30 Nov 2017 in Newsletter
Certifying Priority Electronically: Updates to the USPTO’s PDX Program
By: Kevin Kuelbs
The Priority Document Exchange (“PDX”) streamlines the process for transmitting priority documents among participating patent offices worldwide by providing electronic access. Utilizing the PDX allows applicants to avoid fees for obtaining certified copies of priority documents and the incidental costs associated with transmitting and filing priority documents with the appropriate patent office.
Agreements to transmit documents via the electronic PDX exist between the United States Patent and Trademark Office (“USPTO”), several worldwide state patent offices, and with the World Intellectual Property Organization (“WIPO”). The first agreements were entered into in 2007 with the European Patent Office (“EPO”) and the Japan Patent Office (“JPO”), followed closely by the Korean Intellectual Property Office (“KIPO”) in 2008. In 2009, the USPTO solidified a PDX agreement with WIPO and in 2014 the State Intellectual Property Office of the People’s Republic of China (“SIPO)” was added.
Two avenues exist for applicants to utilize the PDX, depending on the jurisdiction: a direct bilateral exchange or the WIPO Document Access System (DAS) exchange. Direct bilateral exchange is available between worldwide patent offices for which a direct agreement is in place. To utilize a direct bilateral exchange, the applicant provides the application serial number and filing date. At present, direct bilateral exchange is available with the EPO, KIPO, and SIPO.
Regarding the WIPO DAS system, in order for an applicant to arrange for automatic retrieval of certified priority documents, the applicant must supply the foreign priority information as well as the WIPO DAS access code. The access code is provided securely to the applicant either by the first office of filing or by the WIPO itself. Participating offices that the USPTO may retrieve certified priority documents from, as of November 1, 2017, include the offices of Australia, Denmark, Eurasia, Estonia, Spain, Finland, United Kingdom, the International Bureau, Japan, Morocco, New Zealand, and Sweden. Beginning December 1, 2017, Brazil will also be a participating WIPO DAS office.
Use of the PDX program by participants may take the form of either the direct bilateral exchange or WIPO DAS, but not both. The KIPO and SIPO are both participating WIPO DAS offices, but priority document exchange between those offices and the USPTO occurs only under the direct bilateral exchange and not the WIPO DAS exchange. Beginning October 1, 2017, the JPO will also be added to this list and the electronic retrieval by the USPTO will be managed by the WIPO DAS exchange as well. Accordingly, for applications filed on or after October 1, 2017, claiming priority to a Japanese patent application, the applicant must be cognizant that a WIPO DAS access code will be required in addition to the priority claim itself to have the certified priority documents retrieved electronically.