|Benefit Claims, Priority, Electronic Exchange of Documents
||Referenced Items (162, 163, 164, 165, 166, 167, 168, 169, 170, 171, 172, 173, 174, 175)
(168) Electronic Exchange of Priority Documents
In January 2007, the United States Patent and Trademark Office
(USPTO) implemented direct electronic priority document exchange with
the European Patent Office (EPO). See "Changes to Implement Priority
Document Exchange Between Intellectual Property Offices," published
in the Federal Register at 72 FR 1664 (January 16, 2007).
This service will be expanded later in 2007 to include
electronic exchange of priority documents between the USPTO and the
Japan Patent Office.
There is no fee for this service.
The USPTO and the EPO, implemented this program to permit
electronic exchange of priority documents between the two Offices.
Under this program, if a US application claims foreign priority to an
EPO patent application, the applicant may request that the USPTO
electronically retrieve a copy of the EPO patent application. Form
PTO/SB/38 entitled "Request to Retrieve Electronic Priority
Application(s)" is available for making such a request in accordance
with 37 CFR 1.55(d) from the USPTO website at
http://www.uspto.gov/web/forms/sb0038.pdf. In addition, if applicant
claims foreign priority to a (non-EPO) foreign application and
applicant filed the foreign priority document in an EPO patent
application, applicant may also request that the USPTO electronically
retrieve a copy of the foreign priority document from EPO by filing a
"Request to Retrieve Electronic Priority Application(s)" (Form
PTO/SB/38). Note however, that the USPTO will not attempt to retrieve
an identified priority application until the applicant identifies the
indicated priority application in an oath or declaration or an
application data sheet in compliance with 37 CFR 1.63(c).
Receipt of the electronic copy of the priority document from
the EPO will constitute satisfaction of the requirement under 37 CFR
1.55(a)(2)-(3) to provide the USPTO with a certified copy of the
foreign priority application. See 37 CFR 1.55(d).
Similarly, if an EPO application claims foreign priority to a
US application, the applicant may request that the EPO retrieve an
electronic copy of the US application. EPO will only retrieve copies of
US applications-as-filed, however, if: (1) the USPTO is provided with
appropriate written authority under 37 CFR 1.14(h) and 35 USC Sec. 122,
if the US application has not yet been published; or (2) the US
application has been published or patented. Written authority under 37
CFR 1.14(h) and 35 USC 122 may be provided by filing a properly signed
"Authorization to Permit Access to Application by Participating
Offices" (Form PTO/SB/39) in a US application. Form PTO/SB/39 is
available from USPTO website at http://www.uspto.gov/web/forms/sb0039.pdf
Applicants are advised that EPO regulations require a copy of a
priority document to be filed with the corresponding EPO application no
later than 16 months from the priority date. See EPC Rule 38(3).
Because applications are ordinarily published by the USPTO at 18 months
from filing, most US applications that are the basis for a foreign
priority claim in an EPO application will be unpublished at the time
the applicant is required to provide a copy of the US application to
the EPO. This means that in most cases it will be necessary to provide
the USPTO with appropriate written authorization (under 35 USC 122 and
37 CFR 1.14(h)) for the EPO to access the US application and obtain a
copy, e.g., by submitting a properly signed Form PTO/SB/39. To date,
however, the USPTO has received very few such written authorizations.
As a result, the USPTO is unable to fulfill the vast majority of
requests for US priority documents received by the USPTO from the EPO.
Applicants are strongly encouraged to file written authority in
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accordance with 37 CFR 1.14(h) and 35 USC Sec. 122 for applications in
which they plan to file a subsequent counterpart EPO application so
that the EPO may successfully retrieve the US priority document at no
charge to the applicant.
Applicants who decide to make use of this priority document
exchange service are advised that:
Applicants bear the ultimate responsibility for ensuring
that the priority document is filed by the time of patent
grant as required under 37 CFR 1.55(a). Accordingly,
applications are encouraged to check Private PAIR as necessary
to confirm receipt of appropriate documents. Priority documents
retrieved from the EPO will bear the IFW document title of
"Priority documents electronically retrieved by USPTO from a
participating IP Office".
In order to maximize the likelihood of a successful
retrieval, the USPTO will delay transmission of priority
document retrieval requests to the EPO until one of the following
conditions occurs: 17 months from the earliest priority date or
when the US application is docketed to an examiner. If the EPO is
unable to process the first retrieval request, the USPTO will
make another request when the second condition is met.
For further information please contact one of the
individuals identified below:
Don Levin Diana Oleksa
Acting TDA Legal Advisor
Project Manager for IT Policy
US Patent and OR US Patent and
Trademark Office Trademark Office
April 23, 2007 JOHN LOVE
Deputy Commissioner for
Patent Examination Policy
United States Patent and Trademark Office
[1318 OG 116]