Bilateral priority document exchange between USPTO and Chinese patent office

USPTO and the Chinese patent office (“SIPO”) have quietly implemented a bilateral system for automated exchange of electronic priority documents.  This system, launched on October 8, 2014 bypasses the legacy approach through DAS (WIPO’s document access service).  Importantly, for inbound PDX to the USPTO, the four-character access code will no longer be needed.

We are all aware of the hassles involved in perfecting priority claims under Article 4 of the Paris Convention.  For a design application, for example, it is necessary to obtain a physical certified copy of the priority application from the office of first filing (“OFF”), and to physically deliver the physical certified copy to the office of second filing (“OSF”).

For more than a year now, so far as utility patents are concerned, the perfection of a priority claim as between USPTO and SIPO has been possible through WIPO’s DAS system.  This approach, when it works, has saved applicants from the hassle of having to order up physical certified copies and having to send them by courier back and forth between the US and China.  I say “when it works” because, as I have blogged, sometimes USPTO does not treat PDX and DAS users very well.

In cases where the USPTO is the OFF, the electronic document exchange works only if the filer gives the USPTO permission to release the electronic certified copy outside of the USPTO.  This is done either by checking a “permissions” box in an ADS (application data sheet) or by filing Form PTO/SB/39.  Depending on the OSF involved, it may or may not be necessary for the US filer to provide the four-digit Confirmation Number to non-US counsel who provide that number to the OSF.

In cases where the USPTO is the OSF, the electronic document exchange works only if the filer in the OFF does whatever is necessary for the OFF to release the electronic certified copy outside of the OFF.  (The way to do this is different depending on the particular patent office involved.)  Depending on the OFF involved, the filer in the OFF must also obtain a (usually four-character) access code from the OFF and provide that code to US counsel.  US counsel will then include the access code in the ADS or in Form PTO/SB/38.

From the point of view of an applicant, what has changed as of October 8, 2014 is the following:

• When SIPO as OSF tries to obtain an electronic certified copy of a US priority application, SIPO will send that request directly to the USPTO rather than sending it to DAS;  and
• When USPTO as OSF tries to obtain an electronic certified copy of a CN priority application, USPTO will send that request directly to the SIPO rather than sending it to DAS.  Furthermore, the four-character authorization code will no longer be required.

It is not clear that this new bilateral arrangement will help with the problems at USPTO that I blogged about before, and it might even make things worse for the USPTO customer.  For example there is often significant foot-dragging at USPTO about making a US priority application available outside of USPTO in response to the filing of Form PTO/SB/39.  And there is often significant foot-dragging at USPTO about retrieving a priority document from a non-US database in response to the filing of Form PTO/SB/38.  The DAS system provides valuable troubleshooting and logging tools that help a USPTO customer try to figure out where exactly the problem is when there are difficulties getting an electronic copy of a priority document from USPTO to some other Office (and nearly always the problem turns out to be within USPTO).  And it provides valuable troubleshooting and logging tools that help a USPTO customer try to figure out where exactly the problem is when there are difficulties about getting USPTO to retrieve an electronic certified copy of a priority document from a non-US database (and again nearly always the problem turns out to be within USPTO).  When the path for the priority document is not through DAS (and under this new October 8, 2014 arrangement with SIPO, the path will not be through DAS), then this deprives the USPTO customer of the valuable troubleshooting and logging tools that DAS would have provided.

It continues to be a disappointment that no patent offices have done anything about making possible the exchange of electronic certified copies of design applications (as distinguished from utility patent applications).  Given the increased attention to design protection in recent years, and increased levels of design filings in recent years, such action by patent offices is by now long overdue.

(Updated to reflect an update from USPTO that as of October 8, 2014, the access code will no longer be needed for inbound PDX from CN.)