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|Top of Notices (213) December 29, 2020||US PATENT AND TRADEMARK OFFICE||Print This Notice 1481 CNOG 768|
|Benefit Claims, Priority, Electronic Exchange of Documents||Referenced Items (203, 204, 205, 206, 207, 208, 209, 210, 211, 212, 213, 214, 215, 216, 217, 218)|
(213) Complete Transition to WIPO DAS for the Electronic Exchange of Priority Documents Between the United States Patent and Trademark Office and the Japan Patent Office Based on the success in retrieving Japanese (JP) priority documents via the World Intellectual Property Organization (WIPO) Digital Access Service (DAS), on March 1, 2020, the United States Patent and Trademark Office (USPTO) and Japan Patent Office (JPO) discontinued direct bilateral exchange of priority documents. Direct bilateral exchange was the mechanism used to electronically retrieve JP priority national patent applications and JP priority national utility model applications in applications filed with the USPTO between July 27, 2007 and October 1, 2017. On October 1, 2017, the USPTO began using WIPO DAS to retrieve JP priority applications in applications filed with the USPTO on or after October 1, 2017. See Change in the Electronic Retrieval Method for Priority Documents Between the United States Patent and Trademark Office and the Japan Patent Office, 1442 OG 231 (September 26, 2017). WIPO DAS provides several benefits to users, including: added security to ensure proper priority document retrieval, availability certificates to confirm that the priority document is available in WIPO DAS, and the ability to view and manage notifications relating to retrieval attempts by accessing offices. Use of WIPO DAS by the USPTO to retrieve a priority document requires that the applicant provide to the USPTO the WIPO DAS access code associated with the priority application, in addition to the priority claim (including the country, application number, and filing date). The USPTO has been actively working with the JPO to retrieve each JP priority application in U.S. applications that relied on direct bilateral exchange with the JPO. If an electronic copy of a JP application was not retrieved before termination of the direct bilateral exchange program with the JPO, an applicant can satisfy the certified copy requirement for the priority application in one of two ways: (1) the applicant can file the paper certified copy while the U.S. application is pending, or (2) the applicant can provide the WIPO DAS access code for the JP priority application if it is registered with WIPO DAS and ensure that the JP priority application is electronically retrieved while the U.S. application is pending. Applicants are reminded that they continue to bear responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued. Manual of Patent Examining Procedure § 215.02(a) (Ninth Edition, Revision 08.2017, last revised January 2018). This notice does not affect retrieval, via WIPO DAS, of JP priority applications where the applicant has furnished the USPTO with the WIPO DAS access code. For information concerning the application types deposited with WIPO DAS by the JPO and other participating offices, please visit the WIPO DAS website at https://www.wipo.int/das/en/participating_offices/. [1474 OG 125]