By Christopher P. Singer --
The USPTO has announced that it is simplifying the priority document exchange program, effective as of the publication of the notice. This program allows for the exchange of priority documents between the USPTO and the EPO (and soon, the JPO as well) in order to perfect a priority claim based on a foreign patent application, at no cost to the applicant. The prior procedure involved filling out and filing at least one form with the U.S. Patent Office.
The change to the procedure automates the exchange. For example, when an application is filed in the U.S. under 35 USC § 111(a) which claims priority to, and identifies (via an oath/declaration or application data sheet), an earlier foreign application that was filed directly in a participating office (only the EPO, at this time), the USPTO will automatically attempt to retrieve a copy of the earlier application from that foreign office, without requiring a request from the applicant. In the converse situation (an EP filing with a priority claim to an earlier US application), the EPO will make a similar request to the USPTO, and the USPTO will release a copy of the as-filed priority document if it has received national security clearance, and if the applicant has filed the appropriate form permitting access to the application by a foreign patent office (PTO/SB/39), if the application is not published. If the application is published or patented, the applicant is not required to file a PTO/SB/39 form. Nevertheless, because the EPO requires a copy of a priority document within 16 months of the priority date, and in light of the fact that U.S. applications do not publish until 18 months after the priority date, applicants will often be required to file the PTO/SB/39 form in order for the USPTO to transmit a copy of the priority document to the EPO.
For additional information regarding this topic, please see:
- "USPTO's Advice Concerning Priority Document Exchange (PDX) Program," April 24, 2007
- "USPTO News: EFS-Web Document Indexing and Priority Document Exchange," January 30, 2007
- "Priority Document Exchange Update," January 19, 2007
- "USPTO Implements Priority Document Exchange," January 18, 2007
- "USPTO News: Private PAIR 7.0 and PDX Presentation," December 20, 2006
- "$$$ in Applicants' Pockets!" November 24, 2006
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