Article 84

EUROPEAN PATENT OFFICE

Information from the EPO

Notice from the European Patent Office dated 13 November 2021 concerning priority document exchange between the European Patent Office and the United States Patent and Trademark Office, the Korean Intellectual Property Office and the China National Intellectual Property Administration

A. Background

The European Patent Office (EPO) has been participating in the WIPO Digital Access Service (DAS) for the exchange of certified copies of previously filed patent applications (priority documents)1 since 1 November 2018. Under DAS, the EPO and the United States Patent and Trademark Office (USPTO), the Korean Intellectual Property Office (KIPO) and the China National Intellectual Property Administration (CNIPA) electronically exchange priority documents. The four offices have now agreed to terminate the existing Priority Document Exchange Agreements (PDX Agreements) between them as of 30 June 2023 and to use DAS as the sole tool for exchanging priority documents electronically.

Under the existing PDX Agreements the EPO and the three offices automatically transfer certified copies of patent applications or, where applicable, utility model applications from which priority is claimed under the European Patent Convention (EPC) or under the applicable national laws of the US, Korea or China. This automatic exchange does not however extend to priorities claimed in international applications filed under the Patent Cooperation Treaty (PCT).

B. Practical impact

Until now, where priority was claimed from a previous patent or utility model application filed with the USPTO, KIPO or CNIPA, if a priority document could not be retrieved via DAS or if the applicant did not request retrieval via DAS, the EPO included automatically and free of charge a copy of the previous application from which priority is claimed in the file of the application, and informed the applicant accordingly.

With the termination of the PDX Agreements, the EPO will no longer include a US, Korean or Chinese priority document in the file automatically in cases where a US, Korean or Chinese priority document cannot be retrieved via DAS or where the applicant does not request retrieval via DAS. This applies to European patent applications filed with the EPO on or after 1 January 2022 and Euro-PCT applications entering the European phase on or after that date that claim priority from a US, Korean or Chinese patent or utility model application. Furthermore, it applies to any European patent applications or Euro-PCT applications claiming priority from a US, Korean or Chinese patent or utility model application for which the required priority document could not be included in the file of the application by 30 June 2023.

In contrast, in the case of patent applications filed before 1 January 2022 where the EPO successfully includes the priority document in the file on the basis of the PDX Agreements, the EPO will only inform applicants in good time if a copy of the previous US, Korean or Chinese application from which priority is claimed cannot be retrieved via DAS. In such cases, or if they do not request retrieval via DAS, applicants will have the opportunity to file a copy subsequently in accordance with Rule 53(1) EPC.

The termination of the PDX Agreements will not affect the exchange of priority documents via DAS, which will remain available free of charge for all applications claiming priority from a previous application of a state participating in DAS, including US, Korean and Chinese applications.

Furthermore, the EPO will continue to include automatically and free of charge in the file of a European patent application a copy of the previous application from which priority is claimed if the previous application is a European patent application or an international application filed with the EPO as receiving Office under the PCT.

In the light of this development, the President has decided to issue a new decision on the filing of priority documents2 that supersedes the previous decision of 31 March 2020.3 The new decision reflects the termination of the automatic exchange of priority documents between the EPO and the USPTO, KIPO and CNIPA.