PCT Newsletter 11/2019: Practical Advice

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.

Furnishing priority documents using the WIPO Digital Access Service (DAS) – Part I:  Requesting an Office of First Filing to make a priority document available in the DAS system

Q:  I am going to file a national patent application with my national patent Office, and would like to make that application available as a priority document for a future international application using DAS – do I specifically have to request the national Office to make the document available, and if so, how do I do this?

A:  DAS offers a secure, reliable and legally authentic electronic exchange of documents with all other Offices participating in the service, and can be used in many cases to meet priority document requirements under the PCT in accordance with PCT Rule 17.1, as well as those under other treaties and laws.  Using DAS is particularly useful in cases where the PCT application is not filed with the same Office with which the earlier application was filed, and PCT Rule 17.1(b) cannot be relied upon.  If you are going to claim priority of an earlier‑filed national application in an international application, and are able to make use of the DAS system (see below for further information on eligibility), you can simply request the International Bureau (IB) to retrieve a copy of that earlier application from DAS, provided that the certified copy of the earlier application (priority document) has been made available in DAS (PCT Rule 17.1(b-bis)). 

It is important to note that, in order for you to make your earlier application available as a priority document under DAS, the Office with which you are filing it (known as the Office of First Filing (OFF)) must be a “depositing Office” under DAS. 

The Offices of the following countries are currently depositing Offices for national or regional applications, as the case may be, and PCT applications filed with them in their capacity as PCT receiving Office:  Australia, Brazil, Chile, China, Denmark, Finland, Georgia, India, Israel, Morocco, the Netherlands, Spain and Sweden, as well as the following regional Offices:  the Eurasian Patent Office and the European Patent Office;  the IB is a depositing Office for PCT applications filed with it in its capacity as receiving Office. 

The Offices of the following countries are currently depositing Offices for national applications only:  Estonia, Japan, New Zealand, the Republic of Korea, the United Kingdom and the United States of America. 

Other Offices are at various stages of preparation to join the DAS system and are expected to join in the future. 

There are two main steps that you must take in order to arrange for the priority document to be made available in DAS to the IB:

  1. Request the OFF to deposit a copy of the earlier application in DAS.
  2. When you later file your international application, request the IB to retrieve the priority document from DAS.

This Practical Advice will concentrate on the first stage – requesting the OFF to make the priority document available in the DAS system.  The second stage will be explained in more detail in the Practical Advice published in the next issue of the PCT Newsletter

Some DAS depositing Offices will allow any patent application filed at their Office to be entered into the system, while other Offices offer the service only for a limited range of applications, for example, for those which have been filed in electronic form.  The relevant scope for each participating Office is outlined in each Office's notification on WIPO’s DAS website at:

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

The exact means of requesting the OFF to deposit a copy of the earlier application to the DAS digital library will also depend on the requirements of the OFF concerned, for example some Offices require the applicant to complete a special form for this purpose.  Many Offices have provided information on their particular requirements on their websites, and information on each Office’s requirements, where available, can also be found on the above‑mentioned WIPO website.  Where the Office concerned has provided the IB with the relevant link to their website, that link is published in the corresponding part of Annex B1 of the PCT Applicant’s Guide

As far as the United States Patent and Trademark Office (USPTO) is concerned, applicants should be aware that applications filed with the USPTO, which acts as a DAS depositing Office, will systematically be made available in DAS and will therefore be accessible to participating Offices where the application contains written authority granting such access.  Note that the USPTO’s Application Data Sheet (ADS) form (PTO/AIA/14) includes a section which authorizes access to a copy of the application as‑filed by participating Offices unless the applicant specifically opts out of such authorization.

After you have requested the OFF to make the priority document available in DAS (where necessary), the OFF will prepare an electronic copy of the priority document and register it with DAS.  You will receive an access code from either the IB or the OFF.  Alternatively, a code that was given to you as part of the application process will become available for use as an access code.  For example:

  • in the case of an earlier application filed with the European Patent Office (EPO), if the applicant files via Online Filing (EOLF) or new online filing (CMS), the EPO will automatically generate a DAS access code and add it to the acknowledgement of receipt issued for the request for grant of a European patent or for the PCT request form, in the case of an international application; otherwise, the code will be sent automatically in a separate notification (further information is available at:  epo.org/law-practice/legal-texts/official-journal/2019/03/a27.html). 
  • in the case of an earlier application filed with the Japan Patent Office (JPO) via JPO PAS, the priority document will automatically be registered in DAS, and the access code will be indicated on the online filing receipt; otherwise, for paper filings the applicant should send a written request to the JPO to issue the DAS access code (further information is available at:  jpo.go.jp/e/system/patent/shutugan/yusen-epdx/e_das_first.html);
  • in the case of an earlier application filed with the USPTO, the confirmation number indicated on the original filing receipt and electronic acknowledgement receipt will become available for use as an access code (further information is available at: www.uspto.gov/patents-getting-started/international-protection/electronic-priority-document-exchange-pdx).

The access code will enable you to request the Office of Second Filing, with which you file an application claiming priority of the earlier application, to retrieve a copy of the priority document. 

Note that, in the case of a PCT application that claims the priority of an earlier filed PCT application, the DAS route can be used to retrieve a copy of the priority document, provided that the Office that acted as receiving Office for the earlier application makes international applications available to the DAS system.  Even though, in this situation, the IB is already in possession of the earlier filed PCT application, it is still necessary to request its transmission in a manner equivalent to a national application before the priority document requirements can be considered to have been met. 

If the IB as receiving Office (RO/IB) is the OFF and the application is prepared using ePCT‑Filing, the best practice is to check the box: “The receiving Office is requested to make this international application available to the Priority Document Access Service (DAS)”.  To make such a request after filing, you can select in ePCT the Action “Make international application available to DAS”.  It is also possible to request RO/IB to register an application into DAS by means of a letter, preferably uploaded via ePCT.  Once the earlier application has been registered, RO/IB will send to the applicant a unique access code via Form PCT/RO/132.

For further information on using DAS with the PCT, please refer to the information published at:

www.wipo.int/das/en/pdf/pct_and_das.pdf

Please be aware that you should not use DAS in the following situations:

  • if the OFF is not a DAS participating Office, or
  • if there is a limitation at the OFF excluding your application from the service (for example, if the OFF requires that the application be filed in electronic form and your application was not filed in electronic form).

If you are filing your international application at the receiving Office where the earlier application was filed (whether as an earlier national or international application), you may prefer to simply request the receiving Office to prepare and transmit a copy of the earlier application in the “conventional” way under PCT Rule 17.1(b).

Further information on providing priority documents through DAS will be published in PCT Newsletter No. 12/2019.