How does PDX work?

Each Office has its own procedures.  Check the EPO and JPO web sites for information on their practices.  The USPTO's practice is set forth in the Changes to Implement Priority Document Exchange Between Intellectual Property Offices, scheduled to publish in the Federal Register on January 16, 2006 as a final rule. The USPTO does not charge a fee for this service.

The USPTO will request retrieval of priority documents from the appropriate Office only if an applicant files a request in compliance with 37 CFR 1.55(d).  Applicants may use Form PTO/SB/38, which is available on the USPTO web site at http://www.uspto.gov/web/forms/index.html#patent.

For example, if an applicant files a US application claiming foreign priority to an European patent application, the applicant may file a request (PTO/SB/38) in compliance with 37CFR 1.55(d) signed by a person who has the authority to grant access to the European patent application.  The European patent application must be identified in the oath or declaration (37 CFR 1.63(c)) or an application data sheet (37 CFR 1.76(a)(6)).  The request should be made within the later of 4 months from the filing date of the application or 16 months from the filing date of the foreign application.

In addition to retrieving a copy of a European patent application itself, the USPTO can retrieve a copy of any priority document contained within a European patent application.  For example, if the US application claims foreign priority to a French application under 35 U.S.C.119(a)-(d) and a certified copy of the French application is contained within the electronic record of a European patent application, the USPTO will retrieve and place a copy of the French priority document into the electronic record of the US application that claims priority to the French application when applicant files a request in compliance with 37 CFR 1.55(d).  See the instructions that accompany Form PTO/SB/38 for more information on how to request retrieval of such a priority document.

Upon receipt of a timely filed request, the USPTO anticipates that two attempts will be made to retrieve a copy of the foreign application from the participating office.  Applicants should check the private PAIR to determine if the copy of the foreign application has been retrieved by the USPTO.  Successful retrieval of priority documents cannot be guaranteed.  If the retrieval attempt fails, the applicant will be notified.  At the time of allowance, the examiner will provide an acknowledgement on the Notice of Allowability (PTOL-37).  If the priority document is still missing, applicant must file a paper certified copy of the priority document prior to the issuance of the application.  See 37 CFR 1.55(a).