The United States Patent and Trademark Office (USPTO) and Japan Patent Office (JPO), leaders in global intellectual property examinations, have enabled applicants to submit certain documents (such as patent priority documents) from one of the two patent offices to the other digitally (in the Primary Document Exchange, or PDX) for years. The PDX, however, has not been very transparent: it was not always easy to verify whether the JPO actually received the priority document.
However, the World Intellectual Property Organization (WIPO) has as of October 1, 2017 begun handling the priority document exchanges for such cases with its Digital Access Service (DAS). The DAS Applicant Portal enables agents for American applicants to Japan to verify online the submission status of the document(s) they wish to file, making the process more transparent.
The risk of depending on the less-transparent old PDX lay in being unable to confirm or monitor submission easily, leading to precautions such as submitting priority documents on paper. Now that WIPO enables agents to monitor document submission online, applicants can save money and time on the priority document exchange through the simple and verifiable DAS system.
JPO warns applicants filing the US patent application first that if they opt out of Authorizations to Permit Access by a Foreign Property Office(s) in the Application Data Sheet for the US application, they cannot immediately use the WIPO’s DAS later but first need to file a Form SB39 to the USPTO (please refer to the figure at right, from the JPO’s article). Also, the patent agent needs a WIPO account to access the DAS portal and perform the priority document exchange digitally.
Writer: Josiah T. Momose.
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