Electronic Priority Documentation Comes to the USPTO

Effective January 16, 2006, the U.S. Patent and Trademark Office has revised its rules of practice to provide for the electronic transfer of certified copies of applications for which priority is claimed under the Paris Convention (priority applications) from other participating intellectual property offices (e.g., JPO and EPO) with which the Office has negotiated priority document exchange agreements. The Office is also revising the rules of practice to permit applicants to request that the Office permit other participating intellectual property offices to electronically retrieve certified copies of United States patent applications without payment of a fee. The Office has provide two new forms for applicants to:

1. Request that the Office retrieve an electronic copy of an earlier filed foreign application (PTO/SB/38); and
2. And authorization to permit other participating intellectual property offices to retrieve an electronic copy of an application filed in the Office (PTO/SB/39).

(Why the forms are not already in fillable PDF format is beyond me. I would be happy to convert them if they would just ask.)

Upon receipt of a timely filed request, the Office anticipates that at least two attempts will be made to retrieve a copy of the foreign application from the participating office. The copy of the foreign application must be "received by the Office" during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. This time period is not extendable.

Applicants should consult the private Patent Application Information Retrieval (PAIR) system to determine if the copy of the foreign application was retrieved by the Office. Applicants are encouraged to contact the Electronic Business Center, rather than the examiner, if the counterpart foreign application has not been entered in the application file.

The copy of the counterpart foreign application retrieved by the Office will be included in the Office’s IFW system records pertaining to the application for which the counterpart foreign application was requested. Applicants will be able to inspect the counterpart foreign application through the private PAIR system. In addition, once the application has been published under 35 U.S.C. 122(b) or issued as a patent, any member of the public will be able to inspect the counterpart foreign application through the public PAIR system.

The direct electronic exchange of copies of priority documents is an exception to the requirement that applicant must provide a certified copy of a counterpart foreign application to be entitled to a right of priority under 35 U.S.C. 119(a)–(d). If an applicant makes a proper request and an electronic copy of the counterpart foreign application is imported from another participating intellectual property office by the Office, the obligation to provide a certified copy of the foreign application would be satisfied. Of course, the applicant may be required to provide an English-language translation of a non-English language foreign application under certain circumstances or such other information as the Director considers necessary.