WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Fulfilling the requirement to furnish priority documents

Q: I am going to file a PCT application claiming priority of an earlier national application. What are my options under the PCT for furnishing the priority document?

A: It is recalled that, in accordance with PCT Rule 17.1, where the priority of one or more earlier applications are claimed in the international application, the applicant must provide certified copies of each earlier national application (the "priority document"). The following options are available to applicants for complying with this requirement, as described below. Please note, however, that not all options will be available in all cases.

Requesting the receiving Office to prepare and transmit the priority document

One option, where the earlier application was filed with the same Office as the one acting as receiving Office for the international application, is to simply request the receiving Office to prepare and transmit the priority document to the International Bureau (IB) under PCT Rule 17.1(b). You can do this by checking the corresponding box in Box No. VI of the request form (PCT/RO/101) ("Priority Claim and Document"). Such a request should be made no later than 16 months after the priority date. When preparing the international application using ePCT1 (https://pct.wipo.int), on the "Priority claims" screen the option for the receiving Office to prepare and transmit the priority document is automatically set in cases where the priority application added was filed with the same Office as the selected receiving Office. Please note that some receiving Offices charge a fee for furnishing the priority document (please refer to the PCT Applicant's Guide, Annex C, for details of any fees charged by your receiving Office).

Using the WIPO Digital Access Service

Another option is to make use of the WIPO Digital Access Service (DAS). DAS enables you to request the IB to retrieve an electronic certified copy of an earlier application for use as the priority document, provided that the Office of filing of the earlier application (OFF) is a DAS depositing Office. DAS is particularly useful in cases where the receiving Office is not the OFF, and so PCT Rule 17.1(b) cannot be relied upon. You should therefore check whether the OFF is a depositing Office - the following list shows the two-letter country codes of the 34 Offices that are currently participating in DAS:

AR, AT, AU, BE (accessing office only), BR, CA, CL, CO, CN, DK, EA, EE, EP, ES, EUIPO (for industrial design applications only), FI, FR (depositing office only), GB, GE, IB, IE (accessing office only), IL, IN, IT (depositing office only), JP, KR, LV, MA, MX, NL, NO, NZ, SE and US

For further details, please refer to:

https://www.wipo.int/das/en/participating_offices/

If it is possible for you to make use of DAS and you wish to do this, the first step is to request the OFF to provide a copy of the earlier application to DAS (if it has not already done so). How you will do this will depend on the specific requirements of the OFF. Further information can be found at:

https://www.wipo.int/das/en

and in the information published about your OFF in the corresponding part of Annex B of the PCT Applicant's Guide:

/pct/en/guide/index.html

Once the copy of the earlier application is available in DAS you will receive a DAS code relating to that earlier application. Alternatively, a code that was given to you when the earlier application was processed will become available for use as an access code. For example, for US applications, the access code is the confirmation number indicated on the EFS-Web Electronic Acknowledgement Receipt of the earlier application.

The next step is to request the IB to retrieve the priority document for the file of the international application by checking the corresponding box in Box No. VI of the request form (PCT/RO/101) and providing the access code for the earlier application. When preparing the international application using ePCT, select the option "International Bureau to obtain from a digital library (DAS)" in the "Priority claims" screen and type in the access code. ePCT performs a real-time look-up in DAS to validate the access code and check that the priority document in question is available in the digital library. If the validation is successful, the priority document will be automatically retrieved by the IB's processing system upon receipt of the record copy. Although it is preferable to request the IB to retrieve the priority document at the time of filing, you can also make such a request via ePCT after filing, by signing in with strong authentication and using the online Action "Obtain priority document from DAS".

More detailed information on requesting an OFF to make a priority document available in the DAS system, and on requesting the IB to retrieve a priority document available in DAS was published in the Practical Advice in PCT Newsletter Nos. 11/2019 and 12/2019 at, respectively:

https://www.wipo.int/edocs/pctndocs/en/2019/pct_news_2019_11.pdf

https://www.wipo.int/edocs/pctndocs/en/2019/pct_news_2019_12.pdf

and detailed information is also set out on the DAS website at:

https://www.wipo.int/das/en/description.html

The time limit to request the IB to retrieve the priority document from DAS under PCT Rule 17.1(b-bis) is aligned with PCT Rule 17.1(a)2, so the time limit is considered to be met if:

- all the necessary steps have been taken with the Office of earlier filing; and

- a valid request with the access code is made to the IB before the date of publication of the international application.

Note that the IB will not charge a fee for retrieving a priority document from DAS.

Furnishing the priority document directly to the IB yourself

Finally, if you are already in possession of a certified copy of the earlier application, you could transmit it to the IB yourself. Provided that the certified copy is in electronic format (PDF) and digitally signed with the certificate of the issuing Office concerned, the most efficient way to do this is to log in to ePCT (with or without strong authentication) and submit it to the IB using the "Upload documents" function. At the time of writing, the only Offices that issue certified copies suitable for this purpose are:

- AT - Austrian Patent Office

- BR - National Institute of Industrial Property (Brazil)

- CZ - Industrial Property Office of the Czech Republic

- FR - National Institute of Industrial Property (INPI) (France)

- IT - Italian Patent and Trademark Office

- PL - Patent Office of the Republic of Poland

- PT - National Institute of Industrial Property (Portugal)

- US - United States Patent and Trademark Office (USPTO)

If none of the above options is available to you for some reason, the certified copy of the priority document could be sent directly to the IB by courier or postal service, although the IB does not encourage the transmittal of documents in this way.

  1. Please note that if you are filing the international application with the United States Patent and Trademark Office as receiving Office, and you prepare the international application using ePCT, you must create and download the ePCT Filing data package for subsequent submission to the RO/US system independently of ePCT.
  2. It is recalled that, under PCT Rule 17.1(a), the priority document should be submitted by the applicant to the IB or to the receiving Office not later than 16 months after the priority date, provided that any copy of the earlier application which is received by the IB after the expiration of that time limit will be considered to have been received by the IB on the last day of that time limit if it reaches it before the date of international publication of the international application.