Using the WIPO Digital Access Service for Priority Documents (DAS) to Meet PCT Priority Document Requirements

Urgent reminder regarding the three required steps in all cases

Since 1 January 2010, it has been possible for applicants to request the International Bureau (IB) to retrieve a copy of an earlier application from DAS for use as a priority document (see PCT Newsletter No. 01/2010).  When doing this, it is important to complete all of the following steps within 16 months from the priority date:

(1)     Request the Office with which the earlier application was filed to make the application available to DAS (the particular arrangements for this vary amongst the participating Offices – you should check on the Office’s website for details).

At present, the following Offices offer this service:

            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 (for PCT applications filed with RO/IB)
            JP     Japan Patent Office
            KR    Korean Intellectual Property Office
            US    United States Patent and Trademark Office

If your earlier application was filed with any other receiving Office, you will probably not be able to use this service and will need to either provide a conventional certified copy or else, where relevant, ask the receiving Office to supply a copy under PCT Rule 17.1(b).

(2)     Go to the DAS web portal at:

             https://webaccess.wipo.int/priority_documents/en/

and use the “Update Access Control List” tab to give the IB access to that earlier application.

(3)     Request the IB to retrieve the document, either by checking the box in Box No. VI of the paper request form or by sending a letter to the IB (for an example of the wording which may be used in such a letter, see PCT Newsletter No. 02/2010, pages 4 and 5).  The equivalent functionality in PCT-SAFE will be added in the April 2010 release.

Additional requirements imposed by certain DAS participating Offices

For earlier applications filed with the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO) and the United States Patent and Trademark Office (USPTO), no information about the earlier application will be released to the DAS system by any of those Offices until you first go to WIPO’s DAS portal and confirm registration of the application using the secure access control code.  However, in the case of the USPTO, please note that the applicant must have already submitted written authorization (for example, Form PTO/SB/39 or PTO/SB/01) in respect of any unpublished earlier application prior to registering the application in DAS.  Once the registration is completed and you have received a confirmation e-mail stating that the registration was successful, you will be able to update the access control list in DAS.

Applicants who are familiar with the priority document exchange schemes between the EPO, JPO, KIPO and USPTO will note that this involves more steps than are required for exchange between those Offices.  This is necessary to assure both the Offices joining the system and applicants that no access to an application will be given to any Office unless it has been specifically authorized by the applicant.

US applicants should note that filing Form PTO/SB/39 or PTO/SB/01 at the USPTO (permitting WIPO to access a US application) does not replace the step of using WIPO’s DAS portal to confirm that the IB is permitted to access the document for PCT purposes.  Until this final step is completed, the earlier application is available only within the DAS system itself, but cannot be accessed.  The IB, in its role in administering the PCT, is only able to access documents from DAS in the same way as any national Office, that is, on the basis of a specific permission having been given by the applicant through the access control list on WIPO’s DAS portal.