Article 79

EUROPEAN PATENT OFFICE

Information from the EPO

Notice from the European Patent Office dated 18 October 2018 concerning priority document exchange via the WIPO Digital Access Service (DAS)

I. Background

The President of the European Patent Office (EPO) has decided that as of 1 November 2018 the EPO will participate in the WIPO Digital Access Service (DAS) for the exchange of certified copies of patent applications (priority documents) (OJ EPO 2018, A78).

DAS supports the automatic electronic exchange of priority documents within participating patent offices (participating Offices). Applicants may request the Office of First Filing (OFF) to make certified copies of previously filed patent applications available to the DAS system and then request Offices of Second Filing (OSF) to retrieve the copies via DAS.

The purpose of DAS is to establish a cost- and time-effective electronic system for processing and exchanging priority documents within participating Offices, by relieving the applicant of the need to submit the documents to the OSF.

Currently, there are 19 participating Offices in total, including the other IP5 Offices (USPTO, JPO, KIPO and CNIPA) and the patent offices of Denmark, Estonia, Finland, the Netherlands, Spain, Sweden and the UK. An up-to-date list of participating Offices is maintained on the WIPO website at:
www.wipo.int/das/en/participating_offices.html.

For the time being, DAS will be available at the EPO for European patent applications and for international applications entering the European phase before the EPO as designated or elected Office. DAS will not be available for international patent applications under the Patent Cooperation Treaty (PCT). However, for the latter, the EPO intends to implement DAS in the near future.

II. The Digital Access Service

A. The European Patent Office as Office of First Filing

As of 1 November 2018, if the applicant files an online request for the grant of a European patent via Online Filing (eOLF) or new online filing (CMS), the EPO will, automatically and free of charge, generate a DAS access code. Such codes will not be generated for divisional applications. The applicant will receive the code in a notification added to the acknowledgment of receipt issued in response to the request for grant.

If the applicant files a request for the grant of a European patent on paper, online via web-form filing, or with a national office, or requests an access code separately, the EPO will notify the applicant of the generated DAS access code in a separate notification (EPO Form 1194, see Annex 1).

The DAS access code allows the applicant to authorise the OSF to retrieve a certified copy of the previous application (priority document) via DAS. However, this code will only be valid if the requirements for according a date of filing are met. The DAS access code is made available exclusively to the applicant and will be included in the non-public part of the file of the application.

B. Retrieval of priority documents by the European Patent Office acting as Office of Second Filing

As of 1 November 2018, the applicant may request the EPO when acting as OSF to obtain a priority document from the OFF via DAS. For this purpose, in the request for grant of a European patent (EPO Form 1001, Section 25.1) the applicant must indicate the DAS access code(s) corresponding to the previous application(s). Alternatively, the applicant may request the EPO to retrieve the priority document via DAS by submitting a separate request using EPO Form 1013 (see Annex 2).

Once the priority document has been successfully retrieved and included in the file of the application, the document is deemed to be duly filed under Rules 53(2) and 163(2) EPC. It is important to note that the EPO will not inform the applicant if it is successful in retrieving priority documents via DAS.

If a priority document cannot be retrieved via DAS or if the applicant does not request retrieval via DAS, and if priority is claimed from a previous application which is

• a European patent application,
• an international application filed with the EPO as receiving Office under the PCT, or a patent or utility application of the JPO, KIPO, CNIPA, or a provisional or non-provisional patent application of the USPTO, 1

the EPO will automatically include in the file of the application, free of charge, a copy of the previous application from which priority is claimed, as in the current system. It will inform the applicant accordingly unless the previous application is a European patent application or an international application filed with the EPO as receiving Office under the PCT.

The applicant will be informed by the EPO in good time if a copy of the previous application from which priority is claimed could not be included in the file of the application; in this case, the applicant will have the opportunity to file the copy subsequently in accordance with Rule 53(1) EPC.

Any enquiries concerning this notice may be directed to International Legal Affairs at international_legal_affairs@epo.org.

Annex 1: Form 1194

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Annex 2: Form 1013

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