| Benefit Claims, Priority, Electronic Exchange of Documents |
Referenced Items (166, 167, 168, 169, 170, 171, 172, 173, 174, 175, 176, 177, 178, 179, 180) |
(171) Enhancement of Priority Document Exchange
Program and USPTO Declaration Form
Background
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 1664-2 (January 16, 2007), 1315-2 Off. Gaz. Pat. Office (Feb. 13,
2007) (final rule) (hereinafter "Priority Document Exchange Final Rule").
The USPTO established agreements to obtain and provide priority documents
with the European Patent Office (EPO) as of January 16, 2007. Further, on
July 28, 2007, the Japan Patent Office (JPO) became the second foreign
intellectual property office participating with the USPTO in a priority
document exchange (PDX) agreement (participating foreign intellectual
property office). See 37 CFR 1.14(h) and 1.55(d).
In accordance with the established PDX procedure, if an EPO or JPO
application claims foreign priority to a US provisional or nonprovisional
application, the EPO or JPO 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 or JPO only if the US
priority application has received a foreign filing license in accordance
with 37 CFR 5.11 and: (1) the applicant of the US application provided an
appropriate written authority to permit access to the application by
participating offices under 37 CFR 1.14 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. In accordance with established PDX procedure,
written authority under 37 CFR 1.14 and 35 U.S.C. 122 is typically
provided by the applicant filing a properly signed "Authorization to Permit
Access to Application by Participating Offices" (e.g., Form PTO/SB/39) in a
US provisional or nonprovisional application. Form PTO/SB/39 is available
from the USPTO website at http://www.uspto.gov/web/forms/sb0039.pdf
Enhancement of PDX
The patent community has requested that the USPTO investigate ways in
which this procedure of providing written authority to participating
offices might be streamlined and simplified. In response to this request,
the "Declaration for Utility or Design Patent Application" (Form PTO/SB/01)
has been modified to include a check box enabling the applicant to include
an Authorization to Permit Access to Application by Participating Offices
granting the USPTO written authority to provide any intellectual property
office in which a foreign application, claiming priority to the US
application for which the declaration is made, is filed access to the US
application. See 37 CFR 1.14(c) and (h).
In addition, the USPTO has come to understand that the date of filing
the Authorization to Permit Access to Application by Participating Offices
is sometimes of critical legal significance at the JPO. Accordingly, in
order to further streamline the PDX procedure, the PTO/SB/39 (as well as
the PTO/SB/01) has been modified to indicate that, in accordance with 37
CFR 1.14(c), access may be provided to information concerning the date of
filing the Authorization to Permit Access to Application by Participating
Offices.
Accordingly, upon filing an Authorization to Permit Access to
Application by Participating Office which could be on a separate paper
(e.g., PTO/SB/39) or a proper executed oath or declaration (e.g., the
modified Form PTO/SB/01) that includes an Authorization to Permit Access to
Application by Participating Offices, any foreign intellectual property
office participating with the USPTO in a bilateral or multilateral
priority document exchange agreement (participating foreign intellectual
property office) will be provided with access to: 1) the identified US
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application for which the declaration is made, 2) any foreign application
to which the identified US application claims priority under 35 USC
119(a)-(d) if a copy of the foreign application that satisfies the
certified copy requirement of 37 CFR 1.55 has been filed in the identified
US application, 3) any US application from which benefit is sought in the
identified US application and 4) information concerning the date of filing
the Authorization to Permit Access to Application by Participating Offices.
This will allow the USPTO to provide both the EPO and the JPO with copies
of the identified US application to which priority is claimed in EPO and
JPO patent applications (as well as information as to the date of filing
the Authorization to Permit Access to Application by Participating Offices)
at no charge to the applicant. This will also enable the USPTO to provide
such information and copies of the identified US priority application to
any new participating intellectual property offices. However, the EPO and
the JPO are currently the only participating intellectual property offices.
Accordingly, at this time, the USPTO will only provide such information and
copies of US priority applications to the EPO and/or JPO.
The requirement under 37 CFR 1.14(h)(2) that the written authority must
be submitted on a separate document is hereby waived in the event the
applicant files a properly executed oath or declaration (e.g., the modified
Form PTO/SB/01) with the Authorization to Permit Access to Application by
Participating Offices.
The modified form PTO/SB/39 will continue to be available for applicants
who wish to file their Authorization to Permit Access to Application by
Participating Offices separate from their declaration.
Applicants are advised that JPO (and EPO) regulations require a copy of
a priority document to be filed with the corresponding JPO (or EPO)
application no later than 16 months from the priority date. Because US
applications are ordinarily published by the USPTO after the time period of
18 months from filing, most US applications that are the basis for a
foreign priority claim in a JPO or EPO application will not be published
at the time the applicant is required to provide a copy of the US
application to the JPO or EPO. This means that in most cases it will be
necessary to provide the USPTO with an Authorization to Permit Access to
Application by Participating Offices (e.g., by submitting a properly
executed modified Form PTO/SB/01 or a Form PTO/SB/39) prior to 16 months
from the priority date in order for the JPO or EPO to timely access the US
application and obtain a copy. Applicants are encouraged to file an
Authorization to Permit Access to Application by Participating Offices for
US applications in which there is any chance that they will file a
subsequent counterpart JPO or EPO application so that those participating
foreign intellectual property offices may timely and successfully retrieve
the US priority document at no charge to the applicant.
Applicants are however also advised that if the applicant files an
Authorization to Permit Access to Application by Participating Offices,
there is no procedure in place that would enable the applicant to promptly
revoke the authorization so as to prevent access by a participating office.
Accordingly, if an applicant does not wish a participating office to have
access to the applicant's application, the applicant should not file the
Authorization to Permit Access to Application by Participating Offices.
Instead the applicant should use the traditional procedure of obtaining and
directly providing a certified copy of the US priority application to any
participating office in which the applicant files a patent application
claiming priority to the prior filed US application.
There continues to be no fee for this service.
Additional Enhancement of USPTO Declaration Form
The "WARNING" statement on the PTO/SB/01 declaration form has also been
enhanced. The "WARNING" statement now includes text explaining that
documents which form the record of a patent application (such as the
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PTO/SB/01) are placed into the Privacy Act system of records DEPARTMENT OF
COMMERCE, COMMERCE-PAT-7, System name: Patent Application Files. The
"WARNING" statement now also explains that documents that are not retained
in an application file (such as the PTO-2038 Credit Card Payment Form) are
placed into the Privacy Act system of COMMERCE/PAT-TM-10, System name:
Deposit Accounts and Electronic Funds Transfer Profiles.
For further information please contact one of the individuals identified
below:
Don Levin 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
February 13, 2008 JOHN J. LOVE
Deputy Commissioner for
Patent Examination Policy
United States Patent and Trademark Office
[1328 OG 90]