Authorization to Permit Access to U.S. Patent Application Information by Foreign IP Offices Now the Default

As of November 30, 2015, any new application filing must be accompanied by the USPTO’s Revised Application Data Sheet (ADS) (PTO/AIA/14). The USPTO changed the ADS to accommodate revised regulations related to providing the Office with authorization to share information with foreign intellectual property (IP) offices.

In its effort to increase electronic sharing of information and documents among global IP offices, the USPTO currently participates in the priority document exchange (PDX) program and a program through which USPTO search results for a particular U.S. application are shared with the European Patent Office (EPO) (76 Fed. Reg. 82,279 (Dec. 30, 2011)). 

Previously, separate authorizations had to be provided in order to opt-in to each of these programs. Under the Final Rule for Changes to Facilitate Applicant’s Authorization of Access to Unpublished U.S. Patent Applications by Foreign Intellectual Property Offices (80 Fed. Reg. 65,649 (Oct. 27, 2015)), the method for making these authorizations has been consolidated and simplified. By signing the Revised ADS, authorization to permit access to an unpublished, as-filed application by a foreign IP office and authorization to permit the USPTO to share search results with the EPO are both provided as the default. If the applicant does not wish to provide such authorization, the applicant must affirmatively opt-out of one or both of the programs by checking Box A (for access to the as-filed application) and/or Box B (for sharing of search results with the EPO) in the new “Authorization or Opt-Out of Authorization to Permit Access” section of the Revised ADS.

Notably, the “Authorization or Opt-Out of Authorization to Permit Access” section of the Revised ADS is only reviewed and processed by the Office with the initial filing of an application. If an applicant wishes to provide or rescind authorization for access to one or more of the document exchange programs later in prosecution, an ADS cannot be used. Instead, applicants must use the Authorization to Permit Access to Application by Participating Office (PTO/SB/39) or Certification and Authorization to Permit Access to Search Results by the European Patent Office (EPO) (PTO/SB/69) as appropriate.