Changes to Priority Document Arrangements at the EPO

Thomas Gibb

Changes to Priority Document Arrangements at the EPO

The European Patent Office (EPO) has participated in WIPO’s Digital Access Service (DAS) allowing for the exchange of certified copies of priority documents since 2018. Before this arrangement, the EPO automatically obtained certified copies of Chinese, Japanese, South Korean and US priority applications where required. These arrangements continued after the EPO commenced participation in the DAS scheme, even where no DAS code was provided alongside the application.

However, this picture is now changing. In March 2020, the EPO announced that its arrangement with the Japanese Patent Office would end. Now, the EPO has also announced changes for applications claiming priority from earlier US, Chinese and South Korean rights. Where a European patent application is filed, or a PCT enters the European regional phase, on or after 01 January 2022, the EPO will no longer automatically obtain a copy of any relevant South Korean, Chinese or US priority documents.

This change will usually be of little consequence for European patent applications stemming from the PCT route, as the responsible attorney will have usually filed all necessary priority documents during the international phase.

On the other hand, this change in practice is of greater significance for new European patent applications filed directly at the EPO and claiming priority from Chinese, US or South Korean patent applications. In such cases, whilst retrieval of the relevant priority documents will no longer be automatic, retrieval may still be requested by providing the EPO with the appropriate DAS code.

Given these changes in EPO practice, where applicants regularly file direct European patent applications claiming priority from Chinese, Japanese, South Korean or US patent applications, we advise:

  1. requesting a DAS code from the office of first filing; and
  2. providing this code to the attorney who will be filing your European patent application.

Proceeding in this manner will ensure the seamless retrieval of the necessary priority documents and eliminate the need to manually obtain any certified copies.

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