| Benefit Claims, Priority, Electronic Exchange of Documents |
Referenced Items (208, 209, 210, 211, 212, 213, 214, 215, 216, 217, 218, 219, 220, 221, 222, 223) |
(208) United States Patent and Trademark Office to Deposit Certified Copies of
U.S. Design Applications as Priority Documents via the WIPO DAS (World
Intellectual Property Organization Digital Access Service)
Effective October 1, 2018, the United States Patent and Trademark Office
(USPTO), as a participating office in the World Intellectual Property
Organization (WIPO) Digital Access Service (DAS), is expanding the scope of
priority documents deposited by the USPTO in its capacity as a depositing
office to include certified copies of U.S. design patent applications.
The WIPO DAS is an electronic system allowing priority documents to be
securely exchanged between participating intellectual property (IP)
offices. There is no fee for this service with respect to the USPTO and
participation for a particular application is voluntary. The system enables
applicants and offices to meet the requirements of the Paris Convention for
certification in an electronic environment.
The USPTO became a WIPO DAS participating office on April 20, 2009. See
http://www.wipo.int/das/en/notifications.html#US. With respect to foreign
design applications, the USPTO, in its capacity as an accessing office,
will currently retrieve such applications that are made available by
participating depositing offices via the WIPO DAS (provided certain
conditions are met). The USPTO, in its capacity as a depositing office,
however, does not currently register or transmit U.S. design patent
applications via the WIPO DAS. Id. The USPTO's notification on the WIPO DAS
web site will be updated to indicate that the USPTO will be depositing
certified copies of U.S. design patent applications in its capacity as a
WIPO DAS depositing office effective October 1, 2018.
Given the importance of drawings in design applications, the certified
copy of the U.S. design patent application that will be deposited by the
USPTO via the WIPO DAS will include any drawings and appendices contained
in the Supplemental Complex Repository for Examiners (SCORE) that have a
document filing date that is on or before the filing date of the U.S.
design patent application. Drawings and appendices submitted in portable
document format (pdf) through EFS-Web in U.S. design patent applications
are stored as filed in SCORE and are also converted to TIFF images stored
in the USPTO image file wrapper (IFW) system. Drawings and appendices
stored in SCORE generally have significantly higher image quality than the
TIFF-converted images stored in the IFW system. In addition, SCORE drawings
may be in color or grayscale, whereas TIFF images will only appear in black
and white.
For U.S. design patent applications filed on or after October 1, 2018,
the USPTO will record authorizations to permit access by a foreign
intellectual property office, if the authorization is provided in a
properly signed Application Data Sheet (either form PTO/AIA/14 or the web-
based ADS through EFS-Web) submitted with the INITIAL filing. The
authorization is acknowledged on the filing receipt at Permission to Access
Application via Priority Document Exchange: Yes (or No).
For U.S. design patent applications filed prior to October 1, 2018, and
for U.S. design patent applications filed on or after October 1, 2018, but
for which authorization to permit access is not provided in an ADS with the
INITIAL filing, applicants should use form PTO/SB/39 ("Authorization or
Rescission of Authorization to Permit Access to Application-As-Filed by
Participating Offices") to provide authorization to permit access. An ADS
submitted after the INITIAL filing of an application cannot be used to
provide such authorization. A registered EFS-Web user can avoid processing
delays by using the correct document description, as indicated near the top
left margin of the form, when uploading the authorization form to an
existing application. A properly signed authorization is acknowledged on a
replacement filing receipt as noted in the previous paragraph.
Applicants may access the WIPO Digital Access Service Applicant Portal
 Top of Notices (208) December 28, 2021 |
US PATENT AND TRADEMARK OFFICE |
1493 CNOG 751 |
using their WIPO Account. The WIPO DAS User Guide is available at:
http://www.wipo.int/export/sites/www/das/en/pdf/das_user_guide.pdf.
Further information on priority document exchange via the WIPO DAS
exchange, including information on participating offices, is available at:
https://www.uspto.gov/patents-getting-started/international-protection/
electronic-priority-document-exchange-pdx.
Questions about this announcement may be directed to Nelson Yang, Acting
Director, Office of International Business Solutions, 571-272-3785, or
Tamara Graysay, Special Program Examiner, International Patent Legal
Administration, 571-272-6728. Comments may be directed to the Priority
Document Exchange electronic mailbox at pdx@uspto.gov. Electronic mailbox
inquiries are returned within one business day.
[1455 OG 349]