By Christopher P. Singer --
In a Notice dated October 14, 2008, the U.S. Patent and Trademark Office announced that the Korean Intellectual Property Office (KIPO) has become the third participating foreign intellectual property office in the electronic priority document exchange program. This complements our prior report based on information provided by one of our Korean foreign associates. As of the date of the Notice, the USPTO will be able to electronically retrieve Korean priority documents from KIPO through the Priority Document Exchange (PDX) system. Similarly, the KIPO will also gain the ability to electronically retrieve U.S. priority documents from the USPTO.
For U.S. applications filed under 35 U.S.C. § 111(a) on or after October 14, 2008, the USPTO will automatically attempt to electronically retrieve a copy of any Korean (KR) priority document without the need for the applicant to file a request to retrieve in a separate document (no need to file Form PTO/SB/38) provided that the application claims foreign priority to the KR application and identifies the KR application in the oath or declaration, or in an application data sheet. The same situation applies for priority applications originally filed in the EPO or JPO. If the copy of the KIPO (or EPO or JPO) application is received by the USPTO prior to the payment of the issue fee, the requirement under 37 C.F.R. § 1.55 for a certified copy of the foreign priority application is satisfied. While the USPTO will make the requests automatically, the request may not be fulfilled until several months after the filing of a qualifying new U.S. application.
For U.S. applications filed prior to October 14, 2008, applicants must file a request to retrieve Form PTO/SB/38. This program does not include design patent applications and PCT applications. Similarly, the USPTO will not retrieve copies of priority applications filed in U.S. national stage applications under 35 U.S.C. § 371 unless the applicant files a separate Form PTO/SB/38, since the USPTO already receives copies of such priority applications from the International Bureau.
The Notice also advises that Applicants will be ultimately responsible for ensuring that the priority document is filed by the time of patent grant as required under 37 C.F.R. § 1.55(a). Applicants are encouraged to check Private PAIR to confirm receipt of appropriate documents.
Similarly, if a KR (or EP or JP) application claims foreign priority to a U.S. provisional or nonprovisional application, the KIPO (or EPO or JPO) will automatically attempt to retrieve an electronic copy of the U.S. application. Importantly, the USPTO will release copies of U.S. applications upon such request only if the U.S. priority application has received a foreign filing license in accordance with 37 C.F.R. § 5.11, and (1) the applicant of the U.S. application provided an appropriate written authority to permit access to application by participating offices (Form PTO/SB/39 or Form PTO/SB/01); or (2) the U.S. application has been published or patented.
As with the USPTO, applicants are advised that KIPO (as well as EPO and JPO) regulations require a copy of a priority document to be filed with the corresponding KIPO (or EPO or JPO) application no later than 16 months from the priority date. The USPTO advises that because U.S. applications are ordinarily published by the USPTO after the time period of 18 months from filing, most U.S. applications that are the basis for a foreign priority claim in a KR (or EP or JP) application will not be published at the time the applicant is required to provide a copy of the U.S. application to the KIPO (or EPO or JPO). Accordingly, in most situations it will be necessary for applicants to provide the USPTO with appropriate written authorization for the foreign offices to access the U.S. application and obtain a copy by submitting either (1) Form PTO/SB/39; or (2) Form PTO/SB/01 in which the "Authorization to Permit Access by Participating Offices" has been checked.
For further information regarding the PDX program, the USPTO asks that you contact either Don Levin (TDA Project Manager) at 571-272-3785, or Diana Oleksa (Legal Advisor for IT Policy) at 571-272-3291, or by sending an e-mail to PDX@uspto.gov.
For additional information regarding this topic, please see:
• "Online Priority Document Exchange Service Between USPTO and KIPO," October 9, 2008
• "USPTO and KIPO Sign Memorandum on Cooperative Patent Examination," September 24, 2008
• "Enhancement of PDX Program and Declaration Form," February 14, 2008
• "USPTO e-Commerce Update and Public PAIR Verification System," January 16, 2008
• "USPTO e-Commerce Update," December 5, 2007
• "e-Commerce e-Alert," August 28, 2007
• "JPO-USPTO Priority Document Exchange Update," August 2, 2007
• "USPTO and JPO Launch Electronic Priority Document Exchange," July 31, 2007
• "JPO to Join USPTO and EPO in Priority Document Exchange Program," July 11, 2007
• "Patent Office Announces Simplification of Priority Document Exchange," June 7, 2007
• "USPTO's Advice Concerning Priority Document Exchange (PDX) Program," April 24, 2007
• "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
• "Private PAIR 7.0 and PDX Presentation," December 20, 2006
• "$$$ in Applicants' Pockets!" November 24, 2006
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