Electronic Priority Document Exchange (PDX) Program

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
Practice tips for priority document exchange
Announcements
Forms
More WIPO DAS Exchange Information
More PDX Program Information
Support

Overview of participation by the USPTO

The European Patent Office (EPO) 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 EPO is a WIPO DAS participating office, the USPTO priority document exchange with the EPO occurs under the Direct Bilateral Exchange, not the WIPO DAS Exchange.

Access to U.S. applications by participating offices

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 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 Exchange 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.

Retrieval of foreign priority applications by the USPTO

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

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.

For successful retrieval, it is important that the foreign priority claim identify the country/office code and the foreign priority application number in the recommended format.

The participating offices, the types of applications that may be available for retrieval by the USPTO from each participating office, and the recommended application number formats for each participating office are set forth in the table below:

Table of WIPO DAS participating offices (as of January 01, 2021)
National/ Regional	Utility Model	Industrial Design	Hague International Design	PCT International	Participating Office	Recommended Application Number Format
AR	AR				Argentina	PYYYY01NNNNN MYYYY01NNNNN
AT	AT	AT		RO/AT	Austria	A NNNNN/YYYY GM NNNNN/YYYY MU NNNN/YYYY PCT/ATYYYY/NNNNNN
AU		AU		RO/AU	Australia	YYYYNNNNNN PCT/AUYYYY/NNNNNN
BR		BR		RO/BR	Brazil	10YYYYNNNNNNN 30YYYYNNNNNNN PCT/BRYYYY/NNNNNN
		CA			Canada	NNNNNN
CL	CL	CL		RO/CL	Chile	NNNNN-YYYY PCT/CLYYYY/NNNNNN
CN	CN	CN		RO/CN	People's Republic of China	YYYY-1NNNNNNN.X YYYY-2NNNNNNN.X YYYY-3NNNNNNN.X PCT/CNYYYY/NNNNNN
CO	CO	CO		RO/CO	Columbia	NCYYYY/NNNNNNN PCT/COYYYY/NNNNNN
DK				RO/DK	Denmark	PA YYYY NNNNN PCT/DKYYYY/NNNNNN
EA				RO/EA	Eurasian Patent Organization	YYYYNNNNN PCT/EAYYYY/NNNNNN
EE	EE				Estonia	PYYYYNNNNN UYYYYNNNNN
		EM			European Union Intellectual Property Office	NNNNNNNNN-NNNN
ES	ES	ES		RO/ES	Spain	PYYYYNNNNN UYYYYNNNNN DNNNNNNN PCT/ESYYYY/NNNNNN
FI	FI			RO/FI	Finland	YYYYNNNN UYYYYNNNN PCT/FIYYYY/NNNNNN
FR	FR			RO/FR	France	YYNNNNN PCT/FRYYYY/NNNNNN
GB					United Kingdom	YYNNNNN.X
GE	GE	GE		RO/GE	Georgia	AP YYYY NNNNN AD YYYY NNNNN PCT/GEYYYY/NNNNNN
			IB (Practice Tip #5)	RO/IB	International Bureau of the World Intellectual Property Organization	WIPONNNNN NNNNNNNNN PCT/IBYYYY/NNNNNN
IL		IL		RO/IL	Israel	NNNNNN PCT/ILYYYY/NNNNNN
IN		IN		RO/IN	India	YYYYNNNNNNN PCT/INYYYY/NNNNNN
IT	IT	IT		RO/IT	Italy	10YYYYNNNNNNNNN 20YYYYNNNNNNNNN 40YYYYNNNNNNNNN PCT/ITYYYY/NNNNNN
JP	JP	JP			Japan	YYYY-NNNNNN YYYY-NNNNNN U YYYY-NNNNNN D
KR	KR	KR			Republic of Korea	10-YYYY-NNNNNNN 20-YYYY-NNNNNNN 30-YYYY-NNNNNNN
MA				RO/MA	Morocco	NNNNN PCT/MAYYYY/NNNNNN
MX	MX	MX		RO/MX	Mexico	A/YYYY/NNNNNN U/YYYY/NNNNNN F/YYYY/NNNNNN PCT/MXYYYY/NNNNNN
NL				RO/NL	Netherlands	NNNNNNN PCT/NLYYYY/NNNNNN
NO		NO		RO/NO	Norway	YYYYNNNN PCT/NOYYYY/NNNNNN
NZ					New Zealand	NNNNNN
SE				RO/SE	Sweden	YYNNNNNN PCT/SEYYYY/NNNNNN

NOTE: The EPO is a WIPO DAS participating office. However, the USPTO priority document exchange with the EPO (and the RO/EP) occurs under the Direct Bilateral Exchange, not the WIPO DAS Exchange (see Direct Bilateral Exchange with Participating Offices, above).

RETRIEVAL PROCESS

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 released from the Office of Patent Application Processing. For automatic retrieval by the USPTO via the WIPO DAS Exchange, 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.

CERTIFIED COPY REQUIREMENT FOR INTERNATIONAL APPLICATIONS ENTERING THE U.S. NATIONAL PHASE UNDER 35 U.S.C. 371

For a majority of international applications filed under the PCT, the applicant has complied with the certified copy requirement during the international phase by submitting the certified copy to the International Bureau as set forth in PCT Rule 17.1(a), (b) and/or (b-bis). When the applicant submits a U.S. national phase application the USPTO in its capacity as a designated/elected office receives directly from the International Bureau a copy of the priority documents furnished during the international phase, along with the other national phase documents. The copy of a priority document received directly from the International Bureau satisfies the requirement for a certified copy in the national phase application. Receipt of the priority document from the International Bureau should be acknowledged on the notice of acceptance (Form PTO/DO/EO/903). This service is independent from the PDX program.

For the few international applications filed under the PCT where the applicant has not complied with the certified copy requirement during the international phase, the applicant may wish to satisfy the certified copy requirement by using the Direct Bilateral Exchange or the WIPO DAS Exchange of the PDX program as discussed above.

Practice tips for priority document exchange

TIP #1: What should I do if I see a Failure Status Report when viewing my application in Patent Application Information Retrieval (PAIR)?

For some failed retrieval attempts, the USPTO system generates a Failure Status Report that is contained in the application and can be viewed in PAIR. A Failure Status Report may be disregarded when the electronically retrieved priority document is contained in the application. Otherwise, the applicant may wish to carefully review the accuracy of the following information on the filing receipt:

2-letter country code,
application number,
filing date, and
WIPO DAS access code (if applicable).

If the priority claim indicated on the filing receipt is incorrect, the priority document cannot be successfully retrieved and the application is not covered by the 37 CFR 1.55(i) exception.

To correct the priority claim, the applicant may file a request for a corrected filing receipt accompanied by a corrected Application Data Sheet (ADS). The corrected ADS must comply with 37 CFR 1.76(c), that is, with deletions identified by strike-through or brackets and additions identified by underlining. The request and the corrected ADS must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application (the 4/16 month time period). If the corrected priority claim is presented after the 4/16 month time period, a grantable petition to accept an unintentionally delayed priority claim pursuant to 37 CFR 1.55(e) is required. Note that the 4/16 month time period does not apply to design applications. For more information regarding the formal requirements for filing a foreign priority claim, see MPEP § 214-214.02.

If the priority claim information shown on the filing receipt is not consistent with the priority claim information that was timely presented in an ADS that complies 37 CFR 1.76, the applicant may file a request for a corrected filing receipt, including the marked-up filing receipt, asking the office to correct its mistake.

If the filing receipt accurately reflects the foreign priority claim and the electronically retrieved priority document is not yet in the application, the customer should contact the Patents Electronic Business Center and request that the matter be escalated to determine the cause of the Failure Status Report. Note that the applicant continues to bear the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued.

TIP #2: When should I expect to see the electronically retrieved foreign priority document in the U.S. application file?

In general, an attempt to retrieve an eligible foreign application will be made by the USPTO when the application is docketed to an examiner. It may take about 2 weeks to complete the process of sending the retrieval attempt to the foreign IP office and loading the electronically retrieved priority document into the application.

If the electronic copy of the priority document is not contained in the application at the time of the first Office action the applicant should verify that the priority claim (country, application number and filing date) indicated on the filing receipt is accurate and that the filing receipt includes the “Request to Retrieve” text. If the filing receipt reflects the accurate foreign priority claim and WIPO DAS access code, if applicable, the applicant should contact the Patents Electronic Business Center and request that the matter be escalated to determine why the priority document is not yet in the file. Note that the applicant continues to bear the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued.

TIP #3: What if the priority application was filed with a WIPO DAS participating office and I do not have the WIPO DAS access code at the time of filing the U.S. application?

The WIPO DAS access code should be furnished to the USPTO as soon as possible by submitting a corrected ADS and a request for a corrected filing receipt. It is best practice for the applicant to provide the WIPO DAS access code when making the foreign priority claim or as soon as possible after the filing of the U.S. application if the WIPO DAS access code of the foreign priority application was not available at the time of filing of the U.S. application.

There are a number of disadvantages in providing the WIPO DAS access code late in prosecution. First, a claimed invention in the application will not be entitled to the filing date of the foreign priority application if the USPTO has not received a certified copy of the foreign application or an electronic copy retrieved under the priority document exchange program. Second, if the certified copy (this includes the electronic copy retrieved under the priority document exchange program) is received after the date the issue fee is paid, the patent will not include the priority claim unless corrected by certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323. Finally, if applicant provides the WIPO DAS access code outside the 4/16 month time period and an incorrect priority claim (country, application number and/or filing date) was provided on the ADS, not only will the USPTO be unable to retrieve an electronic copy of the foreign application but the applicant also will have to file a grantable petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim to the correct foreign application.

TIP #4: How can I find out if my U.S. application is registered into the WIPO DAS exchange or has been accessed by a foreign WIPO DAS office?

The applicant is encouraged to use the WIPO DAS Applicant Portal, which provides online access to data concerning available priority documents added to your WIPO Account workbench. The WIPO DAS Portal User Guide is available for managing your WIPO Account workbench, tracking a priority document, viewing access history and setting notification preferences. Links to these tools are provided below under the section More WIPO DAS Exchange Information.

TIP #5: What is necessary for the USPTO to retrieve a Hague international design application to which foreign priority is claimed in a U.S. nonprovisional application?

The applicant must first obtain a WIPO DAS access code from the International Bureau (IB) for the Hague international design application. The USPTO will automatically attempt retrieval if applicant provides the following information:

1. Country code: IB

2. Hague international design application number format:

WIPONNNNN (for electronic direct filings with the IB); or
NNNNNNNNN (for indirect filings or paper applications), where N is a number.

3. Filing date: YYYY-MM-DD

4. WIPO DAS access code: XXXX, where X is an alphanumeric character

NOTE: While the USPTO will continue to recognize a foreign priority claim to a Hague international design application identified by the international registration number (i.e., the DM/NNNNNN), use of WO as the country code and/or DM/NNNNNN as the application number will not be effective for retrieval via the WIPO DAS exchange.

Announcements

• Sample Formats for Identifying Foreign Priority Information via Electronic Priority Document Exchange Program [PDF, December 2020]

• Using the WIPO DAS to Provide Priority Documents Under PCT Rule 17.1 [December 2011]

Forms

• Authorization or Rescission of Authorization to Permit Access to a U.S. Application-as-Filed by Participating Offices, PTO/SB/39

• USPTO Retrieval of a Foreign Priority Document from a Participating Office, PTO/SB/38

More WIPO DAS Exchange Information

• WIPO DAS Participating Offices

• 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)

More PDX Program Information

• OG Notices Related to Electronic Priority Document Exchange Program

Support

EBC Customer Support Center
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Email: PDX@uspto.gov