legal shots.jpg


legal shots.jpg

Electronic Priority Document Exchange (PDX)

What is the Electronic Priority Document Exchange (PDX)?

The Electronic Priority Document Exchange (PDX) is a program that provides for electronic transmission of priority documents to and from participating foreign Intellectual Property (IP) Offices. There is no fee for this service.

For many foreign IP Offices, the USPTO exchanges priority documents via the Priority Document Access Service (DAS), an electronic system for exchanging priority documents administered by the International Bureau of the World Intellectual Property Organization (WIPO).1

What Foreign IP Offices participate in DAS?

As of December 1, 2018, the USPTO can retrieve foreign applications filed with the following DAS depositing offices:

  • (AU) IP Australia
  • (BR) Brazil National Institute of Industrial Property
  • (CL) Chile National Institute of Industrial Property
  • (CN) National Intellectual Property Administration, PRC (CNIPA)
  • (DK) Denmark Patent and Trademark Office
  • (EA) Eurasian Patent Office
  • (EE) Estonian Patent Office
  • (ES) Spanish Patent and Trademark Office
  • (FI) National Board of Patents and Registration of Finland
  • (GB) United Kingdom Intellectual Property Office
  • (IB) International Bureau (IB), in its capacity as RO/IB
  • (IN) Indian Patent Office
  • (JP) Japan Patent Office
  • (KR) Korean Intellectual Property Office
  • (MA) Moroccan Office of Industrial and Commercial Property
  • (NL) Netherlands Patent Office
  • (NZ) New Zealand Intellectual Property Office
  • (SE) Swedish Patent and Trademark Office

How does it work?

Under DAS, Applicants can request that a first office (known as the Office of First Filing (OFF) or Depositing Office) make priority documents available to the system and then request that other offices (known as Offices of Second Filing (OSF) or Accessing Offices) retrieve the documents electronically from the system. The USPTO offers the exchange of applications through DAS as both a Depositing Office and as an Accessing Office.

The USPTO as a Depositing Office (Office of First Filing)

For U.S. applications filed on or after March 18, 2013, the USPTO automatically registers all U.S. applications into DAS when the U.S. application meets one of the following criteria:

  • an authorization to permit access by a foreign intellectual property office (Form PTO/SB/39, PTO/SB/01 or PTO/AIA/14) has been accepted;
  • an application has been published; or
  • a patent has been granted.

For U.S. applications filed prior to March 18, 2013, applicants can request that the USPTO register the U.S. application into DAS by contacting the patents Electronic Business Center (EBC).

The USPTO as an Accessing Office (Office of Second Filing)

In order for the USPTO to retrieve a foreign priority application via DAS, the applicant must provide the USPTO with the DAS Access Code for the foreign priority application. The Access Code is generated by the Depositing Office and can be provided to the USPTO on the Application Data Sheet (ADS).2

For U.S. applications claiming priority to a foreign application filed in a participating foreign IP office, automatic retrieval via DAS will be attempted by the USPTO once the U.S. application is docketed to a patent examiner. However, for successful automatic retrieval by the USPTO, a DAS Access Code must be provided for the priority application.

If a priority claim in a U.S. application is made to a foreign application that is filed in a nonparticipating foreign IP Office, a separate written request to retrieve can be filed under 37 CFR 1.55(i)(4) if a certified copy of the foreign application is contained in an EP or JP application file.3

What does the applicant need to do?

The applicant must request that the Depositing Office (or the Office of First Filing) deposit a copy of the priority application with DAS. The requirements for making this request will depend on the particular office with which the priority application was filed.

The applicant must the provide the Accessing Office (or the Office of Second Filing) with the DAS Access Code generated by the Depositing Office. For U.S. applications, the DAS Access Code is the 4-digit confirmation number indicated on the Filing Receipt and EFS-Web Electronic Acknowledgement Receipt.

Can this be used for all U.S. applications?

Not all U.S. applications are supported by the PDX program. The USPTO is unable to transmit U.S. design applications and international applications filed under the Patent Cooperation Treaty (PCT) with the United States Receiving Office (RO/US). However, most applicants meet the requirements of PCT Rule 17.1(a)-(c) by providing a certified copy of the foreign priority application during the international phase and the International Bureau transmits a copy of the priority application to the USPTO, independently of the PDX system.

1 The European Patent Office (EPO) announced on November 1, 2018 that it will join DAS. However, during the transition period, the USPTO priority document exchange with the EPO still falls under the previous Direct Bilateral Exchange arrangement, not DAS.
2 The Application Data Sheet (ADS) includes a section in the “Foreign Priority Information” for the Access Code. The Filing Receipt will contain an indication of “Access Code Provided” or “No Access Code Provided” for foreign applications that are filed in a DAS participating office.
3 Form PTO/SB/38 or an applicant-generated equivalent must be used to identify the EP or JP application as well as the certified copy from the nonparticipating office contained in the EP or JP application file.