Hague Agreement, DAS, and four-character access codes

Today WIPO announced that starting today ( February 28, 2018) the Hague Agreement e-filing interface and international application form DM/1 have a new item to allow the provision of an access code via DAS.  What does this mean?  How will it affect you?  Is there anything bad that will happen to practitioners who don’t know about this or fail to make use of this new item?

First a bit of background. It is recalled that the applicant in a Hague Agreement application has the ability, if desired, to claim priority under the Paris Convention from a previous design application.  And indeed in the majority of Hague Agreement filings, the applicant does claim priority.

It is also recalled that some designated Offices (including the USPTO) impose a requirement upon the applicant, namely that the applicant must provide a certified copy of the priority application.

Sometimes an applicant will fail timely to provide the certified copy.  The consequence of this, so far as the US is concerned, would be a loss of the priority benefit.  Such a failure might not get noticed until litigation time (TYFNIL).  The result could be a holding that the US design patent is invalid.

As for the need to provide the certified copy of the priority document, the legacy practice is to provide a physical certified copy.  The applicant obtains a physical certified copy from the Office of first filing, and provides the physical certified copy to the Designated Office (such as the USPTO).

The alert reader will, however, be familiar with the DAS system.  For many years the DAS system has facilitated the electronic transmission of utility patent applications and utility models from one Office to another Office.  The system is very convenient and works very well.  One of the nicest aspects of the DAS system is that it permits the user to monitor the progress of electronic certified copies from one Office to the next.  The DAS system makes it easy to troubleshoot if there is some problem getting the electronic certified copy to its destination.

The DAS system presently has seventeen members.  Any particular member might participate as a Depositing Office or as an Accessing Office or both.   Denmark, for example, participates only as a Depositing Office but not as an Accessing Office.  The participation might be with respect to utility subject matter only (most members fall into this category) or might also participate with respect to design subject matter.  At present, for example, only three Offices (China, Spain, and India) participate as Depositing Offices with respect to design subject matter.

The other system that is connected with USPTO that is employed for electronic transmission of utility patent applications is PDX.  PDX is less user-friendly than DAS.  (See blog article comparing PDX and DAS.)  At the present time, the USPTO has PDX bilateral relationships with EPO, the Korean Patent Office, and the Chinese Patent Office.  An unfortunate aspect of the PDX system, from the point of view of a US filer, is that in USPTO’s systems, PDX trumps DAS.  That is to say, even if the other Office belongs to the DAS system, if that Office belongs to PDX, then the document exchange will take place through PDX.  Said differently, if that other Office belongs to PDX, then the filer is denied the benefits that would otherwise have flowed from the use of DAS.

As mentioned above, when DAS was first set up, its function was to facilitate electronic transmission of utility patent applications and utility model applications.  In recent years, however, it has become more and more clear that it would be very helpful if DAS could also facilitate electronic transmission of design applications.  There are at least two reasons for this:

• As a general matter, many recent events (such as the Apple v. Samsung litigation) have prompted a heightened realization of the importance of design protection.
• In particular, more and more Offices have joined the Hague Agreement.

And indeed some of the Offices that belong to DAS (in connection with utility applications) have chosen to expand their participation in DAS to include design applications.  Not only that, many additional Offices have indicated that they will likewise expand their participation in DAS to include design applications.  And as a further bit of good news (see blog article about EPO joining DAS) it is likely that more Offices will join DAS soon.

Which then leads to today’s announcement by WIPO.  WIPO has announced that starting today the Hague Agreement e-filing interface and international application form DM/1 have a new item to allow the provision of an access code via DAS.  What does this mean?  Why do we care?  What are the consequences if a practitioner fails to inform himself or herself about this?

To explain this, we must recall that the filer who wishes to make use of DAS is required to prove his or her bona fides to the DAS system by correctly answering a riddle, namely “what is the Access Code for the priority application as established by the Office of First Filing?”  The idea is that if a would-be miscreant were to try to use DAS to obtain a copy of somebody else’s application, the would-be miscreant would fail because he or she would not be in possession of the Access Code.

At the present time (March of 2018), of all of the times that DAS got put to use, easily 99.99% of those times fell into the following three filing paths:

• utility subject matter in which the Office of Second Filing was connected with the Office of First Filing solely through Paris Convention, or
• utility subject matter in which the Office of Second Filing was connected with the Office of First Filing through the PCT (and through the Paris Convention), or
• design subject matter in which the Office of Second Filing was connected with the Office of First Filing solely through Paris Convention.

Let’s briefly review how the Access Code would come into play in each of these three filing paths.

In the first or third filing path, the filer in the Office of Second Filing would provide the Access Code to the Office of Second Filing.  The fashion in which the Access Code is provided to the Office of Second Filing might vary greatly from one Office to the Next.  In the case of USPTO, for example, the Access Code might be provided by means of an Application Data Sheet or by means of Form PTO/SB/38.  The Office of Second Filing would then make use of the Access Code to retrieve the electronic certified copy from the DAS system.

The typical circumstance prompting the second filing path would be a decision by the filer to file the PCT application in RO/IB.  The filer would normally communicate the Access Code to the IB by means of ePCT.  The IB would then make use of the Access Code to retrieve the electronic certified copy from the DAS system.  The electronic certified copy would then be provided by the IB to the Designated/Elected Offices.

Which again brings us to today’s announcement by WIPO, namely that starting today the Hague Agreement e-filing interface and international application form DM/1 have a new item to allow the provision of an access code via DAS.  The idea here is that a Hague filer might designate an Office (such as USPTO) that requires the filer to provide a certified copy of the priority application to that Office.  To comply with this requirement, the Hague filer would until now have had to physically provide a physical certified copy.  But because some Offices of First Filing participate in DAS with respect to design subject matter, then there might be a handful of situations where it would be helpful to the Hague filer to be able to use DAS as part of the Hague process.

What are those situations where a Hague filer might be able to use DAS?  I studied the situation closely and this is how it looks to me:

	Accessing Office
Office of First Filing	EE	ES	JP	MA	US
CN	yes	yes	yes	yes	no
ES	yes	no	yes	yes	yes
IN	yes	yes	yes	yes	yes

(“EE” is Estonia and “MA” is Morocco.)  This table lists all of the situations that I have identified in which the Hague filer might be able to use DAS.  As one example, suppose the priority application had been filed in Spain and suppose the Hague application designates the US.  In such a case, DAS would be very helpful because it would save the filer from the expense and docket-intensive steps required to somehow obtain a physical certified copy from the Spanish patent office and deliver it to the US patent office.  Until now, the filer might for example be able to communicate the Access Code to the USPTO by means of Form PTO/SB/38.

But as of today, the filer would be able to enter the Access Code into the Hague application at the time of filing of the Hague application.  The normal workflow for a Hague application involves the IB communicating the bibliographic data to the designated Offices.  For a Hague application in which the filer included the Access Code at the time of filing, this means that the Access Code would be automatically communicated to the designated Offices.

We can thus see the great benefit to applicants of today’s development.  The applicant whose priority application was filed in Spain or India, and whose Hague application designates the US, will be able to sit back and relax.  The applicant will not need to worry about a physical certified copy of the priority application.  All of the hard work of somehow getting the certified copy into the hands of the USPTO will be done by entities other than the applicant.  The hard work will be done by the Spanish or Indian patent office, the IB (which hosts the DAS system), and the USPTO.

A first question is, why is the table so small?  Given that the DAS system has seventeen members, and given that the Hague Agreement has sixty-seven members, how can it possibly be that this table has only three rows and only five columns?

Part of the answer is that there is only limited overlap in the membership of DAS and the membership of Hague Agreement.  The Offices that belong to DAS but do not belong to the Hague Agreement are:

• Australia
• Brazil
• China
• Eurasian patent office
• United Kingdom
• South Korea
• New Zealand
• Sweden

Of course one hopes that all of these Offices would sooner or later join Hague Agreement.  It is recalled (see blog article) that UK and China are expected to join the Hague Agreement very soon.

One also hopes that all of the ID5 (see web site) would join DAS and would participate with respect to design subject matter.  And one hopes that all of the ID5 would join Hague Agreement.  The ID5, it is recalled, has five members:

• the European Union Intellectual Property Office (EUIPO),
• the Japan Patent Office (JPO),
• the Korean Intellectual property office (KIPO),
• the State Intellectual Property Office of the People’s Republic of China (SIPO), and
• the United States Patent and Trademark Office (USPTO).

The ID5 Office that is missing from DAS is EUIPO.  But mere membership in DAS is not enough — it would also be desirable if the Office were to participate in DAS as a Depositing Office with respect to design subject matter.  Right now, although JP, KR, and US belong to DAS, they do not participate as a Depositing Office with respect to design subject matter.  It would also be desirable if each Office were to participate in DAS as an Accessing Office as to design subject matter.

There is thus an action item which is for EUIPO to join DAS.  And there are action items for JPO, KIPO, and USPTO to each participate as a Depositing Office with respect to design subject matter.

As mentioned above, it would be helpful if each member of the ID5 were to join Hague Agreement.  At the present time, the only ID5 members that also belong to Hague Agreement are EUIPO, Japan and the US.  It is thus an action item for KIPO to join Hague Agreement and for SIPO to join Hague Agreement.  As mentioned above, China is expected to join the Hague Agreement very soon.

Having explained how it is that the table above is so small (despite much larger numbers of members of DAS and Hague Agreement), we can now turn to some additional questions presented by this table.

Why does the table have a “China” row given that China does not belong to Hague Agreement?  The answer is that even though China does not belong to Hague Agreement, it is possible to file a Hague application that claims priority from a non-Hague Office.  So a Hague application could claim priority from (for example) a Chinese application.

Why is there a “no” in the Spain column?   The reason for the “no” in the Spain column of the table is that if a Hague filer were to both (a) claim priority from a Spanish application and (b) designate Spain, then the perfection of the priority claim would not involve the Paris Convention at all.  Instead it would be a domestic benefit claim, wholly within Spain.  So DAS would not be involved.

Why is there a “no” in the US column?  The alert reader will already have figured out why there is a “no” in the US column of the table.  But rather than reveal the answer, I will offer a prize to the first reader who posts a comment below, explaining why there is a “no” in the US column.

So now we understand the WIPO announcement.  We now understand why WIPO has gone to the trouble to set it up that a Hague filer may communicate an Access Code at the time of filing the Hague application.  This may be communicated in the IB’s e-filing interface or may be communicated by means of Form DM/1.  The inclusion of the Access Code at the time of filing has the possibility of saving the filer from having to go to all the fuss and bother of transmitting a physical certified copy from one Office to another.

There are several reasons why this new capability might not be of interest to a Hague filer:

• maybe the Hague application might not claim priority from any previous application, or
• maybe the Hague application would claim priority only from an application filed in some Office of First Filing that does not belong to DAS, or
• even if the Hague application were to claim priority from an application filed in some Office of First Filing that belongs to DAS, it might happen that the Office does not participate in DAS as a Depositing Office, or
• the Hague application might not designate any Office that requires the provision of a certified copy of the priority document, or
• the fact pattern of the “no” in the US column (which will hopefully soon be mentioned in a comment below) might apply.

But as time goes on, it is likely that this new capability will be of interest to more and more Hague filers.  Any of these events will likely make this new capability of greater interest:

• EUIPO joining DAS as a Depositing Office,
• China joining Hague Agreement
• UK joining Hague Agreement and participating as a Depositing Office with respect to design subject matter
• Japan participating as a Depositing Office with respect to design subject matter
• Korea participating as a Depositing Office with respect to design subject matter
• the “no” in the US column changing to a “yes” (see imminent comment below)

As I blogged a couple of days ago, there is a trap for the unwary Hague Agreement applicant, namely the risk that the applicant would fail timely to provide the certified copy to the USPTO.  This new capability announced today by WIPO might in some cases save the applicant from this risk.  Even the applicant that fails to give any thought to the provision of a certified copy might, sometimes, by accident, avoid this trap merely because of having included the Access Code at the time of filing of the Hague application.

From the discussion above, it is clear that it is now a Best Practice, when filing a Hague Agreement application, to include the Access Code for each priority application.  There is absolutely no drawback to including the Access Code, and there is the chance that the Access Code might be helpful at a later time.