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USPTO And European Patent Office To Exchange Priority Documents Electronically

by Glen Shapiro,, New York

24 November 2006

The United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO) have announced that they are preparing to launch a new service that will allow patent application priority documents to be exchanged between the two offices electronically.

Priority documents have to be filed when applicants wish to claim an earlier application filing date in one patent office based on a prior filing in another. Claiming priority is a valuable tool for businesses wanting to pursue patent rights globally.

The new service, which will be free of charge to applicants, is the result of a 2005 agreement between the USPTO and the EPO, and will pave the way for faster and more efficient processing in each office.

Under the Paris Convention for the Protection of Industrial Property, a patent applicant may file an application in one Paris Convention member country (the priority document), and within 12 months, file corresponding applications in other member countries, while obtaining the benefit of the first application’s filing date.

This 12-month period allows applicants to make important decisions about where to file subsequent applications to seek protection for their inventions.

In order to obtain the benefit of an earlier filing, however, applicants are generally required to file paper copies of the priority document in each of the later-filing offices at their own expense. The new service will allow the USPTO and the EPO to obtain, with appropriate permissions, electronic copies of priority documents filed with the other office from its electronic records management system at no cost to the applicant.

Paris Convention filings are a critical component in many applicants’ global business and patenting strategies and represent a substantial portion of worldwide patent activity.

“Electronic priority document exchange is a big win for both applicants and our offices,” observed Under Secretary of Commerce and USPTO Director Jon Dudas.

“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.”

“The realization of the electronic priority document exchange is a major step towards a user-oriented, efficient patent system and a good example of the excellent cooperation between the EPO and the USPTO,” added EPO President Alain Pompidou. “It sets the standards for providing added value services in the future.”

Testing of the new service will be complete in early December, and full production is expected to begin in January 2007.

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