January 19, 2007

On Tuesday, the USPTO issued its final rule pertaining to the changes to implement the priority document exchange between specific intellectual property offices. According to the January 16, 2007 Federal Register, “The Office has established a 21st Century Strategic Plan to transform the Office into a more quality-focused, highly productive, responsive organization supporting a market-driven intellectual property system,” and that a goal of the plan “is the electronic exchange of information and documents between intellectual property offices.” The USPTO has revised its rules of practice to permit such an electronic exchange, with specific revisions to 37 C.F.R. §§ 1.14, 1.19, and 1.55, including a document supply fee of “[$]0.00” applicable when a document s “provided to a foreign intellectual property office pursuant to a priority document exchange” (37 C.F.R. § 1.19(b)(1)(iv)).

The USPTO has also provided two forms for use to facilitate such a transfer. The first form (PTO/SB/38) “will permit applicants to request that the Office retrieve an electronic copy of any foreign application filed in an intellectual property office participating with the Office in a direct agreement to retrieve electronic copies of priority documents” (emphasis added), noting that upon receipt of a timely filed request, the USPTO will perform at least two attempts to retrieve the documents, and that “Applicants should consult the private Patent Application Information Retrieval (PAIR) system to determine of the copy of the foreign application was retrieved by the Office.” Upon publication of an application, the retrieved foreign counterpart application will also be made public through Public PAIR. The second form (PTO/SB/39) “would be used to provide the Office with written authority to provide a copy of a patent application to participating foreign intellectual property offices at no cost to the applicant” (emphasis added). The Federal Register further notes that “[o]nce an application is published under 35 U.S.C. 122(b), the application is open to the public and therefore the applicant’s written authority is not necessary to permit other participating intellectual property offices to retrieve a certified copy of the priority application or a copy of the complete application file.” These changes went into effect on January 16, 2007.

Federal Register Excerpt: LINK
PTO/SB/38 (PDF Form): LINK
PTO/SB/39 (PDF Form): LINK

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Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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