MPEP § 215.01 — Electronic Priority Document Exchange (Annotated Rules)
§215.01 Electronic Priority Document Exchange
This page consolidates and annotates all enforceable requirements under MPEP § 215.01, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Electronic Priority Document Exchange
This section addresses Electronic Priority Document Exchange. Primary authority: 35 U.S.C. 255, 37 CFR 1.55, and 37 CFR 1.323. Contains: 3 requirements, 1 prohibition, 1 permission, and 4 other statements.
Key Rules
Electronic Priority Document Exchange (PDX)
Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices. The Office treats a proper priority claim under 37 CFR 1.55 to an application filed in a participating foreign intellectual property office as a request that the Office obtain a copy of the foreign application from the participating intellectual property office. A separate written request may be used when the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating foreign intellectual property office after the foreign priority has been claimed, so long as the time period set in 37 CFR 1.55 has not expired. A separate written request is required in the situation where the foreign application is not originally filed in a participating office, but a certified copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office. Applicants can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.
Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices. The Office treats a proper priority claim under 37 CFR 1.55 to an application filed in a participating foreign intellectual property office as a request that the Office obtain a copy of the foreign application from the participating intellectual property office. A separate written request may be used when the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating foreign intellectual property office after the foreign priority has been claimed, so long as the time period set in 37 CFR 1.55 has not expired. A separate written request is required in the situation where the foreign application is not originally filed in a participating office, but a certified copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office. Applicants can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.
Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices. The Office treats a proper priority claim under 37 CFR 1.55 to an application filed in a participating foreign intellectual property office as a request that the Office obtain a copy of the foreign application from the participating intellectual property office. A separate written request may be used when the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating foreign intellectual property office after the foreign priority has been claimed, so long as the time period set in 37 CFR 1.55 has not expired. A separate written request is required in the situation where the foreign application is not originally filed in a participating office, but a certified copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office. Applicants can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.
An improper, incomplete, or inconsistent citation of a foreign priority application and/or its filing date will result in a delay or prevent retrieval under the Priority Document Exchange program. In particular, any foreign priority claim that is incomplete will prevent successful electronic retrieval of the priority application. Applicants are strongly encouraged to cite the foreign application using an acceptable format (see MPEP § 214.04) and use proper and consistent citation format throughout the U.S. application.
An improper, incomplete, or inconsistent citation of a foreign priority application and/or its filing date will result in a delay or prevent retrieval under the Priority Document Exchange program. In particular, any foreign priority claim that is incomplete will prevent successful electronic retrieval of the priority application. Applicants are strongly encouraged to cite the foreign application using an acceptable format (see MPEP § 214.04) and use proper and consistent citation format throughout the U.S. application.
An improper, incomplete, or inconsistent citation of a foreign priority application and/or its filing date will result in a delay or prevent retrieval under the Priority Document Exchange program. In particular, any foreign priority claim that is incomplete will prevent successful electronic retrieval of the priority application. Applicants are strongly encouraged to cite the foreign application using an acceptable format (see MPEP § 214.04) and use proper and consistent citation format throughout the U.S. application.
The Office will not send a notice setting a time period for filing a certified copy of the priority document. Upon receipt of a Notice of Allowance, applicants should check to see whether the Office has received a copy of the foreign application under the priority document exchange program because successful retrieval of priority documents cannot be guaranteed. To be entitled to priority, the Office must receive a copy of the foreign application from the participating foreign intellectual property office within the pendency of the application and before the patent is granted, or receive a paper certified copy of the foreign application during that time period. If a certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323. See MPEP § 215.02(a) for information pertaining to meeting the timeliness requirement for filing a certified copy by using PDX.
Ordering Certified Copies
The Office will not send a notice setting a time period for filing a certified copy of the priority document. Upon receipt of a Notice of Allowance, applicants should check to see whether the Office has received a copy of the foreign application under the priority document exchange program because successful retrieval of priority documents cannot be guaranteed. To be entitled to priority, the Office must receive a copy of the foreign application from the participating foreign intellectual property office within the pendency of the application and before the patent is granted, or receive a paper certified copy of the foreign application during that time period. If a certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323. See MPEP § 215.02(a) for information pertaining to meeting the timeliness requirement for filing a certified copy by using PDX.
The Office will not send a notice setting a time period for filing a certified copy of the priority document. Upon receipt of a Notice of Allowance, applicants should check to see whether the Office has received a copy of the foreign application under the priority document exchange program because successful retrieval of priority documents cannot be guaranteed. To be entitled to priority, the Office must receive a copy of the foreign application from the participating foreign intellectual property office within the pendency of the application and before the patent is granted, or receive a paper certified copy of the foreign application during that time period. If a certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323. See MPEP § 215.02(a) for information pertaining to meeting the timeliness requirement for filing a certified copy by using PDX.
Design Foreign Priority (6 Months)
The USPTO will attempt retrieval of foreign applications to which priority is claimed in a U.S. design application where possible. The Spanish Patent and Trademark Office deposits certain ES industrial design applications for access by the USPTO via the WIPO DAS. Therefore, when the applicant claims foreign priority to an ES industrial design application and provides the WIPO DAS access code, the USPTO will attempt retrieval via the WIPO DAS. The USPTO will automatically attempt retrieval of international applications filed under the PCT where the receiving office is RO/AU, RO/DK, RO/ES, RO/FI, RO/IB, RO/MA or RO/SE and the applicant has provided the required WIPO DAS access code for the international application to which foreign priority is claimed.
The USPTO will attempt retrieval of foreign applications to which priority is claimed in a U.S. design application where possible. The Spanish Patent and Trademark Office deposits certain ES industrial design applications for access by the USPTO via the WIPO DAS. Therefore, when the applicant claims foreign priority to an ES industrial design application and provides the WIPO DAS access code, the USPTO will attempt retrieval via the WIPO DAS. The USPTO will automatically attempt retrieval of international applications filed under the PCT where the receiving office is RO/AU, RO/DK, RO/ES, RO/FI, RO/IB, RO/MA or RO/SE and the applicant has provided the required WIPO DAS access code for the international application to which foreign priority is claimed.
Priority and Benefit Claims
Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices. The Office treats a proper priority claim under 37 CFR 1.55 to an application filed in a participating foreign intellectual property office as a request that the Office obtain a copy of the foreign application from the participating intellectual property office. A separate written request may be used when the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating foreign intellectual property office after the foreign priority has been claimed, so long as the time period set in 37 CFR 1.55 has not expired. A separate written request is required in the situation where the foreign application is not originally filed in a participating office, but a certified copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office. Applicants can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.
Intervening Rights After Reinstatement
Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices. The Office treats a proper priority claim under 37 CFR 1.55 to an application filed in a participating foreign intellectual property office as a request that the Office obtain a copy of the foreign application from the participating intellectual property office. A separate written request may be used when the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating foreign intellectual property office after the foreign priority has been claimed, so long as the time period set in 37 CFR 1.55 has not expired. A separate written request is required in the situation where the foreign application is not originally filed in a participating office, but a certified copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office. Applicants can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.
Correction of Applicant's Mistake
The Office will not send a notice setting a time period for filing a certified copy of the priority document. Upon receipt of a Notice of Allowance, applicants should check to see whether the Office has received a copy of the foreign application under the priority document exchange program because successful retrieval of priority documents cannot be guaranteed. To be entitled to priority, the Office must receive a copy of the foreign application from the participating foreign intellectual property office within the pendency of the application and before the patent is granted, or receive a paper certified copy of the foreign application during that time period. If a certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323. See MPEP § 215.02(a) for information pertaining to meeting the timeliness requirement for filing a certified copy by using PDX.
Design Priority and Benefit Claims
The USPTO will attempt retrieval of foreign applications to which priority is claimed in a U.S. design application where possible. The Spanish Patent and Trademark Office deposits certain ES industrial design applications for access by the USPTO via the WIPO DAS. Therefore, when the applicant claims foreign priority to an ES industrial design application and provides the WIPO DAS access code, the USPTO will attempt retrieval via the WIPO DAS. The USPTO will automatically attempt retrieval of international applications filed under the PCT where the receiving office is RO/AU, RO/DK, RO/ES, RO/FI, RO/IB, RO/MA or RO/SE and the applicant has provided the required WIPO DAS access code for the international application to which foreign priority is claimed.
Citations
| Primary topic | Citation |
|---|---|
| Correction of Applicant's Mistake Electronic Priority Document Exchange (PDX) Ordering Certified Copies | 35 U.S.C. § 255 |
| Correction of Applicant's Mistake Electronic Priority Document Exchange (PDX) Ordering Certified Copies | 37 CFR § 1.323 |
| Electronic Priority Document Exchange (PDX) Intervening Rights After Reinstatement Priority and Benefit Claims | 37 CFR § 1.55 |
| Electronic Priority Document Exchange (PDX) | MPEP § 214.04 |
| Correction of Applicant's Mistake Electronic Priority Document Exchange (PDX) Ordering Certified Copies | MPEP § 215.02(a) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 215.01 — Electronic Priority Document Exchange
Source: USPTO215.01 Electronic Priority Document Exchange [R-01.2024]
Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices. The Office treats a proper priority claim under 37 CFR 1.55 to an application filed in a participating foreign intellectual property office as a request that the Office obtain a copy of the foreign application from the participating intellectual property office. A separate written request may be used when the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating foreign intellectual property office after the foreign priority has been claimed, so long as the time period set in 37 CFR 1.55 has not expired. A separate written request is required in the situation where the foreign application is not originally filed in a participating office, but a certified copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office. Applicants can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.
An improper, incomplete, or inconsistent citation of a foreign priority application and/or its filing date will result in a delay or prevent retrieval under the Priority Document Exchange program. In particular, any foreign priority claim that is incomplete will prevent successful electronic retrieval of the priority application. Applicants are strongly encouraged to cite the foreign application using an acceptable format (see MPEP § 214.04) and use proper and consistent citation format throughout the U.S. application.
In general, an attempt to retrieve an eligible foreign application to which priority is claimed in a U.S. application will be made by the USPTO when the application is docketed to an examiner. In any case the USPTO will not attempt electronic retrieval until the Office of Patent Application Processing has completed its review of the application. Applicants are encouraged to check Patent Center determine whether the foreign priority application has been successfully retrieved. A successful request to retrieve an electronic foreign priority application takes approximately 1 week to complete.
The Office will not send a notice setting a time period for filing a certified copy of the priority document. Upon receipt of a Notice of Allowance, applicants should check to see whether the Office has received a copy of the foreign application under the priority document exchange program because successful retrieval of priority documents cannot be guaranteed. To be entitled to priority, the Office must receive a copy of the foreign application from the participating foreign intellectual property office within the pendency of the application and before the patent is granted, or receive a paper certified copy of the foreign application during that time period. If a certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323. See MPEP § 215.02(a) for information pertaining to meeting the timeliness requirement for filing a certified copy by using PDX.
The USPTO will attempt retrieval of foreign applications to which priority is claimed in a U.S. design application where possible. The Spanish Patent and Trademark Office deposits certain ES industrial design applications for access by the USPTO via the WIPO DAS. Therefore, when the applicant claims foreign priority to an ES industrial design application and provides the WIPO DAS access code, the USPTO will attempt retrieval via the WIPO DAS. The USPTO will automatically attempt retrieval of international applications filed under the PCT where the receiving office is RO/AU, RO/DK, RO/ES, RO/FI, RO/IB, RO/MA or RO/SE and the applicant has provided the required WIPO DAS access code for the international application to which foreign priority is claimed.
The Office website provides additional information concerning the priority document exchange program (www.uspto.gov/PatentsPDX). This information includes the intellectual property offices that participate in the priority document exchange program, as well as the information necessary for each participating foreign intellectual property office to provide the Office with access to the foreign application.