Change in the Electronic Retrieval Method for Priority Documents between USPTO and KIPO

By U.S.P.T.O.
November 26, 2018

Effective December 1, 2018, electronic retrieval of priority documents between the United States Patent and Trademark Office (USPTO) and the Korean Intellectual Property Office (KIPO) will be managed via the World Intellectual Property Organization (WIPO) Digital Access Service (DAS), in accordance with the WIPO DAS agreement established on April 20, 2009.

The certified copy requirement is considered satisfied when a foreign priority document is retrieved electronically via the WIPO DAS service during pendency of the U.S. application. There is no fee for this service and participation for a particular application is voluntary.

For U.S. applications filed on or after December 1, 2018, in addition to the foreign priority claim (including the country (two letter code KR), application number and filing date), the applicant must provide the WIPO DAS access code associated with the KR priority application that is to be retrieved via the WIPO DAS service. The WIPO DAS access code increases security as a third validation point for each application along with the application number and filing date.

For U.S. applications filed prior to December 1, 2018, the WIPO DAS access code will not be required; however, applicants are encouraged to begin voluntarily providing the WIPO DAS access code for KR priority applications immediately. This practice will prepare the applicant for the switch to WIPO DAS. Also, having the WIPO DAS access code should reduce potential delays that may occur if electronic retrieval is attempted by the USPTO on or after December 1, 2018. The Foreign Priority Information Section of the Application Data Sheet (ADS) includes an Access Code field for this purpose.

Acknowledgement of the WIPO DAS access code will begin appearing on the U.S. application filing receipts processed on December 1, 2018.

Specifically, the foreign priority claim to an application filed with the KIPO will include either “Access code provided” or “No access code provided,” as appropriate. Applicants are encouraged to review the U.S. application filing receipt to verify acknowledgement by the USPTO.

At the time of this notice, the USPTO deposits via the WIPO DAS certified copies of U.S. national patent applications, including U.S. design applications, and, does not deposit international applications filed under the Patent Cooperation Treaty with the USPTO as receiving office (RO/US). Similarly, the KIPO deposits via the WIPO DAS certified copies of patent, utility model and industrial design applications as priority documents. Therefore, the priority claim and the WIPO DAS access code must be furnished for each KIPO application that the applicant wishes the USPTO to attempt retrieval via the WIPO DAS. The scope of priority documents that are deposited by the participating offices can be found at the WIPO DAS site.

Applicants are advised that they continue to bear the ultimate responsibility for ensuring that the priority document is filed by the time limit set forth in 37 CFR 1.55.

Further information on priority document exchange via the WIPO DAS service is available at: https://www.uspto.gov/patents-getting-started/international-protection/electronic-priority-document- exchange-pdx.

Questions about this announcement may be directed to Nelson Yang, Acting Director, Office of International Business Solutions, 571-272-0826, or Tamara Graysay, Special Program Examiner, International Patent Legal Administration, 571-272-6728. Comments may be directed to the Priority Document electronic mailbox at pdx@uspto.gov. Electronic mailbox inquiries are returned within one business day.

Image Source: Deposit Photos

The Author

U.S.P.T.O.

U.S.P.T.O.

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