By Christopher P. Singer --
The USPTO released this pre-OG notice regarding its electronic priority document exchange program (PDX) implemented in conjunction with the European Patent Office (EPO). This program is intended to benefit applicants that have filed an application with the U.S. or European Patent Offices (a "priority document"), and subsequently wish to file a corresponding application in Europe or the U.S. within 12 months of the first filed application. This document exchange program is free to applicants (avoiding the prior $20 administration fee).
The notice contains a bit more explanation regarding how and when to make the request for priority document exchange, as a number of submitted requests have apparently been made improperly, and thus, gone unfulfilled. I admit (only somewhat sheepishly) that I fall into the category of those who have failed to make a proper request under the new program. In any case, the USPTO clarifies that form PTO/SB/38 should be used when an applicant wishes to have the USPTO electronically retrieve a copy of a priority document from the EPO. Importantly, the USPTO will not attempt to retrieve a copy of the document until the document is identified in an oath/declaration or application data sheet (ADS) in compliance with 37 C.F.R. § 1.63(c). The USPTO's receipt of the electronic copy of the priority document will satisfy the requirement of 37 C.F.R. § 1.55 (providing the Office with a certified copy of the priority document).
In the reverse situation, an applicant can also request that the EPO make a request to retrieve an electronic copy of a U.S. patent application to which an EP patent application claims priority. However, the EPO will only retrieve copies of a priority document when (1) the USPTO receives written authorization to "permit access" under 37 C.F.R. § 1.14(h) and 35 U.S.C. § 122, if the application is not published; or (2) the U.S. application is published or issued as a patent. The USPTO clarifies in the notice that form PTO/SB/39 should be filed in the relevant U.S. application(s) in order to provide proper authorization to permit access to the application by "participating offices."
The notice provides telephone and e-mail ([email protected]) contact information should one have additional questions.
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