The EPO has ended the automatic exchange of priority documents between the EPO and the USPTO, KIPO and CNIPA. From 1 January 2022, priority documents from the USPTO, KIPO and CNIPA will only be accepted via the Digital Access Service (DAS).
Priority documents: automatic and free copy so far
If the priority of an earlier patent or utility model application filed with the USPTO, KIPO or CNIPA was claimed, the EPO has so far automatically included in the application file, free of charge, a copy of the earlier application whose priority was claimed. If the earlier application giving rise to priority was an EPO application, this service will continue to apply.
However, for European patent applications and also for Euro-PCT applications filed with the EPO on or after 1 January 2022, priority documents from USPTO, KIPO and CNIPA will only be accepted via the Digital Access Service (DAS).
EPO has participated in the DAS since 2018
This development could have been expected, as the European Patent Office (EPO) participated in WIPO’s DAS for the exchange of certified copies of previously filed patent applications since November 2018. The United States Patent and Trademark Office (USPTO), the Korean Intellectual Property Office (KIPO) and the China National Intellectual Property Administration (CNIPA), as well as the EPO, have been exchanging priority documents electronically since then. Now the four offices have agreed to terminate the existing priority document exchange agreements (PDX agreements) on 30 June 2023 and to use the DAS as the sole instrument for the electronic exchange of priority documents.
Automatic exchange of priority documents has ended
Therefore, the EPO has taken the decision to end the automatic exchange of priority documents between the EPO and the USPTO, KIPO and CNIPA for all European patent applications and also for Euro-PCT applications filed with the EPO on or after 1 January 2022. Automatic exchange of priority documents has ended – but not if the priority is claimed in the file of a European patent application.
If the earlier application is a European patent application or an international application filed with the EPO as receiving Office under the PCT, the EPO will continue to include automatically and free of charge a copy of the earlier application whose priority is claimed in the file of a European patent application.
For patent applications filed before 1 January 2022, where the EPO has successfully included the priority document in the file on the basis of the PDX agreements, the EPO would only inform applicants in due time if a copy of the earlier US, Korean or Chinese application whose priority is claimed cannot be retrieved via the DAS. In such cases, or if they do not request retrieval via the DAS, applicants have the option of subsequently filing a copy under Rule 53(1) EPC.
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