OJ EPO 2007, 473

On 16 January 2007, the EPO and the USPTO implemented the electronic exchange between the offices of certified electronic copies of priority documents for applications filed under the Paris route, pursuant to the Priority Document Exchange Agreement which was signed in November 2005. ^[ 1 ]

The EPO has enjoyed automated priority document exchange with the JPO since 1999, and such exchange occurs automatically without the applicant being required to take any action or fulfil any further requirements. However, with the priority document exchange as currently established between the EPO and the USPTO, legal and system constraints may require compliance by applicants with certain formalities at the USPTO to effect the exchange. The purpose of this notice is to remind applicants of those requirements.

1. Claiming priority from a first filing at the European Patent Office

European applicants having filed a European patent application as a first filing, and claiming priority from this first filing for a second filing at the USPTO, will benefit from automatic exchange of their priority document without any formalities, for applications filed at the USPTO as of 4 June 2007. ^[ 2 ]

2. Claiming priority from a first filing in another office, but where the EPO has a copy of the priority document in its electronic files

As an additional service to applicants, the Priority Document Exchange Agreement concluded with the USPTO contains the proviso that the EPO will also make available to the USPTO priority documents from first filings in other offices, where they are available in its electronic files.

Because the electronic exchange system does not currently enable the direct location and retrieval by the USPTO of an electronic copy of a non-EPO priority document contained in an EPO dossier, the applicant is required to inform the USPTO of the number of the EPO application file in which that non-EPO priority document is located. This can be accomplished by filing Form PTO/SB/38, "Request to retrieve electronic priority documents," at the USPTO. Applicants are referred to the USPTO website for further information on the filing of this form.

Form PTO/SB/38 must be signed by a person having the authority to grant access to the EPO application. Here, European law is referred to in order to determine the entitlement to sign the form. Thus, the form must be signed by the European applicant or a duly authorised European representative and the principles of representation contained in Article 133 EPC and Rules 100-101 EPC apply.

The EPO and the USPTO are co-operating to develop a technical solution to enable the direct location and retrieval of such documents. When full automation of the exchange process in such cases becomes technically possible, the filing of Form PTO/SB/38 at the USPTO will no longer be required.

3. Claiming priority from a first filing at the USPTO

For a priority document from a first filing at the USPTO to be received by the EPO in a timely manner, it must be retrieved prior to the end of the sixteenth month from the US filing date, i.e. in most cases, before the US priority application has been published and thus, while it is still subject to confidentiality requirements under United States law. This requires authorisation from the applicant permitting the USPTO to release a copy of the priority document to the EPO, which is done by filing Form PTO/SB/39 at the USPTO.

It is important to note that the national law of the United States governs the entitlement to sign Form PTO/SB/39. Thus, the form must be signed by a person specified under 37 CFR 1.14(c), e.g. the US applicant or an attorney or agent of record. Applicants are referred to the USPTO website for further information on this point.

Furthermore, to ensure timely retrieval by the EPO of the US priority document, applicants are encouraged to file Form PTO/SB/39 either upon filing of the US priority application or as soon as possible thereafter.

4. Effect of the electronic exchange of priority documents

According to the decision of the President dated 9 January 2007 on the filing of priority documents, replacing earlier decisions on this matter, if the automated retrieval is successful the applicant is deemed to have fulfilled his obligation to file the priority document at the EPO under Article 88(1) EPC, pursuant to Rule 38(4) EPC.

Where the retrieval of a priority document from the USPTO by the EPO has failed, the EPO shall notify the applicant of such failure in due time for him to remedy the situation under the usual procedure where a priority document is not filed in due time.

Finally, applicants are reminded that the obligation to comply with any translation requirements under either the European Patent Convention or the national law of the United States remains unaffected by the electronic exchange of priority documents between the offices.

5. Filing digitally signed priority documents

Notwithstanding the Priority Document Exchange Agreement between the EPO and the USPTO, applicants may continue to file digitally signed electronic priority documents issued by the USPTO with the EPO, which will accept them as priority documents (see the notice from the European Patent Office dated 15 September 2004 concerning the electronic filing of priority documents issued by the United States Patent and Trademark Office, OJ EPO 2004, 562).

6. Conclusion

• Where the priority document consists in a European patent application first filed at the EPO, such exchange will be fully automatic and without any formalities for second filings at the USPTO made on or after 4 June 2007.
• As an additional service to applicants, to obtain the exchange of a priority document from a first filing in another office contained in an EPO electronic file, Form PTO/SB/38 must be filed at the USPTO giving the number of that EPO file.
• For the EPO to receive a priority document from a first filing at the USPTO, Form PTO/SB/39 must be filed at the USPTO.