| Benefit Claims, Priority, Electronic Exchange of Documents |
Referenced Items (213, 214, 215, 216, 217, 218, 219, 220, 221, 222, 223, 224, 225, 226, 227, 228, 229, 230) |
(213)Change in the Electronic Retrieval Method for Priority Documents
Between the United States Patent and Trademark Office and the
European Patent Office
Effective January 1, 2022, electronic retrieval of priority documents
between the United States Patent and Trademark Office (USPTO) and the
European Patent Office (EPO) will be managed via the World Intellectual
Property Organization (WIPO) Digital Access Service (DAS), in accordance
with the WIPO DAS agreement established on April 20, 2009. The transition
to the WIPO DAS will provide applicants with additional security via the
requirement of a WIPO DAS access code, which serves as a third validation
point for each application along with the application number and filing
date. In addition, use of the WIPO DAS permits applicants to better manage
and monitor the status of requested certified copy retrievals via the WIPO
DAS Applicant Portal.
The certified copy requirement of 35 U.S.C. 119(b) and 37 CFR 1.55 is
considered satisfied when a foreign priority document is retrieved
electronically via the WIPO DAS during the pendency of the U.S.
application. There is no fee for this service, and the participation of a
particular application is voluntary.
For U.S. applications filed on or after January 1, 2022, in addition to
the foreign priority claim (including the country (EP as the two-letter
code for the EPO), application number, and filing date), the applicant must
provide the WIPO DAS access code associated with the EPO priority
application that is to be retrieved via the WIPO DAS.
For U.S. applications filed prior to January 1, 2022, the WIPO DAS
access code will not be required; however, applicants are encouraged to
begin voluntarily providing the WIPO DAS access code for EPO priority
applications immediately. This practice will prepare the applicant for the
full switch to the WIPO DAS. Also, having the WIPO DAS access code should
reduce potential delays that may occur if electronic retrieval is attempted
by the USPTO on or after January 1, 2022. The Foreign Priority Information
Section of the Application Data Sheet includes an Access Code field for
this purpose. Effective June 30, 2023, the USPTO will be unable to retrieve
EPO priority applications without a WIPO DAS access code. Therefore,
applicants are encouraged to review U.S. applications filed prior to
January 1, 2022, that claim priority to an EPO application for which a WIPO
DAS access code was not provided, to enable successful retrieval by the
USPTO of the EPO priority application.
Acknowledgement of the WIPO DAS access code will appear on U.S.
application filing receipts. Specifically, the foreign priority claim to an
application filed with the EPO will include either "Access code provided"
or "No access code provided," as appropriate. Applicants are encouraged to
review the U.S. application filing receipt to verify acknowledgement by the
USPTO.
At the time of this notice, the USPTO deposits, via the WIPO DAS,
certified copies of U.S. national patent applications, including U.S.
design patent applications, but does not deposit international applications
filed under the Patent Cooperation Treaty (PCT) with the USPTO as receiving
office (RO/US). The EPO deposits, via the WIPO DAS, certified copies of
patent applications and international applications filed under the PCT with
the EPO as receiving office (RO/EP) as priority documents. Therefore, the
priority claim and the WIPO DAS access code must be furnished for each EPO
application for which the applicant wishes the USPTO to attempt retrieval
via the WIPO DAS. The scope of priority documents that are deposited by the
participating offices is available at the WIPO DAS website
(www.wipo.int/das/en/participating_offices.html).
Applicants are advised that they continue to bear the ultimate
responsibility for ensuring that the priority document is filed by the time
 Top of Notices (213) December 27, 2022 |
US PATENT AND TRADEMARK OFFICE |
1505 CNOG 770 |
limit set forth in 37 CFR 1.55.
Further information on priority document exchange via the WIPO DAS is
available at www.uspto.gov/patents-getting-started/international-
protection/electronic-priority-document-exchange-pdx.
Questions about this announcement may be directed to Nelson Yang, Senior
Advisor, Office of International Business Solutions, at 571-272-0826; or
Richard Ross, Attorney Advisor, International Patent Legal Administration,
at 571-272-3296. Comments may be directed to the Priority Document Exchange
electronic mailbox at pdx@uspto.gov. Email inquiries will receive a
response within one business day.
[1493 OG 877]