Gaz. Pat. Office 173
(July 31, 2007), and Addition of Korean Intellectual Property Office as
Participating Foreign Intellectual Property Office in Electronic Exchange of
Priority Documents and Further Procedural Information, 1336 Off. Gaz. Pat.
Office 94 (Nov. 11, 2008). In these situations, the requirement for the
certified copy of the foreign application is considered satisfied if the
requirements of 37 CFR 1.55(d)(1)(ii) and (iii) are met.
Effective as of April 20, 2009, the World Intellectual Property Office
(WIPO) has become the fourth foreign intellectual property office to
participate in the PDX system. See 37 CFR 1.14(h) and 1.55(d). The USPTO now
has the ability to begin electronically retrieving priority documents from
the WIPO through the Digital Access Service (DAS) for Priority Documents.
Similarly, the WIPO also has the ability to electronically retrieve U.S.
priority documents from the USPTO through the DAS. Offices participating in
the DAS may deposit priority documents as an office of first filing and/or
may access priority documents as an office of second filing. The WIPO will
maintain a list of offices on the WIPO Web site at
http://www.wipo.int/patentscope/en/pdocforum/participating.html.
Additional information regarding the DAS can be found on the WIPO Web
site at http://www.wipo.int/patentscope/en/pdocforum/index.html.
Additional guidance and procedures regarding electronic priority document
exchange can be found on the USPTO Web site at
http://www.uspto.gov/web/patents/pdx/pdx.html.
For further information please contact one of the individuals identified
below:
Don Levin OR Tamara Graysay OR Mark Polutta
TDA Project Manager Special Program Examiner Senior Legal Advisor
United States Patent United States Patent United States Patent
and Trademark Office and Trademark Office and Trademark Office
571-272-3785 571-272-6728 571-272-7709
PDX@uspto.gov PDX@uspto.gov PDX@uspto.gov
June 1, 2009 JOHN J. DOLL
Acting Under Secretary of Commerce for
Intellectual Property and Acting Director of the
United States Patent and Trademark Office
[1343 OG 347]
Top of Notices (139) December 29, 2009