In January 2007, the USPTO implemented a program allowing direct exchange of priority documents electronically with the European Patent Office (EPO). Under this program, if a U.S. patent application claims priority to an earlier EPO application, the patent applicant may request the USPTO to obtain a copy of the EPO priority application electronically to satisfy the requirement of providing a certified copy in the U.S. application. Similarly, if an EPO application claims priority to an earlier U.S. patent application, the patent applicant in the EPO can request that the EPO obtain a copy of the U.S. priority application electronically.
One caveat to this procedure is that the EPO requires a copy of the priority document to be filed in the EPO application within 16 months from the priority date. Since U.S. patent applications are not published until 18 months, and thus will not be published prior to the EPO deadline, it is necessary for patent applicants to file a written request permitting the USPTO to release the U.S. priority application to the EPO. This form is available as Form PTO/SB/39, and can be filed in any U.S. patent application. Ideally, such a form would be filed by a U.S. patent applicant prior to filing a corresponding EPO patent application, for example, whenever the U.S. patent applicant is considering a direct filing in the EPO under the Paris Convention.
The USPTO recently announced that the electronic exchange of priority documents will be expanded to include the Japan Patent Office (JPO) later in 2007. However, applicants are advised to continue following the current procedure of submitting a certified copy of any Japanese priority application.