Free Transfer of Priority Documents

On 16th January 2007, the European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO) initiated a new programme to exchange patent application priority documents electronically between the two offices, following an agreement between the two offices in 2005.

Under the Paris Convention for the Protection of Industrial Property, a treaty which provides important rights for the worldwide protection of intellectual property rights, a patent applicant may file an application in one Paris Convention member country and, within 12 months, file corresponding applications in other Paris Convention countries claiming the filing date of the first application. This gives the applicant time to decide in which countries to commercially exploit their inventions whilst still allowing the applicant to obtain effective protection in these countries. In order to validly claim the filing date of the first application, known as claiming priority, it is normally necessary to file a certified paper copy of the first application (the priority document), at each of the patent offices at which corresponding applications were filed. Now that the USPTO and EPO have agreed to electronically exchange priority documents, such priority documents can be obtained directly from the other office’s electronic records system so that applicants no longer need to file the priority document themselves. However, if a priority document cannot be obtained electronically, the applicant may still be required to file a paper copy. This new programme, which is free of charge to the applicant, will simplify the patent process and reduce the cost for the applicant. Further, it will reduce administrative costs for the two patent offices associated with issuing and handling paper copies of priority documents.

Jon Dudas, Director of the USPTO, was positive about the agreement saying, “Electronic priority document exchange is a win for both applicants and our offices. By leveraging our electronic file management systems, we can streamline our internal processing while providing our applicants with the substantial benefits of reduced expenses and paperwork.” Alain Pompidou, President of the EPO, was equally up-beat, saying, “The realisation of the electronic priority document exchange is a major step towards a user-orientated, efficient patent system and a good example of the excellent co-operation between the EPO and USPTO.”

This agreement signals continued co-operation between the major patent offices to assist in more efficient patent prosecution. A similar agreement has been in place between the EPO and the Japanese Patent Office (JPO) for a number of years, and later this year, the USPTO is also expected to begin electronic priority document exchange with the JPO.

Justin Wilson