System and how to use it
PDAS, when It works, is an efficient digital alternative to filing paper copies of priority documents with multiple Patent Offices. If a patent application is registered into the PDAS system, an applicant claiming priority can request an Office of Second Filing (OSF) to retrieve an electronic copy of the priority document from an Office of First Filing (OFF) via the service.
The service is voluntary for both applicants and Offices. As of 21 August 2012, the list of participating offices includes: AU, DK, CN, ES, FI, GB, IB, JP, KR, SE, US.
The service has some drawbacks, chief among which is that applicants must register BOTH with their local office of first filing AND with WIPO through its online portal. Certain steps need to be completed on the WIPO portal before the office of second filing access the priority document.
Moreover, there are teething problems and in some cases delays, so the process is not a last-minute solution. It cannot be relied on to be quicker than ordering certified copies and sending them by courier, but it is a lot cheaper if planned in advance.
The steps necessary to take advantage of the system are set out in detail here to assist clients in using this service.
Example 1- The USPTO is the Office of First Filing (OFF)
The EPO or JPO or KIPO as the Office of Second Filing (OSF)
A direct Priority Document Exchange (PDX) procedure is set up between the USPTO, EPO, JPO and KIPO. Once the necessary form is filed at the USPTO, no further input is required by the applicant.
The UKIPO or German Patent Office as the OSF
For the UKIPO and other patent offices, a PDX service is provided through WIPO. This is rather more complex. The applicant must complete the following steps:
Step 1 - submit form PTO/SB/39 with the USPTO.
Step 2 - receive a four-digit access code from the USPTO. The WIPO access code is the Confirmation Number on the Electronic Acknowledgement Receipt received from the USPTO for the form PTO/SB/39:
Step 3 - register the US document at WIPO's Patent Scope site using the access code (see over).
Step 4 - grant the OSF (e.g. the UKIPO) access to the US document via the Access Control List.
Once these steps are completed, we (Jenkins) can instruct the UKIPO or German Patent Office to obtain the document as necessary. In each case, we will need the WIPO-assigned "access code". The UKIPO or DPA will not be able to access the document unless steps 3 and 4 above has been completed.
A request for the UKIPO to obtain a priority doc from PDAS can be made at the time of online filing (of the UK patent application), or as a subsequently filed request.
Steps 3 and 4 - How to Authorise Access To The Priority Document By Participating Offices
After the access code has been issued by WIPO, an online Web Portal must be used to manage the list of Offices authorised to access the priority document.
The web portal is accessible here: https://webaccess.wipo.int/priority_documents/en/
Step 3. To log in, you will need the access code issued by WIPO and the application number: (see below)
Once logged in, the initial screen displays the "Query Pdoc" tab, identifying when access was granted to the participating offices, and when the office first accessed the priority document.
Step 4. Select the "Update Access Control List" tab, press the "select all" button, then press the "update" button to authorise access to all participating offices:
Note that any countries subsequently joining PDAS will not be automatically selected. You will have to go back into the service and add the new countries to those already selected.
Example 2 - The UKIPO is the Office of First Filing
In the UKIPO, PDAS is available for new GB applications filed electronically using either Web Filing or Electronic Online Filing (eOLF). It is not available for manual filing. The applicant must indicate that an application is to be registered in the PDAS system at the time of online filing. At the time of writing, there is no mechanism for submitting this request after filing. Once filed, the electronic filing receipt confirms that PDAS was selected.
There is a 6-8 week delay before the UK forwards the document to WIPO and an access code can be issued. The delay is due to the UKIPO's security screening process, which typically takes at least 6 weeks. Assuming it is cleared by the security section, the UKIPO forward the PDAS request to WIPO, who then automatically issue and send us the access code. Once issued, we at Jenkins can complete Steps 3 and 4 above.