WIPO-IPO Agreement
A WIPO- India Cooperation agreement was established between the World Intellectual Property Organization (WIPO) and India Patent Office (IPO) on Jan 31, 2018.
IPO has started the WIPO- Digital Access Service (DAS) for priority documents submitted by the applicants from the participating offices.
The agreement was entered into to facilitate the electronic exchange of data and documents, including priority documents, search and examination reports, and other related information between IPO and WIPO through WIPO CASE and WIPO DAS.
As per IPO, the agreement covers cooperative activities to improve Intellectual Property (IP) business services, including projects for digitization, data capture, data quality improvement, data exchange for the dissemination of IP information, document management, online search, and any related systems or modules and creation of national and/or regional IP databases.
This system will benefit the applicants filing PCT applications claiming priority from Indian Patent applications and the Examiners at the IPO and WIPO handling such applications. Furthermore, the agreement also facilitates India to become a depositing office for WIPO CASE, thus enabling WIPO to make the search and examination reports of Indian Patent applications available.
WIPO-DAS
The WIPO-Digital Access Service is an electronic system allowing priority documents and similar documents to be securely exchanged between participating intellectual property offices of various countries. The system enables applicants and offices to meet the requirements of the Paris Convention for certification in an electronic environment.
Traditionally, applicants have been obliged to obtain certified paper copies of documents from one office and submit them to other offices.
Currently, the WIPO-DAS service is operational for patent and design documents.
WIPO DAS allows applicants to request the first office (referred to as Depositing Office or Office of First Filing) to make such priority documents available to the system and then to request other offices (referred to as Accessing Offices or Offices of Second Filing) to retrieve such documents through the service. The exchange of documents then accordingly takes place via electronic mode between the offices.
Participating Offices:
It is a matter of immense pride that IPO now joined the league of USPTO (the United States Patent and Trademark Office), UKIPO (the United Kingdom Intellectual Property Office), JPO (the Japan Patent Office), SIPO (State Intellectual Property Office of the People’s Republic of China) and INPI (the National Institute of Industrial Property of Brazil). Like these, the IPO also became both; a participating office and an accessing office of the DAS.
As a participating office, the IPO can now allow electronic versions of the applications to be made available to the DAS, and as an accessing Office, the IPO can help in the retrieval of priority documents of the applicants.
As per the IPO, this WIPO- India Cooperation agreement covers cooperative activities for the improvement of IP business services, including projects for digitalization, data capture, data quality improvement, data exchange for dissemination of IP information, document management, online search, and any related systems or modules and creation of national and/or regional IP databases.
Benefits
This system will likely benefit not only the Applicants filing PCT Applications claiming priority from Indian Patent applications but also the Examiners at the IPO and WIPO handling such applications. Further, the Agreement also facilitates India to become a depositing office for WIPO CASE, thus enabling WIPO to make the search and examination reports of Indian patent applications available.
As per the patent amendment rules 2018, it is implemented that no fee be taken from the Indian Applicants for preparing a certified copy of a priority document and e-transmission through WIPO-DAS. This fee waiver provides a huge relief for Indian applicants because the current IPO charges are INR 16000 as a transmittal fee and INR 5000 (up to 30 pages and thereafter 150 for each extra page) for the preparation and transmittal of priority documents to WIPO.
Salient features of WIPO-DAS
Prominent features of the WIPO-DAS service are:
WIPO DAS facilitates easy, secure, quick, and inexpensive procedures for submitting certified copies of priority documents. The salient features of the service have been enumerated below-
1) Request made by an applicant to the office of first filing to deposit/add the priority documents into the system and request second filing offices to utilize service to obtain such records;
2) Authorization of access through the usage of the access code provided by WIPO DAS;
3) Documents exchanged through secure channels;
4) DAS Service hosted and administered by WIPO;
5) No requirement to provide a certified copy of the priority document to each office of the second filing individually;
6) No requirement to pay for multiple copies of paper priority documents.
Indian Patent Office, as a depositing office, will now upload certified copies of patent and industrial design applications as priority documents, including International Patent applications filed under the Patent Cooperation Treaty filed at the Office (RO/IN) filed on or after 31st January 2018, which the applicant requests explicitly to make such priority documents available to the WIPO DAS.
Procedure to deposit a priority document:
1. Request by the applicant to the IPO to deposit a certified copy of the priority document to DAS accompanied by the prescribed fee as provided in Entry No. 49 in the First Schedule of the Patent Rules, 2003
2. Applicants, their authorized agent, or attorney should ensure that they submit a correct, functional, and valid email address with the request
3. Upon receipt of the IPO’s request, the applicant will receive an access code through email to share with the accessing office to retrieve certified priority documents from DAS.
Procedure for making priority documents available through DAS
Once the priority document has been deposited utilizing the method mentioned above, the following steps need to be followed to make the document available through the service-
1. The applicant must send a letter to the patent office where the priority document has to be submitted (subject to the fact that the office is a participant of the DAS), which should mention the applicant’s application number and access code via mail.
2. The applicant should check Box No for the PCT international applications. VI next to the priority claim on the PCT request form and provide the access code received by the applicant via email for each priority document.
“IPO’s collaboration with WIPO concerning DAS has been a landmark step. This step will prove cost-effective and time-saving since it will facilitate electronic filing and documentation. The DAS has made submitting priority documents secure, easy, quick, and inexpensive.”
