A design electronic priority document experiment to try

At the present moment the number of Offices participating in DAS as depositing Offices is quite small.  So far as I am aware the list of design depositing Offices is limited to China, Spain, and India.  But a little-known feature of DAS permits design practitioners to be really smart about electronic certified copies.

The number of design accessing Offices is longer, and includes the USPTO.

The little-known feature of DAS is described here:

If the Office of first filing does not participate in DAS, the applicant can nevertheless make use of DAS by obtaining a single certified copy and submitting it to WIPO.

This offers the opportunity to try an experiment.  Suppose an applicant has filed a priority application in (for example) the EUIPO, and plans to file in USPTO claiming that priority.

The old-fashioned way to perfect the priority claim would be to obtain a physical certified copy from EUIPO, and physically ship it to US counsel, and then physically ship it to the USPTO.

The smart experiment to try would be to obtain a physical certified copy from EUIPO and ship it to the IB.  This then converts the certified copy into an electronic certified copy in DAS.  This would be evidenced by a Certificate of Availability from DAS.

US counsel could then simply send Form PTO/SB/38 to the USPTO. USPTO in its role as a design accessing Office would then retrieve the electronic certified copy from DAS.  This would save the cost of a courier shipment from Europe to the US as well as the cost of a physical shipment to the USPTO.

Has anyone actually tried this?  If so, please post a comment below.

I invite some firm in Europe that has filed a design priority application somewhere in Europe (perhaps in EUIPO) and that wishes to file a US application, to work with me on this experiment.

3 Replies to “A design electronic priority document experiment to try”

  1. Intriguing thought. I just ordered three physical priority documents with the EUIPO for the purpose of submitting in the US. It seems quite outdated that the EUIPO isn’t even able to supply the priority documents as signed PDFs. The USPTO is, as far as I recall, able to supply that when claiming US priority in an EUIPO design case.

    For my cases which are only filed in US and PRC it wouldn’t make much sense to try though.

    1. The smart path I think is, you send the three physical certified copies from EUIPO to WIPO with a request that they put them into DAS. The IB gives you a DAS access code for each of the three applications. You then load the three cases into your DAS workbench and obtain Certificates of Availability. In the US you use Form PTO/SB/38 to ask the USPTO to retrieve the ECCs from DAS. In China you use whatever is the counterpart to Form PTO/SB/38.

      This cuts in half the number of courier shipments you have to pay for.

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