Patent briefing: termination of the automatic exchange of priority documents between European and Japanese Patent Offices

Currently, for European patent applications that claim priority from a Japanese patent or utility model application, two options are available to avoid having to file a physical certified copy of the Japanese priority application. 

 

One option is the Priority Document Exchange Agreement (PDX Agreement), which is in place for the so-called “Five IP Offices”:  the EPO, CN, JP, KR and US.  In accordance with the PDX Agreement, the relevant Patent Offices exchange priority documents with each other automatically.

 

This means that currently a JP priority document is automatically sent electronically to the EPO by the JPO and no action needs to be taken by the applicant at the EPO to file a JP priority document.

 

The other option is the WIPO Digital Access Service (DAS), which the EPO has been participating in since 1 November 2018.  In accordance with the DAS, the priority-founding national application has to be entered into the DAS system when it is filed.  The DAS access code is provided to the Patent Office where the priority-claiming patent application is filed (the Patent Office of second filing) to enable that Patent Office to access the priority document.

 

According to European Patent Attorney David Roberts, in a recent announcement here the EPO have announced that the EPO and JPO have agreed to terminate the existing PDX Agreement between them as of 31 December 2021 and to use DAS as the sole tool for exchanging priority documents electronically. 

 

The EPO notice says “This applies to European patent applications filed with the European Patent Office on or after 1 July 2020 and Euro-PCT applications entering the European phase on or after that date that claim priority from a Japanese patent or utility model application, as well as to any European patent applications or Euro-PCT applications claiming priority from a Japanese patent or utility model application for which the required priority document could not be included in the file of the application by 31 December 2021.”

 

This change means that from 2022 a JP priority document will not be sent automatically to the EPO by the JPO:  the applicant will need to take additional steps to ensure electronic transfer of the JP priority document to the EPO. 

 

Recommendation

We therefore recommend that when a new Japanese patent or utility model application is filed, the applicant requests the JPO to enter the JP application into the DAS system, and that subsequently the DAS access code is provided for the Patent Office of second filing with a request to retrieve the priority document via DAS.  In the specific case of a direct filing at the EPO (not via the PCT system), please ensure that we are provided with the relevant access code(s) for the Japanese priority application(s).

 

For further advice

Please contact us if you have any questions, or need advice on ownership of inventions and patents or entitlement to priority, or patent prosecution and enforcement generally.

 

Page White and Farrer has extensive experience of working with Japanese companies and intellectual property experts in Japan.  Click here for information on our Japanese desk.

 

This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in June 2020.