September 1 and US design applications claiming priority from Chinese applications

There’s a big change that will happen four days from now for the US design applicant who claims priority from a Chinese design application.

Starting on September 1, 2018, the US applicant will be able to use the DAS system.  The US applicant will be able to ask the USPTO to retrieve an electronic certified copy of the design application from the Chinese patent office.  This should permit the US applicant to avoid having to provide a physical certified copy of the Chinese design application to the USPTO.

The main thing that will change on September 1, 2018 is that starting on that day, when you prepare an Application Data Sheet that presents a priority claim to a Chinese design application, you will need to include a four-character “DAS access code”.  (You will need to obtain this code from Chinese counsel.)

You can read about this in an August 7, 2018 notice in the Official Gazette.  This important change has been very long in the making.  I blogged about this change in October of 2017.

An interesting question is, what if you have a US design application that was already pending before September 1, 2018, that claims priority from a Chinese design application?  Maybe you could fill out Form PTO/SB/38 (with the DAS access code) and e-file it at the USPTO, and maybe USPTO would retrieve the electronic certified copy?  If you have a case like this, please try this and post a comment below to share the results.

Another aspect of this is that if a Hague filer files a Hague application that designates the US and that claims priority from a Chinese design application, this DAS development on September 1 should be very helpful.  See my blog article of February 28, 2018 about this.  In that article I pointed out that at the USPTO, PDX trumps DAS.  But as between USPTO and the Chinese patent office, PDX will end on September 1.  So the Hague filer that has gone to the trouble of providing a DAS access code in Form DM/1 (in a case that designates the US and claims priority from a Chinese design application) should be able to rely upon USPTO to make use of DAS to obtain the electronic certified copy of the priority application.

A first important action step, for anyone who plans to start making use of this new DAS relationship between the Chinese patent office and the USPTO, is to get into the habit of always obtaining a Certificate of Availability from DAS for the priority application.  This reduces to a minimum any risk that the DAS retrieval would fail due to some misunderstanding about the application number or filing date or DAS access code or the fact of the Chinese patent office having made the application available to DAS.

A second important action step, for anyone who plans to use this new DAS relationship between the Chinese patent office and the USPTO, is to get into the habit of always setting up “tracking” in DAS for the Chinese priority application.  This is a sort of digital tripwire that will let you know the moment that USPTO retrieves the electronic certified copy from DAS.

If you have not already done so, I invite you to see if you can pass a simple quiz on the DAS system.

I wish that I could say that I was on top of this development regarding PDX and the Chinese patent office.  But I was not.  The only reason I had a clue about this is that alert reader Cheryl Ferne, an IP Foreign Patent Paralegal at Lathrop & Gage, drew my attention to it.