The Confused USPTO Policy On Certified Copies Of Patent Applications

Obtaining certified copies of patent applications can be essential to perfecting a priority claim. But when a U.S. priority application contains a sequence listing, USPTO practices make it difficult to satisfy this requirement. While there is a work-around, it is cumbersome and potentially costly. The USPTO can solve this problem, but will it?

The Patent Document Exchange Does Not Replace Hard Copies

When a foreign-filed patent application claims priority to a U.S. application, an applicant typically must "perfect" that priority claim by providing a certified copy of the U.S. application within a specific time period. See, e.g., PCT Rule 17 (WIPO requirements); Art. 88 EPC and R. 53(1) EPC (EPO requirements). While the cost and burden of providing a certified paper copy has been mitigated by the WIPO Digital Access Service (DAS) for Priority Documents and multilateral agreements such as the patent document exchange (PDX), these electronic data sharing agreements do not entirely remove the requirement to provide a certified hard copy. Only a few countries are members of the PDX. Indeed, most PCT members have not implemented DAS, due to operational, or technical factors. Therefore, for many jurisdictions, hard copies of priority documents still are required.

A Hard Copy May Also Be Required Where PDX and DAS Exists.

PDX and DAS rely on the patent offices to exchange data. If there is an error in this data sharing, has the applicant perfected priority? An opponent can mount a very formalistic argument that the law places the onus on the applicant to provide a certified copy of the priority document, and therefore any errors must be counted against the applicant. Some have even argued that the law has not caught up with PDX and DAS practice and, therefore, reliance on electronic data sharing is insufficient under the law. I am not aware these arguments being successful but, for high value patent applications, some practitioners always file a hard copy of the priority document.

More Burdens if the Priority Application Contains a Sequence Listing

Many biotechnology applications include a sequence listing as part of the application, and it may be the most important part of some applications. However, when issuing a certified copy, the USPTO treats electronically-filed sequence listings as if they are not part of the application.

If you request a certified copy, the USPTO will print and certify the specification, figures and other documents, but...