PCT NEWSLETTER

PATENT COOPERATION TREATY

January 2010 | No. 01/2010

 

WIPO Digital Access Service for Priority Documents (DAS)

 With effect from 1 January 2010, the International Bureau (IB) is able to retrieve priority documents through the WIPO Digital Access Service for Priority Documents (DAS) for use with international applications filed under the PCT.  A notification to this effect was made on 30 December 2009 and can be found under the heading “Notification by the International Bureau” at:

http://www.wipo.int/patentscope/en/pdocforum/participating.html

This means that a PCT applicant can request the IB to retrieve a copy of an earlier application from DAS for use as a priority document, instead of having to provide a certified copy, as long as:

(a)     the document in question has been added to DAS by a participating "depositing Office" (see below);  and

(b)     the applicant has indicated that the International Bureau should have access to that document, using the applicant portal at: https://webaccess.wipo.int/priority_documents/en/ 

Background

The Offices ("depositing Offices") which currently allow applicants to make applications available to DAS are as follows:

AU – Australian Patent Office

ES – Spanish Patent and Trademark Office

GB – United Kingdom Intellectual Property Office (an operating name of the Patent Office)

IB – International Bureau of WIPO (for PCT applications filed at RO/IB)

JP – Japan Patent Office

KR – Korean Intellectual Property Office

US – United States Patent and Trademark Office

Several more Offices are expected to join this system in the near future.  Details of how to request any particular depositing Office to make a document available to DAS are available from the respective websites of those Offices.

The legal basis for recognition of priority documents retrieved by the IB through DAS is PCT Rule 17.1(b-bis)(ii) in conjunction with Sections 715 and 716 of the Administrative Instructions under the PCT, which entered into force on 1 January 2010 (see “Modifications to the Administrative Instructions under the PCT”, below).

The service under PCT Rule 17.1(b), whereby the receiving Office, where it has issued a priority document, prepares a copy of the priority document and sends it directly to the IB, continues to apply and is not affected by the addition of this complementary service.

Using DAS for International Applications under the PCT

The IB will recognize requests to obtain documents from DAS for any international application for which the 16-month time limit under PCT Rule 17.1(b-bis) has not yet expired on 1 January 2010, provided that the applicant has taken all the necessary steps to ensure that the application has been made available to the IB through the Service.  Notably, as well as making sure that the document is available to DAS, the applicant needs to check the box in the applicant Web portal indicating that the IB is permitted access to that document.  Otherwise, the IB will not be able to retrieve the document.

The IB does not charge any fee for this service, though the depositing Office may charge a fee for making the priority document available to the system in the first place.

Making the Request

A request for the International Bureau to obtain a priority document from the Digital Access Service can be made in the following ways:

1.      Paper applications

Tick the relevant check box(es) in Box No. IV (“Priority Claim”) of the request form (Form PCT/RO/101), as in force from 1 January 2010, available from:

http://www.wipo.int/pct/en/forms/request/ed_request.pdf

2.      Electronic applications and PCT-EASY filings

Pending the implementation of equivalent check-boxes in PCT-SAFE, include a letter to the IB, clearly requesting that some or all of the priority documents be retrieved using the Digital Access Service.  The content of the letter should preferably be as follows, and should not deal with any other matters:

"The International Bureau is requested to retrieve [the priority document(s)] [the following priority document(s)] for this international application using the WIPO Digital Access Service for Priority Documents."

If only certain of the documents are available through this system, the letter should specify which priority documents are to be retrieved that way and that the other documents will either be forwarded by the receiving Office or else provided as certified copies in the conventional way.

Such a letter can be included in an application prepared using PCT-SAFE as follows:

(a)     In the “Contents” tab, select “Accompanying Items”.

(b)     Select “Other” from the drop-down list of item types and type “p-doc retrieval” in the
box to describe the item.

(c)     (i)  If filing a fully electronic application using PCT-SAFE, double-click on the item which appears in the “Content Details” list to open a dialog box allowing the file containing the letter to be attached (this should preferably be in PDF format where this is accepted by the relevant receiving Office, otherwise in JPEG or TIFF format).

          (ii)  If filing a PCT-EASY or PCT EASY/EFS-Web application, double-click on the item and indicate that the document is enclosed.

3.      International applications which have already been filed

Send a letter, which must reach the IB prior to 16 months from the priority date, quoting the international application number and clearly requesting that some or all of the priority documents be retrieved using the Digital Access Service.  The content of the letter should preferably be as follows and be clearly marked as a separate section if any other issues are dealt with:

"The International Bureau is requested to retrieve [the priority document(s)] [the following priority document(s)] for international application PCT/XXyyyy/nnnnnn using the WIPO Digital Access Service for Priority Documents."

Help

Support is available from the PCT-SAFE Help Desk (pctsafe.help@wipo.int), which acts as focal point for DAS-related issues as well as for PCT-SAFE.

 

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