Japan-patent.jp

Submitting of Priority Certificate

Priority Documents-Exemption under the Priority Document Electronic Exchange Agreement between the United States Patent and Trademark Office and the Japan Patent Office

Relevant Applications and Necessary Procedures

June 2007
Japan Patent Office

Under the Priority Document Exchange Agreement between the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO), the electronic transfer of certified copies of patent applications between the USPTO and the JPO, that serve as the basis for claim for priority under the Paris Convention (“Priority Document“), is scheduled to start in July, 2007. Based on the above Agreement, applicants shall be relieved from submitting priority documents (with certain reservations). (Article 43 (5) of the Japanese Patent Law and Rule 27-3-3(2) of the Japanese Patent Law Enforcement Regulation)

The Japan Patent Office shall not be responsible for the accuracy or reliability of the procedures at the United States Patent and Trademark Office (USPTO) provided in this website. For all purposes of procedures at the United States, users should consult the USPTO.

1.The Priority Documents to which the Electronic Transfer Applies

(1) Claiming US Priority Rights for Applications in the JPO

1) [Applications filed with the JPO on or after July 1, 2007]
The Electronic Transfer will apply to those priority documents, which certify that an application has been filed in the USPTO claiming US priority, if either of the following requirements has been fulfilled.
i) The application has already been published in the US.
ii) “Authorization to Permit Electronic Access to Application(s)”(Form PTO/SB/39) of the application has already been submitted to the USPTO.
2) [Applications filed with the JPO before July 1, 2007]
The Electronic Transfer does not apply to the above applications.

*“Authorization to Permit Electronic Access to Application(s)” (Form PTO/SB/39) can be downloaded from the website of the USPTO. (http://www.uspto.gov/web/forms/)
*PTO/SB/39 will be accepted by the USPTO from July 30, 2007 (local time at the USPTO). The forms will turn effective on and after July 30 even if they are submitted before that date.

* Priority Document Exchange are also in effect between the JPO and the European Patent Office (EPO) and between the JPO and the Korean Intellectual Property Office (KIPO), respectively. Please note that under the forthcoming exchange between the JPO and the USPTO, applicants need to submit additional documents to the USPTO in accordance with the following 2.(1) 2) (“Authorization to Permit Electronic Access to Application(s)” (Form PTO/SB/39)), as well as the ordinary document to the JPO to claim priority rights. The priority documents will not be exchanged electronically until the “Authorization to Permit Electronic Access to Application(s)” (Form PTO/SB/39) has been received the USPTO, unless the application concerned has already been published in the US. In the case that the aforementioned Request has not been received within 16 months from the earliest priority date nor the application concerned published in the US, the applicants themselves have to submit the priority documents or the priority rights will lapse.

(2)Claiming Japanese Priority Rights for applications in the USPTO

1) [Applications filed with the USPTO on or after July 28, 2007 (Eastern Standard Time) , claiming Japanese priority rights]
The electronic transfer will apply to those priority documents, which certify that an application has been filed in JPO claiming Japanese priority rights. The applicants themselves are not requested to submit any documents to the USPTO.
2) [Applications filed with the USPTO before July 28, 2007 (Eastern Standard Time) , claiming Japanese priority rights]
If an applicant turns in the "Request to Retrieve Electronic Priority Application(s)" (Form PTO/SB/38) to the USPTO, the electronic transfer will apply to those priority documents, which certify that the application concerned has been filed in Japan claiming Japanese Priority Rights.

* Concerning above 2), PTO/SB/38 will be accepted by the USPTO from JJuly 28, 2007 (Eastern Standard Time).  Applicants must submit the PTO/SB/38 on and after July 28 (Eastern Standard Time), in case the second filing date at the USPTO is before July 28.

* Japanese applications filed before November 1990, that is, those applications for which electronic documents are not held by the JPO, are excluded from the priority document exchange.

* The USPTO will notify applicants if the USPTO have not received necessary priority documents. In this case, the applicants need to submit the abovementioned Request (Form PTO/SB/38) or the priority documents in paper form as soon as possible.

* Please note that the electronic exchange does NOT apply to the following cases;
 1) The international applications under the Patent Cooperation Treaty (PCT) as priority documents.
 2) The priority documents of the PCT international applications.

2. Procedure for Electronic Transfer

(1) Claiming US Priority for Applications in the JPO

1) Filing with the JPO, claiming US priority
In the box labeled “パリ条約による優先権等の主張” (“The opinion of the preference
by Paris Convention”) on the application form, please enter the following information
and submit it to the JPO.

Example):
[ パリ条約による優先権等の主張 ]
[ 国名 ] アメリカ合衆国
[ 出願日 ] 2006年10月1日
[ 出願番号 ] 10/123,456

(For your reference, below is English translation)
[ The opinion of the preference by Paris Convention ]
[ Country ] The United States of America
[ Filing date ] October 1, 2006
[ Application number ] 10/123,456

* “出願番号” (“application number”) should be written as “series code” [two figures] + “/” [slash] + “application number + [, comma]”).

* (If an applicant is not able to obtain the application number claiming priority right)
To obtain the necessary application number claiming priority right, an applicant needs to submit “手続補正書” (a written amendment) via on-line or on paper within 16 months from the earilest date of
the application claiming priority rights.
When the above document is submitted on paper, please write “特許法第43条第3項の規定による出
願番号記載書面の提出” (“Submission of document with application number under Article 43 (3) of
the Japanese Patent Law”) in the column labeled “[その他]” (“Others”). In this case, the fee for converting the paper application into an electronic format will not be charged.
When the above document is submitted via on-line, the inclusion of “特許法第43条第3項の規定による出願番号記載書面の提出” (“Submission of document with application number under Article 43 (3) of the Japanese Patent Law”) in the column labeled “[その他]” (“Others”) is not necessary.

(Example of a written amendment)
[ 手続補正 1 ]
[ 補正対象書類名 ] 特許願
[ 補正対象項目名 ] パリ条約による優先権等の主張
[ 補正方法 ] 変更
[ 補正の内容 ]
[ パリ条約による優先権等の主張 ]
[ 国名 ] アメリカ合衆国
[ 出願日 ] 2006年10月1日
[ 出願番号 ] 10/123,456
[ その他 ] 特許法第43条第3項の規定による出願番
号記載書面の提出

(For your reference, below is English translation)
[ Amendment 1 ]
[ Document to be amended ] Request for patent
[ Claim to be amended ] The opinion of the preference by Paris
Convention
[ Method of amendment ] Conversion
[ Details of the amendment ]
[ The opinion of the preference by Paris Convention ]
[ Country ] The United States of America
[ Filing date ] October 1, 2006
[ Application number ] 10/123,456
[ Others ] Submission of document with application
number under Article 43 (3) of the Japanese
Patent Law

* The application number should be written as “series code” [two figures] + “/” [slash] + “application number + [, comma]”).
2) Submit “Authorization to Permit Electronic Access to Application(s)” (Form PTO/SB/39) to the USPTO
If the priority documents are expected to be exchanged electronically, the applicants need to submit the “Authorization to Permit Electronic Access to Application (s)” (Form PPTO/SB/39) to the USPTO within 16 months from the earliest priority date, unless the application has already been published.

* PTO/SB/39 will be accepted by the USPTO from July 30, 2007 (Eastern Standard Time). The forms will turn effective on and after July 30 even if they are submitted before that date.

【PTO/SB/39】
PTO/SB/39

*If an applicant does not submit the “Authorization to Permit Electronic Access to Application(s)” (Form PTO/SB/39) to the USPTO within 16 months from the earliest date on which the applications claimed priority rights and also does not submit the priority documents to the JPO within 16 months from the first date on which the application claimed priority rights, the priority rights will lapse.

*In July, 2007, the JPO will launch a new system to notify an applicant of an application claiming priority rights that the JPO has not obtained priority documents or submitted the priority documents on paper within 14 months from the earliest date on which the application claimed priority rights. The applications which claim EPO or KIPO priority rights are excluded from the above notification process.

(2) Claiming Japanese Priority Rights for applications in the USPTO

[ Applications filed with the USPTO on or after July 28, 2007 (Eastern Standard Time) ]
An applicant has to file an application with the USPTO, claiming Japanese priority rights.

[ Applications claiming Japanese priority rights before July 28, 2007 (Eastern Standard Time) ]
AAn applicant is asked to submit to the USPTO the“Request to Retrieve Electronic Priority Application(s)” (Form PTO/SB/38).

* PTO/SB/38 will be accepted by the USPTO from July 28, 2007 (Eastern Standard Time). Applicants must submit the PTO/SB/38 on and after July 28, in case the second filing date at the USPTO is before July 28 (Eastern Standard Time)

【PTO/SB/38】
PTO/SB/38

[USPTO Forms]
Forms PTO/SB/38 is available on the website of the USPTO.
(http://www.uspto.gov/web/forms/)
Forms PTO/SB/39 is available on the website of the USPTO.
(http://www.uspto.gov/web/forms/)