| Benefit Claims, Priority, Electronic Exchange of Documents |
Referenced Items (208, 209, 210, 211, 212, 213, 214, 215, 216, 217, 218, 219, 220, 221, 222, 223) |
(218) Complete Transition to WIPO DAS for the Electronic Exchange of Priority
Documents Between the United States Patent and Trademark Office and
the Japan Patent Office
Based on the success in retrieving Japanese (JP) priority documents via
the World Intellectual Property Organization (WIPO) Digital Access Service
(DAS), on March 1, 2020, the United States Patent and Trademark Office
(USPTO) and Japan Patent Office (JPO) discontinued direct bilateral
exchange of priority documents. Direct bilateral exchange was the mechanism
used to electronically retrieve JP priority national patent applications
and JP priority national utility model applications in applications filed
with the USPTO between July 27, 2007 and October 1, 2017.
On October 1, 2017, the USPTO began using WIPO DAS to retrieve JP
priority applications in applications filed with the USPTO on or after
October 1, 2017. See Change in the Electronic Retrieval Method for
Priority Documents Between the United States Patent and Trademark Office
and the Japan Patent Office, 1442 OG 231 (September 26, 2017). WIPO DAS
provides several benefits to users, including: added security to ensure
proper priority document retrieval, availability certificates to confirm
that the priority document is available in WIPO DAS, and the ability to
view and manage notifications relating to retrieval attempts by accessing
offices. Use of WIPO DAS by the USPTO to retrieve a priority document
requires that the applicant provide to the USPTO the WIPO DAS access code
associated with the priority application, in addition to the priority claim
(including the country, application number, and filing date).
The USPTO has been actively working with the JPO to retrieve each JP
priority application in U.S. applications that relied on direct bilateral
exchange with the JPO. If an electronic copy of a JP application was not
retrieved before termination of the direct bilateral exchange program with
the JPO, an applicant can satisfy the certified copy requirement for the
priority application in one of two ways: (1) the applicant can file the
paper certified copy while the U.S. application is pending, or (2) the
applicant can provide the WIPO DAS access code for the JP priority
application if it is registered with WIPO DAS and ensure that the JP
priority application is electronically retrieved while the U.S. application
is pending.
Applicants are reminded that they continue to bear responsibility for
ensuring that the priority document is filed during the pendency of the
application and before the patent is issued. Manual of Patent Examining
Procedure § 215.02(a) (Ninth Edition, Revision 08.2017, last revised
January 2018).
This notice does not affect retrieval, via WIPO DAS, of JP priority
applications where the applicant has furnished the USPTO with the WIPO DAS
access code. For information concerning the application types deposited
with WIPO DAS by the JPO and other participating offices, please visit the
WIPO DAS website at https://www.wipo.int/das/en/participating_offices/.
[1474 OG 125]
Top of Notices (218) December 28, 2021