USPTO is Changing Policy for Electronic Retrieval of European Priority Applications

The U.S. Patent and Trademark Office (USPTO) has announced that the World Intellectual Property Organization (WIPO) Digital Access Service (DAS) will be used to manage the electronic retrieval of European (EP) priority applications beginning on January 1, 2022.

This means that for regular U.S. utility patent applications (i.e., Paris convention or PCT bypass applications) filed with the USPTO on or after January 1, 2022, it will be necessary to provide a DAS code for each EP priority application so that the USPTO can electronically retrieve the same. Beginning on January 1, 2022, the USPTO will no longer electronically retrieve EP priority applications via Direct Bilateral Exchange with the European Patent Office (EPO). See https://www.uspto.gov/patents/basics/international-protection/electronic-priority-document-exchange-pdx

The USPTO is encouraging applicants to begin providing the DAS code for each EP priority application immediately, even for U.S. utility patent applications filed before January 1, 2022. According to the USPTO, this “will prepare the applicant for the full switch to the WIPO DAS. Also, having the WIPO DAS access code should reduce potential delays that may occur if electronic retrieval is attempted by the USPTO on or after January 1, 2022.” The USPTO is also encouraging applicants to review their regular U.S. utility patent applications filed before January 1, 2022, that claim priority to an EP application but did not include a DAS code, to check whether electronic retrieval of the EP priority application by the USPTO was successful. Importantly, the USPTO is advising applicants “that they continue to bear the ultimate responsibility for ensuring that the priority document is filed by the time limit set forth in 37 CFR [§] 1.55.”

Detailed information about the USPTO’s announcement is available here: https://www.uspto.gov/sites/default/files/documents/epo-wipodas-20211207.pdf