This site provides useful information for applicants that wish to take advantage of the electronic priority document exchange (PDX) program. Use of PDX avoids the fee associated with ordering a certified priority document for each office of subsequent filing and the costs of transmitting those certified copies to foreign associates or foreign intellectual property (IP) offices. The United States Patent and Trademark Office (USPTO) transmits certain U.S. priority applications as-filed to any foreign IP office that participates in the priority document exchange program (participating office) and retrieves/accesses certain foreign priority applications as-filed from the participating offices. The priority document exchange program includes two modes of exchange: Direct Bilateral Exchange and World Intellectual Property Organization Digital Access Service (WIPO DAS) Exchange.
- Overview of participation by the USPTO
- Access to U.S. applications by the participating offices
- Retrieval of foreign priority applications by the USPTO
- More WIPO DAS Exchange Information
- More PDX Program Information
The European Patent Office (EPO), the Korean Intellectual Property Office (KIPO), the State Intellectual Property Office of the People’s Republic of China (SIPO), and the USPTO exchange priority documents via Direct Bilateral Exchange. The USPTO also exchanges priority documents with other foreign IP offices via the WIPO DAS Exchange (see WIPO DAS Exchange with Participating Offices below). The two modes of exchange are mutually exclusive. It is important to note that while the KIPO and the SIPO are WIPO DAS participating offices, the USPTO priority document exchange with those offices occurs under the Direct Bilateral Exchange, not the WIPO DAS Exchange.
AUTHORIZATION TO PERMIT ACCESS
Access to a U.S. priority application may be provided to a participating office pursuant to 37 CFR 1.14(h)(1) if the application contains written authority granting such access. The ADS form (PTO/AIA/14) includes a section allowing applicants to provide the USPTO with authorization to permit a participating office access to a U.S. priority application. To be effective, the ADS form containing the appropriate authorization language must be properly signed and be submitted with the filing of the U.S. priority application.
Please note that an ADS submitted after the filing of an application CANNOT be used to provide or rescind the authorization to permit access. Instead, applicants should use form PTO/SB/39 (or an applicant-generated equivalent) to provide or rescind the authorization for access under 37 CFR 1.14(h)(1) after the filing of the application.
FILING RECEIPT INDICATION OF AUTHORIZATION TO PERMIT ACCESS
The filing receipt of the U.S. application will indicate whether applicant has provided written authority for access pursuant to 37 CFR 1.14(h)(1). Applicants should inspect the application filing receipt and request a corrected filing receipt if authorization for access under 37 CFR 1.14(h)(1) was incorrectly captured.
LIMITATIONS OF AUTHORIZATION
An authorization to permit access will not be recorded in design applications and international applications filed with the United States Receiving Office (RO/US). Therefore, for these applications, the applicant must use alternative methods to obtain and transmit the certified copies to foreign IP offices.
ACCESS VIA DIRECT BILATERAL EXCHANGE
For Direct Bilateral Exchange participating offices where a subsequently filed application claims priority to an earlier filed U.S. application in which authorization for access is given, the applicant must provide the U.S. application number and filing date.
ACCESS VIA WIPO DAS EXCHANGE
For WIPO DAS accessing offices where a subsequently filed application claims priority to an earlier filed U.S. application in which authorization for access is given, the applicant must provide the U.S. application number, filing date, and the WIPO DAS access code (i.e., the 4-digit confirmation number indicated on the filing receipt and electronic acknowledgement receipt of the U.S. application).
The International Bureau, in its capacity as a WIPO DAS accessing office, may access U.S. applications in which authorization for access is given. Therefore, for international applications filed under the Patent Cooperation Treaty (PCT), irrespective of the receiving office chosen, an applicant may request the IB to retrieve via the WIPO DAS a copy of an earlier U.S. application to which priority is claimed and in which authorization for access is given (PCT Rule 17.1(b-bis)). In such case, the applicant must claim priority to the earlier U.S. application and provide the WIPO DAS access code (i.e., the 4-digit confirmation number) for the earlier U.S. application (see Box No. VI of the Request (Form PCT/RO/101)).
NOTE: For international applications filed with the RO/US, the applicant should check the appropriate item in Box No. VI of the Request (Form PCT/RO/101) to request the RO/US to prepare and transmit to the International Bureau a certified copy of any earlier U.S. application to which priority is claimed (PCT Rule 17.1(b)). This service is independent from the PDX program.
DIRECT BILATERAL EXCHANGE WITH PARTICIPATING OFFICES
The USPTO is able to retrieve utility patent applications filed with the following participating offices:
• (EP) European Patent Office (EPO) effective January 16, 2007
• (KR) Korean Intellectual Property Office (KIPO) effective October 14, 2008
• (CN) State Intellectual Property Office of the People's Republic of China (SIPO) effective October 8, 2014
NOTE: International applications filed under the PCT and design applications are not exchanged via Direct Bilateral Exchange.
WIPO DAS EXCHANGE WITH PARTICIPATING OFFICES
By notification on April 20, 2009, the USPTO expanded its PDX program by agreement with the World Intellectual Property Organization (WIPO) to participate in the multilateral exchange of certain priority documents with other IP offices participating in the WIPO Digital Access Service (DAS) for Priority Documents. The list of WIPO DAS participating offices and information concerning the scope of available priority documents are maintained by the WIPO. As of December 1, 2017, retrieval by the USPTO includes foreign applications filed with the following WIPO DAS depositing offices:
• (AU) Australian Patent Office
• (BR) Brazil National Institute of Industrial Property
• (DK) Denmark Patent and Trademark Office
• (EA) Eurasian Patent Office
• (EE) Estonian Patent Office
• (ES) Spanish Patent and Trademark Office
• (FI) National Board of Patents and Registration of Finland
• (GB) United Kingdom Intellectual Property Office
• (IB) International Bureau (IB), in its capacity as RO/IB
• (JP) Japan Patent Office
• (MA) Moroccan Office of Industrial and Commercial Property
• (NZ) New Zealand Intellectual Property Office
• (SE) Swedish Patent and Trademark Office
NOTE: The KIPO and the SIPO are WIPO DAS participating offices. However, the USPTO priority document exchange with those offices occurs under the Direct Bilateral Exchange, not the WIPO DAS Exchange.
The retrieval process for electronic priority document exchange includes several practice tips that will help applicants promptly identify potential problems. If retrieval fails applicants remain responsible for the submission of the certified copy of the foreign application.
For foreign applications (to which priority is properly claimed in a U.S. application) filed in a participating foreign IP office, automatic retrieval will be attempted by the USPTO when the U.S. application is docketed to a patent examiner. For automatic retrieval by the USPTO via the WIPO DAS, the applicant also must provide to the USPTO the WIPO DAS access code for the priority application. The “Foreign Priority Information” section of the ADS form includes an Access Code field for this purpose.
A separate written request to retrieve is required under 37 CFR 1.55(i)(4) where a certified copy of a foreign application (to which priority is claimed in a U.S. application) filed in a nonparticipating foreign IP office is contained in an EP or JP application file. The applicant must use form PTO/SB/38 (or an applicant-generated equivalent) to identify the EP or JP application as well as the nonparticipating office certified copy contained in that EP or JP application file. For example, where the applicant claims priority to a DE (German Patent and Trademark Office) application, a certified copy of which is contained in an EP application the applicant can file form PTO/SB/38 and, under Option A of that form, request the USPTO to obtain from the EP application file (indicate the country, application number, and filing date) an electronic copy of the certified copy of the DE application (indicate the country and application number).
FILING RECEIPT INDICATION THAT RETRIEVAL WILL BE ATTEMPTED BY THE USPTO
The U.S. application filing receipt will indicate whether applicant has complied with a request to retrieve pursuant to 37 CFR 1.55(i). Applicants should inspect the application filing receipt and request a corrected filing receipt if a request to retrieve under 37 CFR 1.55(i) is incorrectly captured.
• For Direct Bilateral Exchange, the following paragraph will appear on the filing receipt:
Request to Retrieve – This application either claims priority to one or more applications filed in an intellectual property Office that participates in the Priority Document Exchange (PDX) program or contains a proper Request to Retrieve Electronic Priority Application(s) (PTO/SB/38 or its equivalent). Consequently, the USPTO will attempt to electronically retrieve these priority documents.
• For WIPO DAS Exchange, the WIPO DAS access code is required. When the WIPO DAS access code is provided, “Access Code Provided” will appear on the filing receipt for the relevant foreign application as well as the “Request to Retrieve” paragraph. When the WIPO DAS access code is not provided, “No Access Code Provided” will appear on the filing receipt for the relevant foreign application.
RETRIEVAL OF FOREIGN APPLICATIONS TO WHICH PRIORITY IS CLAIMED IN A U.S. DESIGN APPLICATION
The USPTO will attempt retrieval of foreign applications to which priority is claimed in a U.S. design application where possible. The Spanish Patent and Trademark Office deposits certain ES industrial design applications for access by the USPTO via the WIPO DAS. Therefore, when the applicant claims foreign priority to an ES industrial design application and provides the WIPO DAS access code, the USPTO will attempt retrieval via the WIPO DAS.
RETRIEVAL OF INTERNATIONAL APPLICATIONS FILED UNDER THE PCT TO WHICH PRIORITY IS CLAIMED
The USPTO will automatically attempt retrieval of international applications filed under the PCT where the receiving office is RO/AU, RO/DK, RO/ES, RO/FI, RO/IB, RO/MA, or RO/SE and the applicant has provided the required WIPO DAS access code for the international application to which foreign priority is claimed.
• WIPO DAS Portal (provides online access to data concerning available priority documents added to your WIPO Account workbench)
• WIPO DAS Portal User Guide (managing your WIPO Account workbench, tracking a priority document, viewing access history and notification preferences)
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