WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.
Furnishing priority documents using the WIPO Digital Access Service (DAS) – Part II: Requesting the International Bureau to retrieve a priority document available in the DAS system
Q: I filed a national patent application with my national patent Office, and requested that Office to make the application available via DAS as a priority document for a future international application. I am now filing an international application claiming the priority of the earlier national application, and would like to request the International Bureau to retrieve the priority document from the DAS system, in order to meet the priority document requirement under PCT Rule 17.1. How do I do this, and what is the time limit for doing so?
A: It is recalled that DAS offers a secure, reliable and legally authentic electronic exchange of documents with all other Offices participating in the service, and can be used in many cases to meet priority document requirements under the PCT in accordance with PCT Rule 17.1, as well as those under other treaties and laws. Part I of this Practical Advice (published in PCT Newsletter No. 11/2019) explained how to make available to the DAS system an earlier national application, the priority of which is to be claimed in a later‑filed international application, and pointed out the situations in which it might not be possible to do this. This would be the case, in particular, if the Office of First Filing (OFF) is not a DAS depositing Office, if the earlier application does not fall under the scope of the DAS depositing Office concerned, or if the applicant does not meet the requirements of the DAS depositing Office concerned.
After requesting the OFF to make the earlier application available in DAS, you will have received an access code, which is required in order to request the International Bureau (IB) (or an Office of Second Filing (OSF)) to retrieve the priority document. The code may be provided by either the IB or the OFF (or in the case of certain Offices, the access code may be automatically made available to the applicant as part of the application process).1 Access codes issued by the IB are sent by e‑mail2 from “Noreply@wipo.int”. Note that the access code of an earlier application registered in DAS can be re‑used if the priority of the earlier application is claimed in more than one later‑filed application, so there is no need to request a new access code for the same priority document.
The way in which you request the IB to retrieve the priority document from DAS for the purposes of meeting the priority requirement under PCT Rule 17.1 depends on whether you are making the request at the time of filing the international application, or after filing. The various options are described below.
At the time of filing (the preferred option):
– if you are filing using ePCT‑Filing, make the necessary indications on the “Priority Claims” screen under “Option(s) for providing the priority document to the IB” by selecting “International Bureau to obtain from a digital library (DAS)” and providing the DAS access code (you can do this for each priority document if there is more than one priority claim); ePCT will look up the priority document in DAS in real time and validate the access code against the priority claim data indicated3;
– if you file the international application using PCT‑SAFE, the priority document information page (“Details of Priority Claim of Earlier Application”) enables you to request the IB to obtain the priority document from DAS, and to insert the necessary access code; or
– if you are filing using the paper version of the request form, mark the applicable check‑boxes in Box No. VI of the request form (PCT/RO/101) and indicate the access code for the priority document required (or for each priority document if there is more than one).
After filing:
– request the IB via ePCT to retrieve the priority document by:
- signing in with strong authentication and entering the corresponding access code in the online Action: “Obtain priority document from DAS”; ePCT will look up the priority document in DAS and validate the access code against the priority claim data indicated. Please note that this is the recommended method, since it is a self‑service Action that is executed automatically by the system in real time without any need to queue for manual processing by the IB;
- signing in without strong authentication and sending an ePCT Message containing the DAS access code requesting the IB to retrieve the earlier application from DAS;
- signing in without strong authentication and uploading a letter containing the DAS access code as a “General correspondence” document type requesting the IB to retrieve the priority document from DAS; or
– send a letter containing the DAS access code by mail to the IB4 requesting it to retrieve the earlier application from DAS.
Note that it is usually easier to request the IB to retrieve the priority documents from DAS at the time of filing the international application. However, if you wish to make the request later, the time limit for doing so is considered to be met if, before the date of international publication, you have:
– taken all the necessary steps with the OFF;
– made a valid request to the IB to retrieve the priority document from DAS; and
– provided the necessary access code.
Once the IB has retrieved the priority document via DAS, it will send a confirmation of retrieval to you by means of Form PCT/IB/304. If you have access rights to the international application in ePCT, you will be able to access that form immediately after is has been issued.
Please note that WIPO’s DAS Applicant Portal at:
www3.wipo.int/dasapplicant/en/pages/workbench/applicant.xhtml
(accessible via your WIPO account5) provides tracking facilities to record and view details of the complete history of Offices’ access to your priority documents. The portal enables you to add your priority documents to the DAS Workbench by providing the priority number, filing date and access code.
This Practical Advice concerns making a request to the IB to obtain a priority document available in the DAS system, as provided by PCT Rule 17.1(b-bis). You can also meet the priority document requirements under PCT Rule 17.1 by submitting a certified copy of the priority document to the IB or receiving Office under PCT Rule 17.1(a), or by requesting the receiving Office to prepare and transmit the priority document to the IB under PCT Rule 17.1(b)6. The latter way of meeting the priority document requirements may be preferable when filing an international application at the receiving Office where the earlier application was filed (whether as an earlier national or international application). However, such a request should be made no later than 16 months after the priority date and the receiving Office may charge a fee for this.
For further information on furnishing the priority document, please refer to the PCT Applicant’s Guide, International Phase, paragraphs 5.070 to 5.070D at:
www.wipo.int/pct/guide/en/gdvol1/pdf/gdvol1.pdf
- Examples of how codes are received from the European Patent Office, the Japan Patent Office and the United States Patent and Trademark Office are given in Part I of this Practical Advice.
- Note that, although the IB is not authorized to give confidential information by e-mail, this restriction does not apply to the DAS access code communications.
- If you are filing using a different electronic filing system, please check with the receiving Office concerned.
- The mailing address of the IB is: World Intellectual Property Organization, International Bureau (PCT), 34, chemin des Colombettes, CH‑1211 Geneva 20, Switzerland.
- If you do not yet have a WIPO account, you can easily create one at: https://ipportal.wipo.int/
- If using ePCT-Filing, by selecting “Receiving Office to prepare and transmit to the International Bureau” on the “Priority Claims” screen; if using the paper request form (PCT/RO/101), by marking the applicable check‑boxes in Box No. VI.