USPTO & SIPO Implement Direct Electronic Exchange of Priority Documents – USPTO Announcement

October 12, 2014

Prior to October 8, 2014, electronic retrievals of priority documents between the United States Patent and Trademark Office (USPTO) and the State Intellectual Property Office of the People’s Republic of China (SIPO) were managed through an intermediary, the World Intellectual Property Office (WIPO) Digital Access Service (DAS), through the WIPO DAS agreement established in April 20, 2009.

On October 8, 2014, the USPTO and the SIPO implemented direct electronic exchange of priority documents. The more direct connectivity benefits both the SIPO and the USPTO by reducing administrative costs, and benefits applicants both by reducing the cost of ordering copies of priority documents and by providing priority documents to the Office of Second Filing in a more timely manner.

There is no fee for this service. Now that the direct electronic exchange program has been implemented, the USPTO no longer requires an Access Code and no longer uses the WIPO DAS to retrieve electronic priority documents from the SIPO. Also, design applications and international applications filed under the Patent Cooperation Treaty are not available through direct electronic exchange as of October 8, 2014.

Factors to consider during the change in the electronic retrieval method:

For U.S. applications filed:

  • before June 1, 2012, which claim priority to an application(s) filed in the SIPO, applicants are required to furnish a form PTO/SB/38 to request retrieval under the direct electronic exchange.
  • on or after June 1, 2012, and before March 18, 2013, which claim priority to an application(s) filed in the SIPO, and for which retrieval is set, but retrieval did not occur prior to the October 8, 2014 start date, the USPTO will take steps to identify the SIPO applications and request direct electronic exchange.
  • on or after March 18, 2013, and before the October 8, 2014 start date, which claim priority to an application(s) filed in the SIPO, and for which an Access Code has been provided and retrieval is set but did not occur prior to the October 8, 2014 start date, the USPTO will take steps to identify the SIPO applications and request direct electronic exchange.
  • on or after March 18, 2013, and before the October 8, 2014 start date, which claim priority to an application(s) filed in the SIPO, and for which no Access Code has been provided (information necessary for retrieval not provided) and retrieval is not set due to the missing Access Code, applicants are required to furnish a form PTO/SB/38 to request retrieval under the direct electronic exchange to reinitiate a priority document request if the certified copy requirement has not been satisfied.

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.

Questions about this announcement may be directed to Tamara Graysay, Special Program Examiner, International Patent Legal Administration, 571‐272‐6728, or to Don Levin, Director, Office of International Business Solutions, 571‐272‐3785.

Comments may be directed to the Priority Document electronic mailbox at pdx@uspto.gov. Electronic mailbox inquiries are returned within one business day.

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