China and USA Bilateral Priority Documents Electronic Exchange Program

Under the Paris Convention, after filing the first patent application with the patent office in any Paris Convention signatory (Office of First Filing - "OFF") for an invention or creation by a patent applicant who is from any Paris Convention signatory, if the said patent applicant files a patent application for the same invention/creation within the prescribes time with the patent office of another Paris Convention signatory (Office of Secondary Filing –"OSF"), the said patent applicant may claim priority for the later filed patent application based on the first filed patent application. By doing so, the patent applicant may claim that the filing date of the first patent application be the priority date of the later filed patent application. To substantiate the above-mentioned priority claim, the applicant must submit to the OSF a certified priority document issued by the OFF within the prescribed time period. If the priority document is not timely submitted to the OSF, the priority claim would not be accepted by the OSF. For a patent application filed with priority claim, the substantive examination of the claimed invention as covered by the priority claim shall be made based on the priority date.

To simplify the procedure for a patent applicant to obtain certified priority documents from the concerned OFFs and submit the same to the OSFs, the State Intellectual Property office (SIPO) of China and patent offices in certain countries/regions continuously reached agreements as to multilateral or bilateral patent priority document electronic exchange cooperation. The above-mentioned multilateral cooperation refers to the "Document Access Service" ("DAS") established and administered by the World Intellectual Property Organization (WIPO), based on which the patent offices may cooperate with each other to access the priority documents electronically. The so-called "bilateral cooperation" stated above refers to the patent priority document exchange cooperation reached between the SIPO and each of the European Patent Office (EPO), Korea Intellectual Property Office (KIPO) and the United States Patent and Trademark Office (USPTO), through which the patent offices from either side can, within the scope of cooperation, access the priority documents issued by the other side. The priority document exchange cooperation between the SIPO and the USPTO was implemented as of 8 October 2014, which is a great help to patent applicants.

On 20 August 2018, the SIPO released an announcement (No. 279) stating the following:

"For patent applications filed on or after 1 September 2018, the SIPO and the USPTO will terminate the bilateral priority document exchange cooperation, which will be replaced by the WIPO DAS system."

As to the above-mentioned practice change, we would like to further explain as follows:

1. To facilitate the handling of obtaining and filing patent priority documents between China and USA and to increase patent examination efficiency, the SIPO and the USPTO reached an agreement that, as of 8 October 2014, the China/USA bilateral priority document exchange cooperation started to be implemented. Under such cooperation, a patent applicant only needs to list "the country of filing, filing date and the serial number of the priority application" in the patent filing documents filed with the OSF, and the OSF will automatically access the priority document from the OFF. The patent applicant can wave its efforts in applying for priority document from the OFF and submitting the same to the OSF.

2. Based on recent US security consideration, the SIPO and the USPTO decided to terminate the bilateral priority document exchange cooperation, and the WIPO DAS system will be used instead. For patent applications filed in China or USA on or after 1 September 2018, patent applicants who decide to submit electronic priority documents to the SIPO or the USPTO may take actions as follows:

(1) The applicant should first apply for priority document deposit with the OFF, requesting the OFF to produce the concerned electronic priority document and save the same into the electronic library.

(2) Upon completion of the above-mentioned priority document deposit, the OFF shall provide the applicant with a Digital Access Service Access Code (DAS Code) corresponding to the required electronic priority document saved in the electronic database.

(3) The applicant only needs to submit the DAS Code to the OSF, which is considered that the applicant has submitted to the OSF the priority document and the applicant can save its efforts in applying for and submitting the concerned priority document.

3. As to how to access the priority documents through the WIPO DAS system as well as its operation direction, please refer to the below-listed web publications:

Given the above, for a patent application filed on or after 1 September 2018 with priority claim, the patent applicant must follow the procedure stated in Item 2 above and submit the WIPO DAS Code to the OSF. On the other hand, when filing a US patent application on or after 1 September 2018, the applicant shall follow the same procedure and submit the DAS Code to the USPTO.