Thursday, September 23, 2010
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WIPO’s Service for Electronic Retrieval of Prior Filed Applications

Thursday, September 23, 2010
One of the topics covered in a recent Webinar hosted by the PCT E-Services Unit on September 7th and 8th 2010, was the new Priority Document Access Service (DAS). This new service helps to reduce the amount of time required in obtaining and filing priority applications with multiple Patent Offices of second filing (these are the Offices that require a certified copy of a priority application).

The way this service works is it allows an Applicant to authorize one or more Patent Office(s) of second filing to retrieve the priority application electronically from the Patent Office of first filing. For instance, if an International Application is filed claiming priority to a U.S. patent application, this service would allow the Applicant to authorize the International Bureau to retrieve an electronic copy of the priority application directly from the United States Patent and Trademark Office to complete the requirement for a certified copy of the priority application. Please note, however, that prior to authorizing retrieval, the Applicant must first request the Office of first filing to make the priority application available to DAS (if the priority was filed in the US, Japan or Korea, the Applicant will need to file a request form). The Office of first filing will notify the Applicant when the priority document is electronically available in DAS by sending a corresponding access code. The Applicant is able to use the access code and priority application number to authorize an Office of second filing to retrieve the document.

As the service is still in its early stages, electronic availability of priority applications and their retrieval is currently limited to the following Offices: Australia, Spain, Great Britain, Japan, Korea, the United States and the International Bureau. The Chinese and European Patent Offices have been designated as next in line to make priority applications electronically available and perform retrievals, however, no notifications to date have been offered by either Office as to when this will happen. With respect to costs, according to a Representative at the PCT Safe help desk, there is currently no fee associated at the International stage with retrieving an electronic copy of a priority document, however, it is possible that the Patent Office, from which the priority application is being sought, may require a fee.

All in all it appears that plans to provide this service for other jurisdictions is currently being negotiated. Further progress in making Patent Office records electronically available is a good long-term development as it will help to simplify the filing process.

A helpful guide on how to use DAS is the September 7th and 8th 2010 Webinar, which is available here.

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