Once an application is filed in India under the Patent Cooperation Treaty (PCT), certified copies of documents claiming priority and translated and verified copies of priority documents that are not in Hindi or English have to be submitted to the Indian Patent Office (IPO): (i) before the expiry of 31 months from the date of priority; or (ii) within three months from the date of filing in India. If this is not done, the Controller General of Patents, Designs and Trademarks has the right to disregard the priority of the application.
The IPO added a new feather to its cap when it announced on 12 March that under a cooperation agreement with the World Intellectual Property Organization (WIPO) India was participating in the WIPO Digital Access Service (DAS) for submitting and exchanging priority documents, with effect from 31 January 2018.
Submitting physical copies of certified priority documents and verified translations at multiple patent offices involved substantial cost and usage of paper, as applicants used to request certified paper copies of documents from one office and then submit those documents to other offices. This problem was addressed by the Assemblies of the Paris Union for the Protection of Industrial Property, the Patent Law Treaty and the International Patent Cooperation Union, at meetings held in Geneva in 2006, where the establishment of a digital access service for priority documents was approved.
The WIPO DAS, established in 2007, is an electronic system allowing priority documents and similar documents to be certified and exchanged between participating intellectual property offices in a secure digital environment.
The DAS allows applicants to simply request the first office (known as the depositing office or office of first filing) to make priority documents available in the digital library and then to request other offices (known as the accessing offices or offices of second filing) to retrieve those documents via the service.
The IPO as a depositing office can upload to the DAS as priority documents certified copies of patent applications under the PCT and industrial design applications filed with the IPO on and after 31 January 2018 without the need to provide a certified copy of a priority document separately to each office of second filing.
This system benefits applicants as well as offices as applicants can just ask the first filing office to add priority documents and verified translations into the DAS system and then authorize the second filing offices to access the document. The DAS provides a cost-effective and robust digital electronic secure channel.
To deposit a priority document: (i) an applicant can make a request to the IPO to deposit a certified copy of the priority document to the DAS; (ii) the request must be accompanied by the applicable fee as per entry No. 49 in the first schedule of the Patents Rules, 2003; (iii) for designs such requests should be made in form 16 accompanied by the applicable fee in the first schedule of the Designs Rules, 2001; (iv) the request can either be made with a new application or subsequently within the prescribed time as mentioned in the relevant rules; (v) applicants, their authorized agent or attorney should ensure that they submit a correct, functional and valid email address with their request; (vi) on receipt of such a request by the IPO, the applicant will receive an access code through email to share with the accessing office for retrieval of the certified priority document from the DAS. For further information, please see the PCT Applicant’s Guide, Annex B for India.
To make a priority document available through the DAS, in the case of a patent or design application where the priority document has been deposited as per the above-mentioned procedure: (i) the applicant is required to send a letter to the patent offices where the priority document needs to be submitted (provided that the office participates in the DAS), mentioning the application number and access code received by the applicant through email; (ii) for PCT international applications, the applicant should check box No. VI next to the priority claim on the PCT request form (PCT/R0/101) and provide the access code received by the applicant through email for each priority document.
The IPO’s participation in the DAS is a welcome move. The IPO’s progress in meeting the demands of applicants to facilitate electronic filing, e-processing of applications and now use of the DAS will save not only time and cost but also paper. The DAS has turned the cumbersome process of submission of priority documents into a secure, easy, quick and cost-effective process.
Jyoti Sharma is an associate at LexOrbis.
709/710 Tolstoy House
15-17 Tolstoy Marg
New Delhi – 110 001
Mumbai | Bengaluru