Practice Tip: Pitfalls of Priority Document Exchange

By James G. McEwen[1]

Background

The Paris Convention for the Protection of Industrial Property allows foreign applicants to claim priority in aUnited Statespatent application to a foreign patent application.  The Paris Convention is implemented at 35 U.S.C. §119.  In order to claim this benefit, 35 U.S.C. §119 requires applicants to complete at least two tasks: 1) making a claim for priority, and 2) filing a certified copy of the foreign priority application.  Ideally, this claim is made during the pendency of theU.S.application.  It is the applicant’s responsibility to ensure that these requirements are met.

If either the claim or the priority document is not filed while the application is pending, it is still possible to rescue the priority claim by filing a reissue application.  MPEP 201.16 (noting reissue applications can be used to perfect priority claims, whereas certificates of correction cannot).  However, this is not a preferred method since reissue applications can be complex to prepare and are expensive to file.  Therefore, it is important for applicants to ensure that both the claim for priority and the certified copy of the foreign priority document are timely filed while theU.S.application is pending.

Traditionally, an applicant complied with these requirements by obtaining a certified copy of the foreign priority document, shipping the certified copy to aU.S.patent attorney, and theU.S.patent attorney would file the certified copy.  This process therefore incurred fees for both obtaining the certified copy, and shipping the certified copy.  Moreover, the United States Patent and Trademark Office (USPTO) was forced to store such documents in their files and repositories.  Also, where the application is stored in the image file wrapper, USPTO was forced to disassemble the certified copy and scan the certified copy.  Therefore, the process incurred a number of costs on both the applicant and the USPTO.

Overview of the PDX Program

In order to reduce these costs, the USPTO implemented the Priority Document Exchange (PDX) program. Under this program, the USPTO entered into Memoranda of Understanding with select counties which allow the USPTO to directly retrieve electronic copies of the foreign priority documents.  Therefore, the applicant is not required to separately submit certified copies of foreign priority documents, and the USPTO no longer has to store and scan filed certified copies of foreign priority documents.   Additional information on the program can be found on the United States Patent and Trademark Office website at: http://www.uspto.gov/web/patents/pdx/pdx.html

Currently, only the Japanese, Korean, and European patent offices participate in the PDX Program.  Additionally, priority documents can also be obtained from those already filed with the World Intellectual Property Office for PCT applications.  As such, the PDX program only applies to select foreign patent offices.

Drawbacks of the PDX Program

Assuming that the foreign priority application is on file with a participating foreign patent office, in order to electronically retrieve the foreign priority application, an applicant is required to submit a request for retrieval.  The request can be included in the Declaration or on the Application Data Sheet.  The request can be also separately made by filing a separate form: Request to Retrieve Electronic Priority Application (form PTO/SB/38).  Thus, there are multiple mechanisms allowing the applicant to submit the request. 

However, merely filing the form PTO/SB/38 or including the request in Declaration or Application Data Sheet does not guarantee that the foreign priority application will be retrieved.  For instance, the Declaration might be a scanned or facsimile copy, and the application number may not be clear.  The application number might be in a format that is not recognized by the foreign patent office.  If the requested foreign priority document is too large (1000 pages), the request will be denied.  As such, there are multiple opportunities which may interfere with the retrieval of the priority document. 

Moreover, the USPTO will not guarantee that the retrieval will be in a timely fashion, and estimates that the process itself can take months after the request is made. 

Best Practices to Resolve Problems with the PDX Program

Since the applicant is ultimately responsible for ensuring that the correct priority application is retrieved during the U.S. application’s pendency, the USPTO indicates that the requests needs to be made early.  This is because the USPTO estimates that each electronic retrieval can take months to complete.  Therefore, it is important that the first attempt at a retrieval be done early.

Ideally, the request is contained in the Declaration or Application Data Sheet at the time of filing.  However, where the Declaration is not readable or has the application number in the wrong format, there is a likelihood that the request will fail.  Therefore, at the time of filing, if the Declaration appears not to be readable or has the foreign priority application number in the wrong format, the applicant should file the form PTO/SB/38 with the application number in the correct and readable format.  In this way, any defects in the Declaration’s format can be cured early.

Even where the Declaration or Application Data Sheet has the correct and readable information, the request may be denied.  If the first retrieval attempt is unsuccessful, a second attempt is made.  However, when either attempt fails, the applicant is not guaranteed a notification (although the examiner should notify the applicant in any subsequent office action or Notice of Allowance).  Therefore, it is incumbent on the applicant to review the Patent Application Information Retrieval (PAIR) system to ensure that the foreign priority application is actually received.  As such, periodic checks are a necessity since the mere filing of a request does not guarantee compliance with 35 U.S.C. §119 until the image file wrapper actually receives the correct foreign priority application.  Where the priority document has not been retrieved, the applicant needs to again file the request using the form PTO/SB/38.

Assuming the PAIR system indicates that a foreign priority document is retrieved, the applicant needs to ensure that the correct priority document has been received.  Since the process is entirely electronic, it is possible that small system errors could retrieve the incorrect application.  Thus, the applicant is well advised to review the electronic copy of the retrieved foreign priority document in order to ensure that what was retrieved is what is claimed.

Lastly, the applicant needs to be sure that the correct foreign priority application is retrieved by the time any Notice of Allowance is received or where foreign priority is required for purposes of showing prior invention.  Since the USPTO does not guarantee that the foreign priority application will be received in the image file wrapper in a timely fashion, filing a supplemental request may not cure the defect in time.  Therefore, where the foreign priority application is not in the image file wrapper or only the incorrect foreign priority application has been retrieved, the applicant needs to be ready to obtain and courier to theU.S.patent attorney a certified copy of the foreign priority document to be hand filed at the USPTO.   

Conclusion

While there are many potential cost savings to the USPTO and clients utilizing the PDX program, it is important to recognize that the PDX program is purely for the convenience of the USPTO.  As such, the applicant is not excused where, despite all efforts to retrieve the foreign priority application, the foreign priority application is not timely received by the USPTO.  Therefore, it is possible that the unaware applicant will fail to properly comply with 35 U.S.C. §119 during pendency of the application, and incur the substantial costs and inconvenience of filing a reissue application. 

However, where the applicant or their representative employs a regime such as those outlined above, the applicant is in a better position to ensure that the correct foreign priority application is retrieved.  In this way, the applicant can realize the cost savings in not having to unnecessarily obtain and ship foreign priority documents while avoiding the inconvenience of filing reissue applications caused by USPTO administrative issues.


[1] The opinions in this article do not represent the official positions of Stein McEwen, LLP.

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2 thoughts on “Practice Tip: Pitfalls of Priority Document Exchange

  1. So what about getting certified copies from the USPTO for countries not in the DAS scheme. How does one do that please?

  2. Actually that method is the same. For non-PCT, you can order them electronically or by calling the USPTO. You then need to courier each copy to your foreign associate to have them file the copy. Hence the ease of this system if available where claiming priority under the Paris Convention. With a PCT, there is no need for the certified copy in each foreign case.

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