PCT AG-IP 5.070 What steps must be taken when the earlier application to be made available via DAS is an international application?

5.070.   When and to whom must the priority document be furnished?  Before the expiration of 16 months from the priority date (or, where the applicant requests early processing pursuant to Article 23(2), before that request is made), a certified copy of the earlier application (whether it is a national, regional or international application) must be submitted by the applicant either to the International Bureau or to the receiving Office (unless it has already been filed with the receiving Office together with the international application).  Any certified copy that reaches the International Bureau after the expiration of 16 months from the priority date, but before the date of international publication of the international application, will be considered to have reached the International Bureau on the last day of that 16-month period.  The copy must be certified by the authority with which the earlier application was filed.  Where that authority is the same Office as the receiving Office, the applicant may, instead of submitting the certified copy, request the authority, before the expiration of 16 months from the priority date, to prepare and transmit the certified copy to the International Bureau;  in that case, the fee usually charged by the Office should be paid when the request for transmittal is made;  the easiest solution for the applicant is to make this request at the time of filing the international application, by marking the check-box provided for that purpose in Box No. VI of the request Form PCT/RO/101.  Furthermore, where the priority document is available to the International Bureau from a digital library in accordance with Rule 17.1(b-bis) and Section 715(a), the applicant may, prior to the date of international publication, request the International Bureau to obtain the priority document from such a digital library (see paragraph 5.070B).  The International Bureau will not charge a fee for this service.  The easiest solution for the applicant is to make this request with the International Bureau at the time of filing the international application, by marking the check-box provided for that purpose in Box No. VI.

5.070A.   How will I know if my earlier application is available to the PCT System from a digital library?  The only available “digital library” in the PCT system is the WIPO Digital Access Service (DAS).  This offers access to earlier applications filed at the receiving Office of the International Bureau and a number of national Offices for use as priority documents.  However, unlike some of the bilateral priority document sharing systems between national Offices, the earlier application is only available if the applicant has taken specific steps to make the document available.

5.070B.   What steps must be taken so that the International Bureau can obtain the priority document from a digital library, in particular via DAS?  The procedural steps that the applicant needs to follow so that the earlier application will be available to the International Bureau are set out on the DAS website at the following address: www.wipo.int/das/en/description.html and on the individual web sites of the participating offices (see the list at www.wipo.int/das/en/participating_offices.html).  Having carried out these steps, the applicant will receive an access code.  The applicant should then mark the applicable check-boxes in Box No. VI, and indicate the access code for each specific priority document or submit a written request containing this information to the International Bureau.

5.070C.   What steps must be taken when the earlier application to be made available via DAS is an international application?  Applicants may also claim priority from an international application when filing a patent application at another Office (an Office of Second Filing).  If the international application was filed with the receiving Office of the International Bureau, the applicant may send a letter to that Office requesting that the document be made available via DAS, and then request the Office of Second Filing to retrieve that document from DAS.  For international applications filed at other receiving Offices, check the list of Offices at www.wipo.int/das/en/participating_offices.html to see whether a particular participating Office will make international applications, filed at its receiving Office, available to DAS in addition to national applications.

5.070D.   The International Bureau notifies the applicant of the date on which the priority document was received or obtained.  Any designated Office may request a copy of the priority document from the International Bureau.  Provided the applicant has either furnished a certified copy or requested that the priority document be transmitted or obtained and paid the necessary fee as described above, no designated Office may ask the applicant to furnish a certified copy of the earlier application.  Where this is not the case and unless the earlier application of which priority is claimed was filed with the designated Office in its capacity as national Office or if the priority document is available to the designated Office from a digital library, any designated Office may disregard the priority claim.  The designated Office must first, however, have given the applicant an opportunity to furnish the priority document within a time limit which is reasonable under the circumstances.  For the obligation of the applicant to furnish a simple (not certified) copy of the priority document to the designated Offices (including a copy of the priority certificate), see National Phase, paragraph 5.009 and the relevant National Chapters.

Source: http://www.wipo.int/pct/en/appguide/text.jsp?page=ip05.html

Date retrieved: 02 November 2015

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