How does PDX work?


Each Office has its own procedures.  Check the EPO and JPO websites for information on their practices. The USPTO's practice is set forth in the Changes to Implement Priority Document Exchange Between Intellectual Property Offices, 1315 Off. Gaz. Pat. Office 63 (February 13, 2007); Electronic Exchange of Priority Documents, 1318 Off. Gaz. Pat. Office 116 (May 15, 2007); Simplification of the Electronic Exchange of Priority Documents, 1319 Off. Gaz. Pat. Office 150 (June 26, 2007); Addition of Japan Patent Office as Participating Foreign Intellectual Property Office in Electronic Exchange of Priority Documents, 1320 Off. Gaz. Pat. Off. 173 (July 31, 2007), Enhancement of Priority Document Exchange Program and USPTO Declaration Form, 1328 Off. Gaz. Pat. Office 90 (March 11, 2008); and, Addition of Korean Intellectual Property Office as Participating Office in Electronic Exchange of Priority Documents and Further Procedural Information, 1336 Off. Gaz. Pat. Office 94 (November 11, 2008).

The USPTO, EPO, JPO, and KIPO do not charge a fee for this service.

The USPTO will automatically request retrieval of priority documents from the appropriate Office if a newly filed U.S. application claims priority to one or more EPO, JPO, or KIPO applications in the Oath, Declaration, or Application Data Sheet. Written instruction (e.g.,PTO/SB/38) is required to request retrieval of:

Applicants may use Form PTO/SB/38, which is available on the USPTO website at http://www.uspto.gov/web/forms/sb0038.pdf.

For example, if an applicant files a U.S. application filed prior to June 4, 2007 and 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.

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 U.S. 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 U.S. 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.

For example, if the U.S. 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 U.S. 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 [link] definition - PAIR to determine if the copy of the foreign application has been retrieved by the USPTO. Successful retrieval of priority documents cannot be guaranteed. Also, the examiner will indicate the status of retrieval in an Office action (i.e., PTOL-326 Office Action Summary item 12; PTOL-37 Notice of Allowability item 3). If at the time of allowance, 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).


USPTO FAQ - Questions and Answers (31Jul2009)