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USPTO Begins New Electronic Priority Document Exchange Program (19 January 2007)

Posted by Kristen Cichocki at January 20, 2007 02:51 PM

USPTO Begins New Electronic Priority Document Exchange Program

(19 January 2007)

On January 16, 2007, the United States Patent and Trademark Office, along with the European Patent Office (EPO), implemented a new service to allow certified copies of patent application priority documents to be exchanged between the two offices electronically. Priority documents have to be filed when applicants wish to claim an earlier application filing date in one patent office based on a prior filing in another. The new service, which is free of charge to applicants, is the result of a 2005 agreement between the USPTO and the European Patent Office. Priority document exchange will get underway between the USPTO and the Japan Patent Office (JPO) later this year. Information on how to use the system can be found below.

Under the Paris Convention for the Protection of Industrial Property, a treaty that provides a number of important rights for innovators, a patent applicant may file an application in one Paris Convention member country (the priority document), and within 12 months, file corresponding applications in other member countries, while obtaining the benefit of the first application's filing date. This 12-month period allows applicants to make important decisions about where to file subsequent applications to seek protection for their inventions. Paris Convention filings are a critical component in many applicants' global business and patenting strategies and represent a substantial portion of worldwide patent activity. In order to obtain the benefit of an earlier filing, however, applicants are generally required to file paper copies of the priority document in each of the later-filing offices at their own expense. The new service allows the USPTO and EPO, with appropriate permissions, to obtain electronic copies of priority documents filed with the other office from its electronic records management system at no cost to the applicant.

This electronic exchange of copies of priority documents promotes sharing of information between the intellectual property offices and reduces the administrative costs associated with handling paper copies of priority documents and scanning them into the offices' electronic image record management systems.

Forms (PTO/SB/38 and PTO/SB/39) and instructions are available on the USPTO's Web site: http://www.uspto.gov/web/forms/index.html#patent . Applicants are strongly encouraged to check the Patent Application Information Retrieval (PAIR) system to determine whether the USPTO successfully retrieved the priority document. The applicant will be notified if the retrieval attempt is unsuccessful and that a paper copy of the certified copy of the priority document must be provided before the U.S. application issues as a patent.

For further information, see Federal Register Notice: http://www.uspto.gov/web/offices/com/sol/notices/72fr1664.pdf

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