Can PDX also be used to provide certified copies of US applications as-filed to the EPO or other participating Office?
Yes. This electronic exchange of priority documents is bidirectional. Please monitor the EPO, JPO, KIPO and websites for information on their plans for implementing this service.
The EPO will use PDX to request an electronic priority document for EVERY U.S. application claimed as priority in a European patent application. This applies to European patent applications filed on/after 16 January 2007. The EPO will initiate a priority document retrieval request to the USPTO shortly after the filing of any European patent application that claims priority to a U.S. application.
The EPO, JPO and KIPO will not charge for either transmitting or retrieving electronic priority documents.
Please note, however, that the USPTO will release a copy of a U.S. application to another participating Office ONLY if it meets one of the following criteria:
1.1 The U.S. application has been published or patented
2.1 The applicant has submitted written authorization to transmit the priority document to the participating Office (use of Form PTO/SB/01 or Form PTO/SB/39 , is encouraged for this purpose)
2.2 The U.S. application has cleared national security review
Because the deadline for submission of priority documents to the EPO (and JPO) normally expires prior to the time a U.S. application is published (criterion 1.1), applicants have to file a Form PTO/SB/39 as soon as they even consider filing a European (or Japan) patent application claiming priority to a U.S. application. Ideally, applicants who frequently file with the EPO(or JPO) would make submission of the Form PTO/SB/39 a regular part of the initial filing of their U.S. applications. There is no consequence for filing a Form PTO/SB/39 well before it is needed. Further, there is no consequence for filing a Form PTO/SB/39 and not subsequently filing in the EPO (or JPO).
Alternative, applicants can also submit authorization by check marking the box, "Authorization To Permit Access To Application by Participating Offices" on Form PTO/SB/01.