Rule Review
USPTO Simplifies Rules for Sharing Documents with Foreign Offices
On October 27, 2015, the U.S. Patent and Trademark Office (USPTO) issued a Notice in the Federal Register informing the public that it was revising its rules of practice to include one specific provision by which an applicant can authorize the USPTO to give a foreign intellectual property (IP) office access to all or parts of the file contents of an unpublished U.S. patent application in order to satisfy a requirement for information imposed on a counterpart application filed with the foreign IP office. See 80 Fed. Reg. 65,649 (Oct. 27, 2015).
Summary of Rule Change
Due to the confidential nature of unpublished U.S. patent applications, an applicant must provide the USPTO with written authority to grant a foreign IP office access to the application and its file contents. Prior to the new rule change, applicants used former 37 C.F.R. § 1.14(h) to authorize the USPTO to allow a foreign IP office participating in a priority document exchange (PDX) agreement access to an unpublished U.S. application. In order to authorize the USPTO to share an unpublished
as-filed U.S. application’s file contents, however, an applicant needed to provide separate written authorization under 37 C.F.R. § 1.14(c). The revised 37 C.F.R. § 1.14(h) streamlines the process by allowing an applicant to provide written authorization to share both the as-filed application and the file contents in order to satisfy a requirement for information of the foreign IP office. The revised rules also eliminate the fee that was required to provide access to such materials. The changes to 37 C.F.R. § 1.14(h) apply to all patent applications filed before, on, or after November 30, 2015.
To further simplify sharing of documents with foreign IP offices, the USPTO has revised its application data sheet (ADS, PTO/AIA/14) to include separate authorization for the PDX program and for the program by which U.S. search results are delivered to the European Patent Office (EPO). The revised ADS includes an “opt-out” check box for each access authorization, rather than an “opt-in” check box as in the previous version of the ADS. By these changes, the USPTO hopes to help eliminate the instances where an applicant inadvertently fails to give authorization to share the application and file contents with a foreign IP office.
While this new procedure aims to reduce the burden on applicants who wish to share applications and file contents with foreign IP offices, applicants should be aware that an ADS can only be used to provide written authorization for file sharing if it is processed with the initial filing of the application. After the initial filing of an application, or if an applicant files a corrected ADS, the applicant must file a Form PTO/SB/39 to provide the requisite authorization. In addition, if an applicant-generated ADS does not include the appropriate authorization language (which can be found in USPTO Form PTO/AIA/14), the applicant-generated ADS will be interpreted as not providing the authorization necessary to give a foreign IP office access to the application or file contents.
Finally, the U.S. application’s filing receipt will indicate whether or not an applicant has provided written authorization for access pursuant to 37 C.F.R. § 1.14(h). Thus, applicants should promptly review the filing receipt and request a corrected receipt if authorization for access was incorrectly captured from the ADS. If authorization was inadvertently given, a request for rescission of authorization can be made by filing a Form PTO/SB/39.
