This site provides useful information for applicants that wish to take advantage of the electronic priority document exchange (PDX) program. Use of PDX avoids the fee associated with ordering a certified priority document for each office of subsequent filing and the costs of transmitting those certified copies to foreign associates or foreign intellectual property (IP) offices. The United States Patent and Trademark Office (USPTO) transmits certain U.S. priority applications as-filed to any foreign IP office that participates in the priority document exchange program (participating office) and retrieves/accesses certain foreign priority applications as-filed from the participating offices. The priority document exchange program includes two modes of exchange: Direct Bilateral Exchange and World Intellectual Property Organization Digital Access Service (WIPO DAS) Exchange.
Overview of participation by the USPTO
The European Patent Office (EPO) and the USPTO exchange priority documents via Direct Bilateral Exchange. The USPTO also exchanges priority documents with other foreign IP offices via the WIPO DAS Exchange (see WIPO DAS Exchange with Participating Offices below). The two modes of exchange are mutually exclusive. It is important to note that while the EPO is a WIPO DAS participating office, the USPTO priority document exchange with the EPO occurs under the Direct Bilateral Exchange, not the WIPO DAS Exchange.
Access to U.S. applications by participating offices
AUTHORIZATION TO PERMIT ACCESS
Access to a U.S. priority application may be provided to a participating office pursuant to 37 CFR 1.14(h)(1) if the application contains written authority granting such access. The ADS form (PTO/AIA/14) includes a section allowing applicants to provide the USPTO with authorization to permit a participating office access to a U.S. priority application. To be effective, the ADS form containing the appropriate authorization language must be properly signed and be submitted with the filing of the U.S. priority application.
Please note that an ADS submitted after the filing of an application CANNOT be used to provide or rescind the authorization to permit access. Instead, applicants should use form PTO/SB/39 (or an applicant-generated equivalent) to provide or rescind the authorization for access under 37 CFR 1.14(h)(1) after the filing of the application.
FILING RECEIPT INDICATION OF AUTHORIZATION TO PERMIT ACCESS
The filing receipt of the U.S. application will indicate whether applicant has provided written authority for access pursuant to 37 CFR 1.14(h)(1). Applicants should inspect the application filing receipt and request a corrected filing receipt if authorization for access under 37 CFR 1.14(h)(1) was incorrectly captured.
LIMITATIONS OF AUTHORIZATION
An authorization to permit access will not be recorded in international applications filed with the United States Receiving Office (RO/US). Therefore, for these applications, the applicant must use alternative methods to obtain and transmit the certified copies to foreign IP offices.
ACCESS VIA DIRECT BILATERAL EXCHANGE
For Direct Bilateral Exchange participating offices where a subsequently filed application claims priority to an earlier filed U.S. application in which authorization for access is given, the applicant must provide the U.S. application number and filing date.
ACCESS VIA WIPO DAS EXCHANGE
For WIPO DAS accessing offices where a subsequently filed application claims priority to an earlier filed U.S. application in which authorization for access is given, the applicant must provide the U.S. application number, filing date, and the WIPO DAS access code (i.e., the 4-digit confirmation number indicated on the filing receipt and electronic acknowledgement receipt of the U.S. application).
The International Bureau, in its capacity as a WIPO DAS accessing office, may access U.S. applications in which authorization for access is given. Therefore, for international applications filed under the Patent Cooperation Treaty (PCT), irrespective of the receiving office chosen, an applicant may request the IB to retrieve via the WIPO DAS Exchange a copy of an earlier U.S. application to which priority is claimed and in which authorization for access is given (PCT Rule 17.1(b-bis)). In such case, the applicant must claim priority to the earlier U.S. application and provide the WIPO DAS access code (i.e., the 4-digit confirmation number) for the earlier U.S. application (see Box No. VI of the Request (Form PCT/RO/101)).
NOTE: For international applications filed with the RO/US, the applicant should check the appropriate item in Box No. VI of the Request (Form PCT/RO/101) to request the RO/US to prepare and transmit to the International Bureau a certified copy of any earlier U.S. application to which priority is claimed (PCT Rule 17.1(b)). This service is independent from the PDX program.
Retrieval of foreign priority applications by the USPTO
DIRECT BILATERAL EXCHANGE WITH PARTICIPATING OFFICES
The USPTO is able to retrieve utility patent applications filed with the following participating offices:
• (EP) European Patent Office (EPO) effective January 16, 2007
NOTE: International applications filed under the PCT and design applications are not exchanged via Direct Bilateral Exchange.
WIPO DAS EXCHANGE WITH PARTICIPATING OFFICES
By notification on April 20, 2009, the USPTO expanded its PDX program by agreement with the World Intellectual Property Organization (WIPO) to participate in the multilateral exchange of certain priority documents with other IP offices participating in the WIPO Digital Access Service (DAS) for Priority Documents. The list of WIPO DAS participating offices and information concerning the scope of available priority documents are maintained by the WIPO.
For successful retrieval, it is important that the foreign priority claim identify the country/office code and the foreign priority application number in the recommended format.
The participating offices, the types of applications that may be available for retrieval by the USPTO from each participating office, and the recommended application number formats for each participating office are set forth in the table below:
Table of WIPO DAS participating offices (as of January 01, 2021)
|National/ Regional||Utility Model||Industrial Design||Hague International Design||PCT International||Participating Office||Recommended Application Number Format|
|AR||AR|| || || ||Argentina||PYYYY01NNNNN|
|AT||AT||AT|| ||RO/AT||Austria||A NNNNN/YYYY|
|AU|| ||AU|| ||RO/AU||Australia||YYYYNNNNNN|
|BR|| ||BR|| ||RO/BR||Brazil||10YYYYNNNNNNN|
| || ||CA|| || ||Canada||NNNNNN|
|CN||CN||CN|| ||RO/CN||People's Republic of China||YYYY-1NNNNNNN.X|
|DK|| || || ||RO/DK||Denmark||PA YYYY NNNNN|
|EA|| || || ||RO/EA||Eurasian Patent Organization||YYYYNNNNN|
|EE||EE|| || || ||Estonia||PYYYYNNNNN|
| || ||EM|| || ||European Union Intellectual Property Office||NNNNNNNNN-NNNN|
|FI||FI|| || ||RO/FI||Finland||YYYYNNNN|
|FR||FR|| || ||RO/FR||France||YYNNNNN|
|GB|| || || || ||United Kingdom||YYNNNNN.X|
|GE||GE||GE|| ||RO/GE||Georgia||AP YYYY NNNNN|
AD YYYY NNNNN
| || || |
IB (Practice Tip #5)
|RO/IB||International Bureau of the World Intellectual Property Organization|
|IL|| ||IL|| ||RO/IL||Israel||NNNNNN|
|IN|| ||IN|| ||RO/IN||India||YYYYNNNNNNN|
|JP||JP||JP|| || ||Japan||YYYY-NNNNNN|
|KR||KR||KR|| || ||Republic of Korea||10-YYYY-NNNNNNN|
|MA|| || || ||RO/MA||Morocco||NNNNN|
|NL|| || || ||RO/NL||Netherlands||NNNNNNN|
|NO|| ||NO|| ||RO/NO||Norway||YYYYNNNN|
|NZ|| || || || ||New Zealand||NNNNNN|
|SE|| || || ||RO/SE||Sweden||YYNNNNNN|
NOTE: The EPO is a WIPO DAS participating office. However, the USPTO priority document exchange with the EPO (and the RO/EP) occurs under the Direct Bilateral Exchange, not the WIPO DAS Exchange (see Direct Bilateral Exchange with Participating Offices, above).
The retrieval process for electronic priority document exchange includes several practice tips that will help applicants promptly identify potential problems. If retrieval fails applicants remain responsible for the submission of the certified copy of the foreign application.
For foreign applications (to which priority is properly claimed in a U.S. application) filed in a participating foreign IP office, automatic retrieval will be attempted by the USPTO when the U.S. application is released from the Office of Patent Application Processing. For automatic retrieval by the USPTO via the WIPO DAS Exchange, the applicant also must provide to the USPTO the WIPO DAS access code for the priority application. The “Foreign Priority Information” section of the ADS form includes an Access Code field for this purpose.
A separate written request to retrieve is required under 37 CFR 1.55(i)(4) where a certified copy of a foreign application (to which priority is claimed in a U.S. application) filed in a nonparticipating foreign IP office is contained in an EP or JP application file. The applicant must use form PTO/SB/38 (or an applicant-generated equivalent) to identify the EP or JP application as well as the nonparticipating office certified copy contained in that EP or JP application file. For example, where the applicant claims priority to a DE (German Patent and Trademark Office) application, a certified copy of which is contained in an EP application the applicant can file form PTO/SB/38 and, under Option A of that form, request the USPTO to obtain from the EP application file (indicate the country, application number, and filing date) an electronic copy of the certified copy of the DE application (indicate the country and application number).
FILING RECEIPT INDICATION THAT RETRIEVAL WILL BE ATTEMPTED BY THE USPTO
The U.S. application filing receipt will indicate whether applicant has complied with a request to retrieve pursuant to 37 CFR 1.55(i). Applicants should inspect the application filing receipt and request a corrected filing receipt if a request to retrieve under 37 CFR 1.55(i) is incorrectly captured.
• For Direct Bilateral Exchange, the following paragraph will appear on the filing receipt:
Request to Retrieve – This application either claims priority to one or more applications filed in an intellectual property Office that participates in the Priority Document Exchange (PDX) program or contains a proper Request to Retrieve Electronic Priority Application(s) (PTO/SB/38 or its equivalent). Consequently, the USPTO will attempt to electronically retrieve these priority documents.
• For WIPO DAS Exchange, the WIPO DAS access code is required. When the WIPO DAS access code is provided, “Access Code Provided” will appear on the filing receipt for the relevant foreign application as well as the “Request to Retrieve” paragraph. When the WIPO DAS access code is not provided, “No Access Code Provided” will appear on the filing receipt for the relevant foreign application.
CERTIFIED COPY REQUIREMENT FOR INTERNATIONAL APPLICATIONS ENTERING THE U.S. NATIONAL PHASE UNDER 35 U.S.C. 371
For a majority of international applications filed under the PCT, the applicant has complied with the certified copy requirement during the international phase by submitting the certified copy to the International Bureau as set forth in PCT Rule 17.1(a), (b) and/or (b-bis). When the applicant submits a U.S. national phase application the USPTO in its capacity as a designated/elected office receives directly from the International Bureau a copy of the priority documents furnished during the international phase, along with the other national phase documents. The copy of a priority document received directly from the International Bureau satisfies the requirement for a certified copy in the national phase application. Receipt of the priority document from the International Bureau should be acknowledged on the notice of acceptance (Form PTO/DO/EO/903). This service is independent from the PDX program.
For the few international applications filed under the PCT where the applicant has not complied with the certified copy requirement during the international phase, the applicant may wish to satisfy the certified copy requirement by using the Direct Bilateral Exchange or the WIPO DAS Exchange of the PDX program as discussed above.
Practice tips for priority document exchange