A. Background

The European Patent Office (EPO) has been participating in the WIPO Digital Access Service (DAS) for the exchange of certified copies of previously filed patent applications (priority documents)^[ 1 ] since 1 November 2018. Under DAS, the EPO and the Japan Patent Office (JPO) electronically exchange priority documents. The two offices have now agreed to terminate the existing Priority Document Exchange Agreement (PDX Agreement) between them as of 31 December 2021 and to use DAS as the sole tool for exchanging priority documents electronically.

Under the PDX Agreement the EPO and the JPO automatically transfer certified copies of patent applications or, where applicable, Japanese utility model applications from which priority is claimed under the European Patent Convention (EPC), the Japanese Patent Act or the Japanese Utility Model Act. This automatic exchange does not however extend to priorities claimed in international applications filed under the Patent Cooperation Treaty (PCT).

B. Practical impact

Until now, where priority was claimed from a previous patent or utility model application filed with the JPO, if a priority document could not be retrieved via DAS or if the applicant did not request retrieval via DAS, the EPO included automatically and free of charge a copy of the previous application from which priority is claimed in the file of the application, and informed the applicant accordingly.

With the termination of the PDX Agreement, the EPO will no longer include a Japanese priority document in the file automatically in cases where a Japanese priority document cannot be retrieved via DAS or where the applicant does not request retrieval via DAS. This applies to European patent applications filed with the European Patent Office on or after 1 July 2020 and Euro-PCT applications entering the European phase on or after that date that claim priority from a Japanese patent or utility model application, as well as to any European patent applications or Euro-PCT applications claiming priority from a Japanese patent or utility model application for which the required priority document could not be included in the file of the application by 31 December 2021.

The EPO will inform applicants in good time if a copy of the previous Japanese application from which priority is claimed cannot be retrieved via DAS. In such cases, or if they do not request retrieval via DAS, applicants will have the opportunity to file a copy subsequently in accordance with Rule 53(1) EPC.

The termination of the PDX Agreement will not affect the exchange of priority documents via DAS, which will remain available for all applications claiming priority from a previous application of a state participating in DAS, including Japanese applications.

The termination of the Agreement will also have no impact on the electronic priority document exchange between the EPO and the other IP5 offices, namely the US Patent and Trademark Office (USPTO), the Korean Intellectual Property Office (KIPO) and the China National Intellectual Property Administration (CNIPA). In other words, the EPO will continue to include automatically and free of charge a copy of the previous USPTO, KIPO or CNIPA application from which priority is claimed in the file of the application if it cannot be retrieved via DAS or where the applicant does not request retrieval via DAS.

In light of this development, the President has decided to issue a new decision on the filing of priority documents^[ 2 ] that supersedes the previous decision of 18 October 2018.^[ 3 ] The new decision reflects the termination of the automatic exchange of priority documents between the EPO and the JPO.