Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
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MPEP 200 - Types and Status of Application; Benefit and Priority (25)
A separate written request is required in specific situations, as outlined in MPEP 215.01:
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.
Additionally, a separate request is needed when:
- The foreign application was not originally filed in a participating office, but a certified copy was filed in an application subsequently filed in a participating office.
- The applicant wants to use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.
To learn more:
The USPTO’s timing for retrieving foreign applications under PDX is described in MPEP 215.01:
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.
Key points about the retrieval timing:
- The first attempt is typically made when the application is assigned to an examiner.
- Retrieval occurs after the Office of Patent Application Processing completes its review.
- Applicants should check the Private PAIR system to confirm successful retrieval.
- A successful retrieval usually takes about one week to complete.
To learn more:
If the United States Patent and Trademark Office (USPTO) doesn’t receive your priority document through the Priority Document Exchange (PDX) program within the specified time frame, you have options. According to MPEP 215.02(a):
The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.
If you find yourself in this situation:
- File a certified copy of the foreign application directly with the USPTO.
- Ensure this is done during the pendency of your application and before the patent is granted.
- Consider filing a petition under 37 CFR 1.55(e) or (f) if necessary.
Remember, it’s ultimately the applicant’s responsibility to ensure the priority document is properly filed, even when using the PDX program.
For more information on certified copy, visit: certified copy.
For more information on foreign application, visit: foreign application.
For more information on late submission, visit: late submission.
For more information on PDX, visit: PDX.
For more information on priority document exchange, visit: priority document exchange.
When applicants receive a Notice of Allowance, they should take specific actions regarding PDX as outlined in MPEP 215.01:
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.
Important steps for applicants:
- Verify that the USPTO has received the foreign priority document.
- If the document hasn’t been received, consider filing a paper certified copy.
- Ensure the priority document is received before the patent is granted.
- Be aware that if a certified copy is filed after the issue fee is paid, the patent won’t include the priority claim unless corrected by a certificate of correction.
It’s crucial to confirm receipt of the priority document to maintain the priority claim in the issued patent.
To learn more:
The Priority Document Exchange (PDX) program is designed to facilitate the electronic exchange of priority documents between participating intellectual property offices. According to MPEP 215.01, the PDX program allows participating foreign intellectual property offices to exchange priority documents with the United States Patent and Trademark Office (USPTO) at no cost to the applicant.
This program aims to streamline the process of submitting priority documents, reducing the burden on applicants and improving efficiency in patent examination procedures.
To learn more:
The PDX (Priority Document Exchange) program serves to facilitate the exchange of priority documents between participating intellectual property offices. According to MPEP 215.01, ‘The PDX program eliminates the need for applicants to submit paper certified copies of foreign applications in participating intellectual property offices.’ This streamlines the process, reducing both the burden on applicants and the workload for patent offices.
The Priority Document Exchange (PDX) program is a system that allows participating intellectual property offices to exchange priority documents electronically. This program simplifies the process of submitting certified copies of foreign priority applications for patent applicants.
According to the MPEP, The Office website provides information concerning the priority document exchange program ( www.uspto.gov/patents/basics/international-protection/electronic-priority-document-exchange-pdx )
. This information includes participating offices and instructions for accessing foreign applications.
To learn more:
The Electronic Priority Document Exchange (PDX) program is a system that allows for the electronic transmission of priority documents between participating foreign intellectual property offices. As stated in the MPEP:
Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices.
This program simplifies the process of obtaining certified copies of foreign priority applications, which is crucial for establishing priority claims in patent applications.
What is the DAS code for PDX?
The DAS (Digital Access Service) code for PDX (Priority Document Exchange) is US. This code is used when participating in the WIPO DAS system for electronic exchange of priority documents. As stated in the MPEP 215.01: The DAS code for the USPTO is ‘US’.
Applicants need to use this code when authorizing the USPTO to retrieve priority documents from other offices or when allowing other offices to retrieve priority documents from the USPTO through the WIPO DAS system.
To learn more:
Electronic Priority Document Exchange (PDX) is a system that allows for the electronic transmission of priority documents between participating foreign intellectual property offices. As stated in MPEP 215.01:
Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices.
This system streamlines the process of obtaining certified copies of foreign priority applications, which is crucial for claiming priority in patent applications.
To learn more:
What happens if PDX retrieval of a priority document fails?
If the PDX (Priority Document Exchange) retrieval of a priority document fails, the USPTO will notify the applicant. As stated in MPEP 215.01: The USPTO will notify the applicant of any unsuccessful attempt to electronically retrieve a priority document.
In such cases:
- The applicant will be given additional time to provide the priority document.
- The applicant may need to submit a certified copy of the priority document directly.
- If using WIPO DAS, the applicant should check if the access code is correct and the document is available in the system.
- The applicant may need to contact the foreign office to ensure the document is accessible through PDX or WIPO DAS.
It’s important to address any retrieval issues promptly to ensure the priority claim is properly documented in the application.
To learn more:
To use the Priority Document Exchange (PDX) program, several requirements must be met as outlined in MPEP 215.02(a):
- The foreign application must be filed in a participating foreign intellectual property office.
- The claim for priority must be presented in an application data sheet (ADS) with specific details about the foreign application.
- The copy of the foreign application must be received by the USPTO from the participating foreign office, or a certified copy must be filed, within the specified time period.
The MPEP states:
37 CFR 1.55(i) specifically provides that this requirement for a timely filed certified copy of the foreign application will be considered satisfied if: (1) The foreign application was filed in a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office); (2) the claim for priority is presented in an application data sheet (ยง1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and including the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application; and (3) the copy of the foreign application is received by the Office from the participating foreign intellectual property office, or a certified copy of the foreign application is filed, within the time period set forth in 37 CFR 1.55(g)(1)).
Meeting these requirements allows applicants to potentially avoid manually filing certified copies of foreign priority documents.
For more information on certified copy, visit: certified copy.
For more information on foreign application, visit: foreign application.
For more information on PDX, visit: PDX.
For more information on priority document exchange, visit: priority document exchange.
For more information on requirements, visit: requirements.
How to retrieve a foreign priority document through PDX?
To retrieve a foreign priority document through PDX (Priority Document Exchange), follow these steps:
- Ensure the foreign office participates in PDX or WIPO DAS.
- File an application with the USPTO claiming foreign priority.
- Submit a request to retrieve the priority document using USPTO form PTO/SB/38 or through EFS-Web.
- Provide the necessary information, including the foreign application number and filing date.
- If using WIPO DAS, include the DAS access code provided by the foreign office.
According to MPEP 215.01: Applicants need not submit a copy of the foreign application if the foreign application was filed in a participating foreign intellectual property office, and the applicant provides sufficient information to the USPTO to retrieve the priority document.
To learn more:
How does the USPTO retrieve priority documents through PDX?
The USPTO retrieves priority documents through the Priority Document Exchange (PDX) program upon request from the applicant. As stated in MPEP 215.02(a), ‘If the applicant requests retrieval of the priority document through the PDX program, the USPTO will attempt to retrieve the document.’ The process involves:
- The applicant making a request for retrieval
- The USPTO accessing the electronic system of the participating office
- Retrieving the priority document if available
- Adding the retrieved document to the application file
This streamlined process eliminates the need for applicants to manually obtain and submit priority documents from other participating patent offices.
To learn more:
The USPTO treats a proper priority claim to an application filed in a participating foreign intellectual property office as a request to obtain a copy of the foreign application. The MPEP states:
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.
This means that applicants do not need to submit a separate request for the USPTO to retrieve the foreign application if they have made a proper priority claim and the foreign office is a PDX participant.
The USPTO treats a proper priority claim to an application filed in a participating foreign intellectual property office as a request to obtain a copy of the foreign application. According to MPEP 215.01:
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.
This means that applicants generally do not need to file a separate request for the USPTO to retrieve the priority document if it’s from a participating office.
To learn more:
How does the Electronic Priority Document Exchange (PDX) program work with the USPTO?
The Electronic Priority Document Exchange (PDX) program is a system that allows participating intellectual property offices to exchange priority documents electronically. According to MPEP 215.01, the USPTO participates in this program, which can simplify the process of submitting certified copies of foreign priority applications.
The MPEP states: The USPTO has agreements with the European Patent Office (EPO) and the Japan Patent Office (JPO) that enable the USPTO to obtain certified copies of foreign applications filed in those offices from their electronic records management systems.
Here’s how the PDX program works with the USPTO:
- If a foreign application was filed with a participating office (e.g., EPO or JPO), the applicant can request that office to make the certified copy of the priority document available to the USPTO.
- The applicant must submit a request to retrieve the priority document through the USPTO’s electronic filing system (EFS-Web or Patent Center).
- The USPTO will then attempt to retrieve the document electronically from the foreign office.
- If successful, this electronic retrieval satisfies the requirement to file a certified copy of the foreign priority application.
It’s important to note that the applicant is still responsible for ensuring that the certified copy is received by the USPTO within the required time frame, even when using the PDX program.
The PDX system has specific procedures for handling international applications filed under the Patent Cooperation Treaty (PCT). According to MPEP 215.01:
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.
Key points for PCT applications:
- Automatic retrieval attempts are made for certain PCT applications.
- Applies to applications filed with receiving offices: RO/AU, RO/DK, RO/ES, RO/FI, RO/IB, RO/MA, or RO/SE.
- The applicant must provide the WIPO DAS access code for the international application.
- This process streamlines priority document retrieval for eligible PCT applications.
Applicants should ensure they provide the necessary WIPO DAS access code to facilitate this automatic retrieval process.
To learn more:
PDX for U.S. design applications has specific considerations, as explained in MPEP 215.01:
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.
Key points for design applications:
- The USPTO attempts to retrieve foreign priority documents for design applications where possible.
- Spanish industrial design applications are accessible through WIPO DAS.
- Applicants must provide the WIPO DAS access code for Spanish industrial design applications.
- The USPTO will attempt retrieval via WIPO DAS when the access code is provided.
This process helps streamline the priority document retrieval for design applications, particularly those with Spanish priority.
To learn more:
How do I retrieve a priority document from a foreign IP office using PDX?
To retrieve a priority document from a foreign IP office using PDX:
- Ensure the foreign IP office participates in PDX.
- File an application with the USPTO that claims priority to the foreign application.
- Submit a Request to Retrieve through EFS-Web or Patent Center.
- Include the foreign application number, country code, and filing date.
- The USPTO will attempt to retrieve the document electronically.
According to MPEP 215.01: “The USPTO will attempt to electronically retrieve the priority document through the WIPO DAS […] or through a bilateral PDX agreement.”
To learn more:
Confirming receipt of your priority document by the USPTO through the Priority Document Exchange (PDX) program is crucial. The MPEP emphasizes this responsibility:
Applicants continue to bear the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued. Accordingly, applicants are encouraged to check as necessary to confirm receipt by the Office of appropriate documents.
To verify receipt, you can check the Patent Application Information Retrieval (PAIR) system. Priority documents retrieved through PDX will have the document description: Priority documents electronically retrieved by USPTO from a participating IP Office.
If you don’t see this confirmation, you may need to follow up with the USPTO or consider submitting a certified copy directly to ensure your priority claim is properly documented.
To learn more:
To check if the United States Patent and Trademark Office (USPTO) has received your priority document through the Priority Document Exchange (PDX) program, you should monitor your application status. As stated in MPEP 215.02(a):
Applicants continue to bear the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued. Accordingly, applicants are encouraged to check as necessary to confirm receipt by the Office of appropriate documents.
You can check the status of your priority document in several ways:
- Check the Patent Application Information Retrieval (PAIR) system for your application.
- Look for the document description: “Priority documents electronically retrieved by USPTO from a participating IP Office.”
- Contact the USPTO directly if you’re unsure about the status.
It’s important to verify receipt of the priority document to ensure compliance with the requirements for claiming priority to a foreign application.
For more information on foreign application, visit: foreign application.
For more information on PAIR system, visit: PAIR system.
For more information on PDX, visit: PDX.
For more information on priority document exchange, visit: priority document exchange.
For more information on USPTO, visit: USPTO.
To ensure successful retrieval of priority documents under PDX, applicants should follow these guidelines from MPEP 215.01:
Applicants are strongly encouraged to cite the foreign application using an acceptable format (see MPEP ยง 214.04) and use proper and consistent citation format throughout the U.S. application.
Key points for successful retrieval include:
- Provide proper, complete, and consistent citations of foreign priority applications and filing dates.
- Use an acceptable format for citing foreign applications (refer to MPEP ยง 214.04).
- Ensure the foreign priority claim is complete to prevent retrieval issues.
- Check the Private Patent Application and Information Retrieval (PAIR) system to confirm successful retrieval.
Remember, a successful retrieval typically takes about one week to complete.
To learn more:
Can the timeliness requirement for priority documents be met through PDX?
Yes, the timeliness requirement for priority documents can be met through the Priority Document Exchange (PDX) program. MPEP 215.02(a) states:
‘If the priority document is retrieved by the USPTO within the time period set in 37 CFR 1.55(g), the applicant need not take any further action to meet the timeliness requirement.’
This means that if the USPTO successfully retrieves the priority document through PDX within the specified time frame (usually the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application), the timeliness requirement is automatically satisfied. However, applicants should still monitor the status to ensure the document is received and be prepared to submit it manually if necessary.
To learn more:
Generally, there are no additional fees charged by the USPTO for using the PDX program to exchange priority documents. The MPEP 215.01 does not mention any specific fees for this service. However, it’s important to note:
- Regular patent application fees still apply.
- If the PDX retrieval fails and you need to submit a certified copy, standard fees for document submission may apply.
- Some foreign offices might charge fees for making documents available through PDX.
Always check the most current fee schedule on the USPTO website for the most up-to-date information on patent-related fees.
MPEP 200 - Types and Status of Application; Benefit and Priority Claims (2)
The Priority Document Exchange (PDX) program allows for electronic transmission of priority documents between participating foreign intellectual property offices. According to 37 CFR 1.55(i), if the foreign application was filed in a participating office, the requirement for a timely filed certified copy is considered satisfied if the Office receives a copy through the PDX program during the pendency of the application and before the patent is granted.
Under 37 CFR 1.55(i), the requirement for a certified copy of the foreign application will be considered satisfied if:
- The foreign application was filed in a foreign intellectual property office participating with the USPTO in a bilateral or multilateral priority document exchange agreement;
- The claim for priority is presented in an application data sheet, identifying the foreign application and including the information necessary for the participating foreign office to provide the USPTO with access to the foreign application; and
- The copy of the foreign application is received by the USPTO from the participating foreign office, or a certified copy is filed, within the time period specified in 37 CFR 1.55(g)(1).
In addition, if the foreign application was not filed in a participating office directly, but a certified copy was filed in an application subsequently filed in a participating office that permits the USPTO to obtain a copy, the applicant must also file a request in a separate document that the USPTO obtain a copy of the foreign application from the participating office. See MPEP 215.01.
MPEP 215-Certified Copy of Foreign Application (10)
If the United States Patent and Trademark Office (USPTO) doesn’t receive your priority document through the Priority Document Exchange (PDX) program within the specified time frame, you have options. According to MPEP 215.02(a):
The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.
If you find yourself in this situation:
- File a certified copy of the foreign application directly with the USPTO.
- Ensure this is done during the pendency of your application and before the patent is granted.
- Consider filing a petition under 37 CFR 1.55(e) or (f) if necessary.
Remember, it’s ultimately the applicant’s responsibility to ensure the priority document is properly filed, even when using the PDX program.
For more information on certified copy, visit: certified copy.
For more information on foreign application, visit: foreign application.
For more information on late submission, visit: late submission.
For more information on PDX, visit: PDX.
For more information on priority document exchange, visit: priority document exchange.
The PDX (Priority Document Exchange) program serves to facilitate the exchange of priority documents between participating intellectual property offices. According to MPEP 215.01, ‘The PDX program eliminates the need for applicants to submit paper certified copies of foreign applications in participating intellectual property offices.’ This streamlines the process, reducing both the burden on applicants and the workload for patent offices.
The Electronic Priority Document Exchange (PDX) program is a system that allows for the electronic transmission of priority documents between participating foreign intellectual property offices. As stated in the MPEP:
Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices.
This program simplifies the process of obtaining certified copies of foreign priority applications, which is crucial for establishing priority claims in patent applications.
To use the Priority Document Exchange (PDX) program, several requirements must be met as outlined in MPEP 215.02(a):
- The foreign application must be filed in a participating foreign intellectual property office.
- The claim for priority must be presented in an application data sheet (ADS) with specific details about the foreign application.
- The copy of the foreign application must be received by the USPTO from the participating foreign office, or a certified copy must be filed, within the specified time period.
The MPEP states:
37 CFR 1.55(i) specifically provides that this requirement for a timely filed certified copy of the foreign application will be considered satisfied if: (1) The foreign application was filed in a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office); (2) the claim for priority is presented in an application data sheet (ยง1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and including the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application; and (3) the copy of the foreign application is received by the Office from the participating foreign intellectual property office, or a certified copy of the foreign application is filed, within the time period set forth in 37 CFR 1.55(g)(1)).
Meeting these requirements allows applicants to potentially avoid manually filing certified copies of foreign priority documents.
For more information on certified copy, visit: certified copy.
For more information on foreign application, visit: foreign application.
For more information on PDX, visit: PDX.
For more information on priority document exchange, visit: priority document exchange.
For more information on requirements, visit: requirements.
The USPTO treats a proper priority claim to an application filed in a participating foreign intellectual property office as a request to obtain a copy of the foreign application. The MPEP states:
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.
This means that applicants do not need to submit a separate request for the USPTO to retrieve the foreign application if they have made a proper priority claim and the foreign office is a PDX participant.
The Priority Document Exchange (PDX) program allows for electronic transmission of priority documents between participating foreign intellectual property offices. According to 37 CFR 1.55(i), if the foreign application was filed in a participating office, the requirement for a timely filed certified copy is considered satisfied if the Office receives a copy through the PDX program during the pendency of the application and before the patent is granted.
How does the Electronic Priority Document Exchange (PDX) program work with the USPTO?
The Electronic Priority Document Exchange (PDX) program is a system that allows participating intellectual property offices to exchange priority documents electronically. According to MPEP 215.01, the USPTO participates in this program, which can simplify the process of submitting certified copies of foreign priority applications.
The MPEP states: The USPTO has agreements with the European Patent Office (EPO) and the Japan Patent Office (JPO) that enable the USPTO to obtain certified copies of foreign applications filed in those offices from their electronic records management systems.
Here’s how the PDX program works with the USPTO:
- If a foreign application was filed with a participating office (e.g., EPO or JPO), the applicant can request that office to make the certified copy of the priority document available to the USPTO.
- The applicant must submit a request to retrieve the priority document through the USPTO’s electronic filing system (EFS-Web or Patent Center).
- The USPTO will then attempt to retrieve the document electronically from the foreign office.
- If successful, this electronic retrieval satisfies the requirement to file a certified copy of the foreign priority application.
It’s important to note that the applicant is still responsible for ensuring that the certified copy is received by the USPTO within the required time frame, even when using the PDX program.
Under 37 CFR 1.55(i), the requirement for a certified copy of the foreign application will be considered satisfied if:
- The foreign application was filed in a foreign intellectual property office participating with the USPTO in a bilateral or multilateral priority document exchange agreement;
- The claim for priority is presented in an application data sheet, identifying the foreign application and including the information necessary for the participating foreign office to provide the USPTO with access to the foreign application; and
- The copy of the foreign application is received by the USPTO from the participating foreign office, or a certified copy is filed, within the time period specified in 37 CFR 1.55(g)(1).
In addition, if the foreign application was not filed in a participating office directly, but a certified copy was filed in an application subsequently filed in a participating office that permits the USPTO to obtain a copy, the applicant must also file a request in a separate document that the USPTO obtain a copy of the foreign application from the participating office. See MPEP 215.01.
To check if the United States Patent and Trademark Office (USPTO) has received your priority document through the Priority Document Exchange (PDX) program, you should monitor your application status. As stated in MPEP 215.02(a):
Applicants continue to bear the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued. Accordingly, applicants are encouraged to check as necessary to confirm receipt by the Office of appropriate documents.
You can check the status of your priority document in several ways:
- Check the Patent Application Information Retrieval (PAIR) system for your application.
- Look for the document description: “Priority documents electronically retrieved by USPTO from a participating IP Office.”
- Contact the USPTO directly if you’re unsure about the status.
It’s important to verify receipt of the priority document to ensure compliance with the requirements for claiming priority to a foreign application.
For more information on foreign application, visit: foreign application.
For more information on PAIR system, visit: PAIR system.
For more information on PDX, visit: PDX.
For more information on priority document exchange, visit: priority document exchange.
For more information on USPTO, visit: USPTO.
Generally, there are no additional fees charged by the USPTO for using the PDX program to exchange priority documents. The MPEP 215.01 does not mention any specific fees for this service. However, it’s important to note:
- Regular patent application fees still apply.
- If the PDX retrieval fails and you need to submit a certified copy, standard fees for document submission may apply.
- Some foreign offices might charge fees for making documents available through PDX.
Always check the most current fee schedule on the USPTO website for the most up-to-date information on patent-related fees.
Patent Law (27)
A separate written request is required in specific situations, as outlined in MPEP 215.01:
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.
Additionally, a separate request is needed when:
- The foreign application was not originally filed in a participating office, but a certified copy was filed in an application subsequently filed in a participating office.
- The applicant wants to use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.
To learn more:
The USPTO’s timing for retrieving foreign applications under PDX is described in MPEP 215.01:
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.
Key points about the retrieval timing:
- The first attempt is typically made when the application is assigned to an examiner.
- Retrieval occurs after the Office of Patent Application Processing completes its review.
- Applicants should check the Private PAIR system to confirm successful retrieval.
- A successful retrieval usually takes about one week to complete.
To learn more:
If the United States Patent and Trademark Office (USPTO) doesn’t receive your priority document through the Priority Document Exchange (PDX) program within the specified time frame, you have options. According to MPEP 215.02(a):
The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.
If you find yourself in this situation:
- File a certified copy of the foreign application directly with the USPTO.
- Ensure this is done during the pendency of your application and before the patent is granted.
- Consider filing a petition under 37 CFR 1.55(e) or (f) if necessary.
Remember, it’s ultimately the applicant’s responsibility to ensure the priority document is properly filed, even when using the PDX program.
For more information on certified copy, visit: certified copy.
For more information on foreign application, visit: foreign application.
For more information on late submission, visit: late submission.
For more information on PDX, visit: PDX.
For more information on priority document exchange, visit: priority document exchange.
When applicants receive a Notice of Allowance, they should take specific actions regarding PDX as outlined in MPEP 215.01:
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.
Important steps for applicants:
- Verify that the USPTO has received the foreign priority document.
- If the document hasn’t been received, consider filing a paper certified copy.
- Ensure the priority document is received before the patent is granted.
- Be aware that if a certified copy is filed after the issue fee is paid, the patent won’t include the priority claim unless corrected by a certificate of correction.
It’s crucial to confirm receipt of the priority document to maintain the priority claim in the issued patent.
To learn more:
The Priority Document Exchange (PDX) program is designed to facilitate the electronic exchange of priority documents between participating intellectual property offices. According to MPEP 215.01, the PDX program allows participating foreign intellectual property offices to exchange priority documents with the United States Patent and Trademark Office (USPTO) at no cost to the applicant.
This program aims to streamline the process of submitting priority documents, reducing the burden on applicants and improving efficiency in patent examination procedures.
To learn more:
The PDX (Priority Document Exchange) program serves to facilitate the exchange of priority documents between participating intellectual property offices. According to MPEP 215.01, ‘The PDX program eliminates the need for applicants to submit paper certified copies of foreign applications in participating intellectual property offices.’ This streamlines the process, reducing both the burden on applicants and the workload for patent offices.
The Priority Document Exchange (PDX) program is a system that allows participating intellectual property offices to exchange priority documents electronically. This program simplifies the process of submitting certified copies of foreign priority applications for patent applicants.
According to the MPEP, The Office website provides information concerning the priority document exchange program ( www.uspto.gov/patents/basics/international-protection/electronic-priority-document-exchange-pdx )
. This information includes participating offices and instructions for accessing foreign applications.
To learn more:
The Electronic Priority Document Exchange (PDX) program is a system that allows for the electronic transmission of priority documents between participating foreign intellectual property offices. As stated in the MPEP:
Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices.
This program simplifies the process of obtaining certified copies of foreign priority applications, which is crucial for establishing priority claims in patent applications.
What is the DAS code for PDX?
The DAS (Digital Access Service) code for PDX (Priority Document Exchange) is US. This code is used when participating in the WIPO DAS system for electronic exchange of priority documents. As stated in the MPEP 215.01: The DAS code for the USPTO is ‘US’.
Applicants need to use this code when authorizing the USPTO to retrieve priority documents from other offices or when allowing other offices to retrieve priority documents from the USPTO through the WIPO DAS system.
To learn more:
Electronic Priority Document Exchange (PDX) is a system that allows for the electronic transmission of priority documents between participating foreign intellectual property offices. As stated in MPEP 215.01:
Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices.
This system streamlines the process of obtaining certified copies of foreign priority applications, which is crucial for claiming priority in patent applications.
To learn more:
What happens if PDX retrieval of a priority document fails?
If the PDX (Priority Document Exchange) retrieval of a priority document fails, the USPTO will notify the applicant. As stated in MPEP 215.01: The USPTO will notify the applicant of any unsuccessful attempt to electronically retrieve a priority document.
In such cases:
- The applicant will be given additional time to provide the priority document.
- The applicant may need to submit a certified copy of the priority document directly.
- If using WIPO DAS, the applicant should check if the access code is correct and the document is available in the system.
- The applicant may need to contact the foreign office to ensure the document is accessible through PDX or WIPO DAS.
It’s important to address any retrieval issues promptly to ensure the priority claim is properly documented in the application.
To learn more:
To use the Priority Document Exchange (PDX) program, several requirements must be met as outlined in MPEP 215.02(a):
- The foreign application must be filed in a participating foreign intellectual property office.
- The claim for priority must be presented in an application data sheet (ADS) with specific details about the foreign application.
- The copy of the foreign application must be received by the USPTO from the participating foreign office, or a certified copy must be filed, within the specified time period.
The MPEP states:
37 CFR 1.55(i) specifically provides that this requirement for a timely filed certified copy of the foreign application will be considered satisfied if: (1) The foreign application was filed in a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office); (2) the claim for priority is presented in an application data sheet (ยง1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and including the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application; and (3) the copy of the foreign application is received by the Office from the participating foreign intellectual property office, or a certified copy of the foreign application is filed, within the time period set forth in 37 CFR 1.55(g)(1)).
Meeting these requirements allows applicants to potentially avoid manually filing certified copies of foreign priority documents.
For more information on certified copy, visit: certified copy.
For more information on foreign application, visit: foreign application.
For more information on PDX, visit: PDX.
For more information on priority document exchange, visit: priority document exchange.
For more information on requirements, visit: requirements.
How to retrieve a foreign priority document through PDX?
To retrieve a foreign priority document through PDX (Priority Document Exchange), follow these steps:
- Ensure the foreign office participates in PDX or WIPO DAS.
- File an application with the USPTO claiming foreign priority.
- Submit a request to retrieve the priority document using USPTO form PTO/SB/38 or through EFS-Web.
- Provide the necessary information, including the foreign application number and filing date.
- If using WIPO DAS, include the DAS access code provided by the foreign office.
According to MPEP 215.01: Applicants need not submit a copy of the foreign application if the foreign application was filed in a participating foreign intellectual property office, and the applicant provides sufficient information to the USPTO to retrieve the priority document.
To learn more:
How does the USPTO retrieve priority documents through PDX?
The USPTO retrieves priority documents through the Priority Document Exchange (PDX) program upon request from the applicant. As stated in MPEP 215.02(a), ‘If the applicant requests retrieval of the priority document through the PDX program, the USPTO will attempt to retrieve the document.’ The process involves:
- The applicant making a request for retrieval
- The USPTO accessing the electronic system of the participating office
- Retrieving the priority document if available
- Adding the retrieved document to the application file
This streamlined process eliminates the need for applicants to manually obtain and submit priority documents from other participating patent offices.
To learn more:
The USPTO treats a proper priority claim to an application filed in a participating foreign intellectual property office as a request to obtain a copy of the foreign application. The MPEP states:
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.
This means that applicants do not need to submit a separate request for the USPTO to retrieve the foreign application if they have made a proper priority claim and the foreign office is a PDX participant.
The USPTO treats a proper priority claim to an application filed in a participating foreign intellectual property office as a request to obtain a copy of the foreign application. According to MPEP 215.01:
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.
This means that applicants generally do not need to file a separate request for the USPTO to retrieve the priority document if it’s from a participating office.
To learn more:
The Priority Document Exchange (PDX) program allows for electronic transmission of priority documents between participating foreign intellectual property offices. According to 37 CFR 1.55(i), if the foreign application was filed in a participating office, the requirement for a timely filed certified copy is considered satisfied if the Office receives a copy through the PDX program during the pendency of the application and before the patent is granted.
How does the Electronic Priority Document Exchange (PDX) program work with the USPTO?
The Electronic Priority Document Exchange (PDX) program is a system that allows participating intellectual property offices to exchange priority documents electronically. According to MPEP 215.01, the USPTO participates in this program, which can simplify the process of submitting certified copies of foreign priority applications.
The MPEP states: The USPTO has agreements with the European Patent Office (EPO) and the Japan Patent Office (JPO) that enable the USPTO to obtain certified copies of foreign applications filed in those offices from their electronic records management systems.
Here’s how the PDX program works with the USPTO:
- If a foreign application was filed with a participating office (e.g., EPO or JPO), the applicant can request that office to make the certified copy of the priority document available to the USPTO.
- The applicant must submit a request to retrieve the priority document through the USPTO’s electronic filing system (EFS-Web or Patent Center).
- The USPTO will then attempt to retrieve the document electronically from the foreign office.
- If successful, this electronic retrieval satisfies the requirement to file a certified copy of the foreign priority application.
It’s important to note that the applicant is still responsible for ensuring that the certified copy is received by the USPTO within the required time frame, even when using the PDX program.
The PDX system has specific procedures for handling international applications filed under the Patent Cooperation Treaty (PCT). According to MPEP 215.01:
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.
Key points for PCT applications:
- Automatic retrieval attempts are made for certain PCT applications.
- Applies to applications filed with receiving offices: RO/AU, RO/DK, RO/ES, RO/FI, RO/IB, RO/MA, or RO/SE.
- The applicant must provide the WIPO DAS access code for the international application.
- This process streamlines priority document retrieval for eligible PCT applications.
Applicants should ensure they provide the necessary WIPO DAS access code to facilitate this automatic retrieval process.
To learn more:
PDX for U.S. design applications has specific considerations, as explained in MPEP 215.01:
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.
Key points for design applications:
- The USPTO attempts to retrieve foreign priority documents for design applications where possible.
- Spanish industrial design applications are accessible through WIPO DAS.
- Applicants must provide the WIPO DAS access code for Spanish industrial design applications.
- The USPTO will attempt retrieval via WIPO DAS when the access code is provided.
This process helps streamline the priority document retrieval for design applications, particularly those with Spanish priority.
To learn more:
How do I retrieve a priority document from a foreign IP office using PDX?
To retrieve a priority document from a foreign IP office using PDX:
- Ensure the foreign IP office participates in PDX.
- File an application with the USPTO that claims priority to the foreign application.
- Submit a Request to Retrieve through EFS-Web or Patent Center.
- Include the foreign application number, country code, and filing date.
- The USPTO will attempt to retrieve the document electronically.
According to MPEP 215.01: “The USPTO will attempt to electronically retrieve the priority document through the WIPO DAS […] or through a bilateral PDX agreement.”
To learn more:
Under 37 CFR 1.55(i), the requirement for a certified copy of the foreign application will be considered satisfied if:
- The foreign application was filed in a foreign intellectual property office participating with the USPTO in a bilateral or multilateral priority document exchange agreement;
- The claim for priority is presented in an application data sheet, identifying the foreign application and including the information necessary for the participating foreign office to provide the USPTO with access to the foreign application; and
- The copy of the foreign application is received by the USPTO from the participating foreign office, or a certified copy is filed, within the time period specified in 37 CFR 1.55(g)(1).
In addition, if the foreign application was not filed in a participating office directly, but a certified copy was filed in an application subsequently filed in a participating office that permits the USPTO to obtain a copy, the applicant must also file a request in a separate document that the USPTO obtain a copy of the foreign application from the participating office. See MPEP 215.01.
Confirming receipt of your priority document by the USPTO through the Priority Document Exchange (PDX) program is crucial. The MPEP emphasizes this responsibility:
Applicants continue to bear the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued. Accordingly, applicants are encouraged to check as necessary to confirm receipt by the Office of appropriate documents.
To verify receipt, you can check the Patent Application Information Retrieval (PAIR) system. Priority documents retrieved through PDX will have the document description: Priority documents electronically retrieved by USPTO from a participating IP Office.
If you don’t see this confirmation, you may need to follow up with the USPTO or consider submitting a certified copy directly to ensure your priority claim is properly documented.
To learn more:
To check if the United States Patent and Trademark Office (USPTO) has received your priority document through the Priority Document Exchange (PDX) program, you should monitor your application status. As stated in MPEP 215.02(a):
Applicants continue to bear the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued. Accordingly, applicants are encouraged to check as necessary to confirm receipt by the Office of appropriate documents.
You can check the status of your priority document in several ways:
- Check the Patent Application Information Retrieval (PAIR) system for your application.
- Look for the document description: “Priority documents electronically retrieved by USPTO from a participating IP Office.”
- Contact the USPTO directly if you’re unsure about the status.
It’s important to verify receipt of the priority document to ensure compliance with the requirements for claiming priority to a foreign application.
For more information on foreign application, visit: foreign application.
For more information on PAIR system, visit: PAIR system.
For more information on PDX, visit: PDX.
For more information on priority document exchange, visit: priority document exchange.
For more information on USPTO, visit: USPTO.
To ensure successful retrieval of priority documents under PDX, applicants should follow these guidelines from MPEP 215.01:
Applicants are strongly encouraged to cite the foreign application using an acceptable format (see MPEP ยง 214.04) and use proper and consistent citation format throughout the U.S. application.
Key points for successful retrieval include:
- Provide proper, complete, and consistent citations of foreign priority applications and filing dates.
- Use an acceptable format for citing foreign applications (refer to MPEP ยง 214.04).
- Ensure the foreign priority claim is complete to prevent retrieval issues.
- Check the Private Patent Application and Information Retrieval (PAIR) system to confirm successful retrieval.
Remember, a successful retrieval typically takes about one week to complete.
To learn more:
Can the timeliness requirement for priority documents be met through PDX?
Yes, the timeliness requirement for priority documents can be met through the Priority Document Exchange (PDX) program. MPEP 215.02(a) states:
‘If the priority document is retrieved by the USPTO within the time period set in 37 CFR 1.55(g), the applicant need not take any further action to meet the timeliness requirement.’
This means that if the USPTO successfully retrieves the priority document through PDX within the specified time frame (usually the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application), the timeliness requirement is automatically satisfied. However, applicants should still monitor the status to ensure the document is received and be prepared to submit it manually if necessary.
To learn more:
Generally, there are no additional fees charged by the USPTO for using the PDX program to exchange priority documents. The MPEP 215.01 does not mention any specific fees for this service. However, it’s important to note:
- Regular patent application fees still apply.
- If the PDX retrieval fails and you need to submit a certified copy, standard fees for document submission may apply.
- Some foreign offices might charge fees for making documents available through PDX.
Always check the most current fee schedule on the USPTO website for the most up-to-date information on patent-related fees.
Patent Procedure (27)
A separate written request is required in specific situations, as outlined in MPEP 215.01:
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.
Additionally, a separate request is needed when:
- The foreign application was not originally filed in a participating office, but a certified copy was filed in an application subsequently filed in a participating office.
- The applicant wants to use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.
To learn more:
The USPTO’s timing for retrieving foreign applications under PDX is described in MPEP 215.01:
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.
Key points about the retrieval timing:
- The first attempt is typically made when the application is assigned to an examiner.
- Retrieval occurs after the Office of Patent Application Processing completes its review.
- Applicants should check the Private PAIR system to confirm successful retrieval.
- A successful retrieval usually takes about one week to complete.
To learn more:
If the United States Patent and Trademark Office (USPTO) doesn’t receive your priority document through the Priority Document Exchange (PDX) program within the specified time frame, you have options. According to MPEP 215.02(a):
The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.
If you find yourself in this situation:
- File a certified copy of the foreign application directly with the USPTO.
- Ensure this is done during the pendency of your application and before the patent is granted.
- Consider filing a petition under 37 CFR 1.55(e) or (f) if necessary.
Remember, it’s ultimately the applicant’s responsibility to ensure the priority document is properly filed, even when using the PDX program.
For more information on certified copy, visit: certified copy.
For more information on foreign application, visit: foreign application.
For more information on late submission, visit: late submission.
For more information on PDX, visit: PDX.
For more information on priority document exchange, visit: priority document exchange.
When applicants receive a Notice of Allowance, they should take specific actions regarding PDX as outlined in MPEP 215.01:
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.
Important steps for applicants:
- Verify that the USPTO has received the foreign priority document.
- If the document hasn’t been received, consider filing a paper certified copy.
- Ensure the priority document is received before the patent is granted.
- Be aware that if a certified copy is filed after the issue fee is paid, the patent won’t include the priority claim unless corrected by a certificate of correction.
It’s crucial to confirm receipt of the priority document to maintain the priority claim in the issued patent.
To learn more:
The Priority Document Exchange (PDX) program is designed to facilitate the electronic exchange of priority documents between participating intellectual property offices. According to MPEP 215.01, the PDX program allows participating foreign intellectual property offices to exchange priority documents with the United States Patent and Trademark Office (USPTO) at no cost to the applicant.
This program aims to streamline the process of submitting priority documents, reducing the burden on applicants and improving efficiency in patent examination procedures.
To learn more:
The PDX (Priority Document Exchange) program serves to facilitate the exchange of priority documents between participating intellectual property offices. According to MPEP 215.01, ‘The PDX program eliminates the need for applicants to submit paper certified copies of foreign applications in participating intellectual property offices.’ This streamlines the process, reducing both the burden on applicants and the workload for patent offices.
The Priority Document Exchange (PDX) program is a system that allows participating intellectual property offices to exchange priority documents electronically. This program simplifies the process of submitting certified copies of foreign priority applications for patent applicants.
According to the MPEP, The Office website provides information concerning the priority document exchange program ( www.uspto.gov/patents/basics/international-protection/electronic-priority-document-exchange-pdx )
. This information includes participating offices and instructions for accessing foreign applications.
To learn more:
The Electronic Priority Document Exchange (PDX) program is a system that allows for the electronic transmission of priority documents between participating foreign intellectual property offices. As stated in the MPEP:
Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices.
This program simplifies the process of obtaining certified copies of foreign priority applications, which is crucial for establishing priority claims in patent applications.
What is the DAS code for PDX?
The DAS (Digital Access Service) code for PDX (Priority Document Exchange) is US. This code is used when participating in the WIPO DAS system for electronic exchange of priority documents. As stated in the MPEP 215.01: The DAS code for the USPTO is ‘US’.
Applicants need to use this code when authorizing the USPTO to retrieve priority documents from other offices or when allowing other offices to retrieve priority documents from the USPTO through the WIPO DAS system.
To learn more:
Electronic Priority Document Exchange (PDX) is a system that allows for the electronic transmission of priority documents between participating foreign intellectual property offices. As stated in MPEP 215.01:
Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices.
This system streamlines the process of obtaining certified copies of foreign priority applications, which is crucial for claiming priority in patent applications.
To learn more:
What happens if PDX retrieval of a priority document fails?
If the PDX (Priority Document Exchange) retrieval of a priority document fails, the USPTO will notify the applicant. As stated in MPEP 215.01: The USPTO will notify the applicant of any unsuccessful attempt to electronically retrieve a priority document.
In such cases:
- The applicant will be given additional time to provide the priority document.
- The applicant may need to submit a certified copy of the priority document directly.
- If using WIPO DAS, the applicant should check if the access code is correct and the document is available in the system.
- The applicant may need to contact the foreign office to ensure the document is accessible through PDX or WIPO DAS.
It’s important to address any retrieval issues promptly to ensure the priority claim is properly documented in the application.
To learn more:
To use the Priority Document Exchange (PDX) program, several requirements must be met as outlined in MPEP 215.02(a):
- The foreign application must be filed in a participating foreign intellectual property office.
- The claim for priority must be presented in an application data sheet (ADS) with specific details about the foreign application.
- The copy of the foreign application must be received by the USPTO from the participating foreign office, or a certified copy must be filed, within the specified time period.
The MPEP states:
37 CFR 1.55(i) specifically provides that this requirement for a timely filed certified copy of the foreign application will be considered satisfied if: (1) The foreign application was filed in a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office); (2) the claim for priority is presented in an application data sheet (ยง1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and including the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application; and (3) the copy of the foreign application is received by the Office from the participating foreign intellectual property office, or a certified copy of the foreign application is filed, within the time period set forth in 37 CFR 1.55(g)(1)).
Meeting these requirements allows applicants to potentially avoid manually filing certified copies of foreign priority documents.
For more information on certified copy, visit: certified copy.
For more information on foreign application, visit: foreign application.
For more information on PDX, visit: PDX.
For more information on priority document exchange, visit: priority document exchange.
For more information on requirements, visit: requirements.
How to retrieve a foreign priority document through PDX?
To retrieve a foreign priority document through PDX (Priority Document Exchange), follow these steps:
- Ensure the foreign office participates in PDX or WIPO DAS.
- File an application with the USPTO claiming foreign priority.
- Submit a request to retrieve the priority document using USPTO form PTO/SB/38 or through EFS-Web.
- Provide the necessary information, including the foreign application number and filing date.
- If using WIPO DAS, include the DAS access code provided by the foreign office.
According to MPEP 215.01: Applicants need not submit a copy of the foreign application if the foreign application was filed in a participating foreign intellectual property office, and the applicant provides sufficient information to the USPTO to retrieve the priority document.
To learn more:
How does the USPTO retrieve priority documents through PDX?
The USPTO retrieves priority documents through the Priority Document Exchange (PDX) program upon request from the applicant. As stated in MPEP 215.02(a), ‘If the applicant requests retrieval of the priority document through the PDX program, the USPTO will attempt to retrieve the document.’ The process involves:
- The applicant making a request for retrieval
- The USPTO accessing the electronic system of the participating office
- Retrieving the priority document if available
- Adding the retrieved document to the application file
This streamlined process eliminates the need for applicants to manually obtain and submit priority documents from other participating patent offices.
To learn more:
The USPTO treats a proper priority claim to an application filed in a participating foreign intellectual property office as a request to obtain a copy of the foreign application. The MPEP states:
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.
This means that applicants do not need to submit a separate request for the USPTO to retrieve the foreign application if they have made a proper priority claim and the foreign office is a PDX participant.
The USPTO treats a proper priority claim to an application filed in a participating foreign intellectual property office as a request to obtain a copy of the foreign application. According to MPEP 215.01:
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.
This means that applicants generally do not need to file a separate request for the USPTO to retrieve the priority document if it’s from a participating office.
To learn more:
The Priority Document Exchange (PDX) program allows for electronic transmission of priority documents between participating foreign intellectual property offices. According to 37 CFR 1.55(i), if the foreign application was filed in a participating office, the requirement for a timely filed certified copy is considered satisfied if the Office receives a copy through the PDX program during the pendency of the application and before the patent is granted.
How does the Electronic Priority Document Exchange (PDX) program work with the USPTO?
The Electronic Priority Document Exchange (PDX) program is a system that allows participating intellectual property offices to exchange priority documents electronically. According to MPEP 215.01, the USPTO participates in this program, which can simplify the process of submitting certified copies of foreign priority applications.
The MPEP states: The USPTO has agreements with the European Patent Office (EPO) and the Japan Patent Office (JPO) that enable the USPTO to obtain certified copies of foreign applications filed in those offices from their electronic records management systems.
Here’s how the PDX program works with the USPTO:
- If a foreign application was filed with a participating office (e.g., EPO or JPO), the applicant can request that office to make the certified copy of the priority document available to the USPTO.
- The applicant must submit a request to retrieve the priority document through the USPTO’s electronic filing system (EFS-Web or Patent Center).
- The USPTO will then attempt to retrieve the document electronically from the foreign office.
- If successful, this electronic retrieval satisfies the requirement to file a certified copy of the foreign priority application.
It’s important to note that the applicant is still responsible for ensuring that the certified copy is received by the USPTO within the required time frame, even when using the PDX program.
The PDX system has specific procedures for handling international applications filed under the Patent Cooperation Treaty (PCT). According to MPEP 215.01:
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.
Key points for PCT applications:
- Automatic retrieval attempts are made for certain PCT applications.
- Applies to applications filed with receiving offices: RO/AU, RO/DK, RO/ES, RO/FI, RO/IB, RO/MA, or RO/SE.
- The applicant must provide the WIPO DAS access code for the international application.
- This process streamlines priority document retrieval for eligible PCT applications.
Applicants should ensure they provide the necessary WIPO DAS access code to facilitate this automatic retrieval process.
To learn more:
PDX for U.S. design applications has specific considerations, as explained in MPEP 215.01:
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.
Key points for design applications:
- The USPTO attempts to retrieve foreign priority documents for design applications where possible.
- Spanish industrial design applications are accessible through WIPO DAS.
- Applicants must provide the WIPO DAS access code for Spanish industrial design applications.
- The USPTO will attempt retrieval via WIPO DAS when the access code is provided.
This process helps streamline the priority document retrieval for design applications, particularly those with Spanish priority.
To learn more:
How do I retrieve a priority document from a foreign IP office using PDX?
To retrieve a priority document from a foreign IP office using PDX:
- Ensure the foreign IP office participates in PDX.
- File an application with the USPTO that claims priority to the foreign application.
- Submit a Request to Retrieve through EFS-Web or Patent Center.
- Include the foreign application number, country code, and filing date.
- The USPTO will attempt to retrieve the document electronically.
According to MPEP 215.01: “The USPTO will attempt to electronically retrieve the priority document through the WIPO DAS […] or through a bilateral PDX agreement.”
To learn more:
Under 37 CFR 1.55(i), the requirement for a certified copy of the foreign application will be considered satisfied if:
- The foreign application was filed in a foreign intellectual property office participating with the USPTO in a bilateral or multilateral priority document exchange agreement;
- The claim for priority is presented in an application data sheet, identifying the foreign application and including the information necessary for the participating foreign office to provide the USPTO with access to the foreign application; and
- The copy of the foreign application is received by the USPTO from the participating foreign office, or a certified copy is filed, within the time period specified in 37 CFR 1.55(g)(1).
In addition, if the foreign application was not filed in a participating office directly, but a certified copy was filed in an application subsequently filed in a participating office that permits the USPTO to obtain a copy, the applicant must also file a request in a separate document that the USPTO obtain a copy of the foreign application from the participating office. See MPEP 215.01.
Confirming receipt of your priority document by the USPTO through the Priority Document Exchange (PDX) program is crucial. The MPEP emphasizes this responsibility:
Applicants continue to bear the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued. Accordingly, applicants are encouraged to check as necessary to confirm receipt by the Office of appropriate documents.
To verify receipt, you can check the Patent Application Information Retrieval (PAIR) system. Priority documents retrieved through PDX will have the document description: Priority documents electronically retrieved by USPTO from a participating IP Office.
If you don’t see this confirmation, you may need to follow up with the USPTO or consider submitting a certified copy directly to ensure your priority claim is properly documented.
To learn more:
To check if the United States Patent and Trademark Office (USPTO) has received your priority document through the Priority Document Exchange (PDX) program, you should monitor your application status. As stated in MPEP 215.02(a):
Applicants continue to bear the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued. Accordingly, applicants are encouraged to check as necessary to confirm receipt by the Office of appropriate documents.
You can check the status of your priority document in several ways:
- Check the Patent Application Information Retrieval (PAIR) system for your application.
- Look for the document description: “Priority documents electronically retrieved by USPTO from a participating IP Office.”
- Contact the USPTO directly if you’re unsure about the status.
It’s important to verify receipt of the priority document to ensure compliance with the requirements for claiming priority to a foreign application.
For more information on foreign application, visit: foreign application.
For more information on PAIR system, visit: PAIR system.
For more information on PDX, visit: PDX.
For more information on priority document exchange, visit: priority document exchange.
For more information on USPTO, visit: USPTO.
To ensure successful retrieval of priority documents under PDX, applicants should follow these guidelines from MPEP 215.01:
Applicants are strongly encouraged to cite the foreign application using an acceptable format (see MPEP ยง 214.04) and use proper and consistent citation format throughout the U.S. application.
Key points for successful retrieval include:
- Provide proper, complete, and consistent citations of foreign priority applications and filing dates.
- Use an acceptable format for citing foreign applications (refer to MPEP ยง 214.04).
- Ensure the foreign priority claim is complete to prevent retrieval issues.
- Check the Private Patent Application and Information Retrieval (PAIR) system to confirm successful retrieval.
Remember, a successful retrieval typically takes about one week to complete.
To learn more:
Can the timeliness requirement for priority documents be met through PDX?
Yes, the timeliness requirement for priority documents can be met through the Priority Document Exchange (PDX) program. MPEP 215.02(a) states:
‘If the priority document is retrieved by the USPTO within the time period set in 37 CFR 1.55(g), the applicant need not take any further action to meet the timeliness requirement.’
This means that if the USPTO successfully retrieves the priority document through PDX within the specified time frame (usually the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application), the timeliness requirement is automatically satisfied. However, applicants should still monitor the status to ensure the document is received and be prepared to submit it manually if necessary.
To learn more:
Generally, there are no additional fees charged by the USPTO for using the PDX program to exchange priority documents. The MPEP 215.01 does not mention any specific fees for this service. However, it’s important to note:
- Regular patent application fees still apply.
- If the PDX retrieval fails and you need to submit a certified copy, standard fees for document submission may apply.
- Some foreign offices might charge fees for making documents available through PDX.
Always check the most current fee schedule on the USPTO website for the most up-to-date information on patent-related fees.