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Patent Law

: I/P Updates

Priority Document Exchange Program Update

By William F. Heinze

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The so-called "Trilateral Priority Document Exchange" program is discussed at http://www.trilateral.net/projects/priority_document_exchange/index.php. Official information on the program is available from the USPTO at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/kipopdx_10142008.pdf, where it states

PCT international applications are currently excluded from the PDX system. Thus, USPTO cannot electronically exchange PCT international applications through the PDX system. Further, the USPTO cannot currently electronically retrieve non-U.S. priority applications to which priority is claimed in a PCT international application.

Note that, in accordance with PCT Rule 17.1(b), an applicant may request the U.S. Receiving Office to transmit a U.S. priority document to the International Bureau. This service is independent from the PDX system.

The USPTO will not retrieve copies of priority applications filed in U.S. national stage applications under 35 U.S.C. 371 unless the applicant files a separate request to retrieve (e.g., form PTO/SB/38) under 37 CFR 1.55(d)(1)(i) since the USPTO already, in most cases, receives copies of such priority applications from the International Bureau in accordance with PCT Rule 17.2.

The USPTO also offers answers to frequently asked questions at http://www.uspto.gov/main/faq/faq_pdx.html and accepts additional questions on the "PDX" program at PDX@uspto.gov.

The only "Participating Offices" in the program so far are the USPTO, JPO, EPO, and KIPO. According to the USPTO's page on the Priority Document Exchange, "The USPTO will also automatically request retrieval of a JPO priority document if an U.S. application claims priority in the Oath, Declaration, or Application Data Sheet, eliminating the need to submit a “Request To Retrieve” form SB-38. The USPTO already automatically attempts to electronically retrieve a copy of any EPO priority document to which priority is claimed in an U.S. application."

Nonetheless, the practice in some businesses has been to file USPTO Form SB/39, "AUTHORIZATION TO PERMIT ACCESS TO APPLICATION BY PARTICIPATING OFFICES" with all new applications. According to the instructions for that form,

"The EPO, JPO, or KIPO will request retrieval of every US priority application to which an EPO, JPO, or KIPO application claims priority. The JPO will request retrieval of every US priority application to which a JPO application claims priority. Likewise, the KIPO will request retrieval of every US priority application to which a KIPO application claims priority. However, further details and instructions from the EPO will be published in its Official Journal and further details and instructions from the JPO and KIPO will be published on the JPO and KIPO websites respectively.

"Neither design applications nor PCT international applications can currently be exchanged through the Priority Document Exchange system. Accordingly, the EPO, JPO, and KIPO will not request retrieval of priority applications that are design applications or PCT international applications."

Form SB-38 can also provide the ability to make "Requests for Non-Participating Office Priority Documents" as discussed at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/kipopdx_10142008.pdf:

The USPTO will not have the ability to electronically retrieve non-participating office priority documents from the KIPO under 37 CFR 1.55(d)(2). For example, if the applicant files a JPO priority document with the KIPO in a KIPO application, the USPTO will not have the ability to electronically retrieve the JPO priority document from the KIPO through the PDX system. The USPTO similarly does not have the ability to electronically retrieve non-participating office priority documents from the JPO under 37 CFR 1.55(d)(2). See 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). However, this service continues to be available through the EPO. Thus, for example, if an applicant wishes the USPTO to retrieve a copy of a German priority document that has been made of record in an EPO application file, the applicant must file a request to retrieve in a separate document (e.g., form PTO/SB/38) under 37 CFR 1.55(d)(1)(i) and provide the USPTO with the EPO application number from which the German priority document may be retrieved. See the Official Gazette notice entitled "Simplification of the Electronic Exchange of Priority Documents" published on June 26, 2007.

By the way, WIPO is developing its own priority document access service at https://webaccess.wipo.int/priority_documents/en/.

Full post as published by I/P Updates on December 04, 2008 (boomark / email).

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