India: WIPO DAS: Sharing Priority Documents Becomes Easier

WIPO DAS stands for World Intellectual Property Organization-Digital Access Service. It is a system which provides easy, fast, inexpensive and secure way to electronically transfer certified copy of priority and similar documents related to patents, utility models, industrial designs and trademarks between participating offices. However, the system is not yet extended to trademarks owing to a lack of operational and technical changes required at the participating offices¹.

A participatory office is one which accepts to be a part of WIPO DAS system. A participating office can perform two types of functions i.e. 'Depositing' and 'Accessing'². Depositing office serves as the office of first filing i.e. the office where documents are first submitted and which makes those priority documents digitally available to other participating offices or organizations. Whereas, an Accessing office serves as the office of second filing or an office which digitally accesses the priority document filed at depositing office on request of the applicant. There are 20 participating offices (Countries/ Organization) of WIPO DAS as in February 2019, which include Australia, Brazil, Chile, China, Denmark, Estonia, Eurasian Patent Organization, European Patent Office, Finland, India, Japan, Morocco, Netherlands, New Zealand, Republic of Korea, Spain, Sweden, United Kingdom, United States of America and World Intellectual Property Organization. Although WIPO has developed this service, when it comes to depositing or accessing any document, it is considered as any other participating office.

WIPO also offers a searchable index³ for getting details of participating offices regarding the kind of applications for which they can assist as depositing or accessing office. India as a depositing office offers services only for patent applications, while as accessing office, it can access Industrial Design, PCT International and patent applications from other participating or depositing offices.

For applications where first or second filing office is not a participatory office

In case first filing office or depositing office is not a participating office to this service, then applicant can obtain a certified copy of the document following the traditional method and submit it to WIPO such that the document becomes accessible for the accessing office. Whereas, if the office of second filing is not a participating office then the applicant may use the traditional method of issuing and later sending the certified priority document to the respective office.

DAS Applicant Portal

Through DAS Applicant Portal, applicants can manage and track retrieval of their priority documents by offices of second filing. Applicants need to have a WIPO account to access the services offered by the portal. Detailed features of this portal are provided in WIPO DAS user guide⁴. Some of its key functions include tracking priority documents, viewing access history, downloading certificate (of availability), manage notification preferences, viewing or clearing notifications, managing unavailability of system components in any office, lost access control codes and support in any query.

The advantages of this system are not just limited to the applicant but are equally beneficial for the participating offices. The offices, through this system, can process the documents securely and with ease unlike the tedious process followed earlier i.e. scanning and certification of priority documents. This system thus fulfils the requirement of Paris Convention to provide certification of priority documents in an electronic environment⁵.

The Indian Patent Office (IPO) began its functions as a participating office to WIPODAS with effect from January 31, 2018. The same was notified to public vide public notice 'Availability of WIPO Digital Access Service (DAS) under WIPO-India Cooperation Agreement and its utilization by Applicants, Stakeholders and Public in general⁶' issued on March 12, 2018, wherein IPO had given details of the salient features of the WIPODAS system and procedures for depositing or retrieving priority documents.

According to the above notice:

Procedure for depositing the priority document

For Patents: An application can be made by the applicant requesting* Indian Patent Office for deposition of certified copy of priority document to the WIPO DAS. This application can be made for ordinary patent and PCT International application filed with India as receiving office on or after January 31, 2018. Said application should be accompanied by the fee mentioned in Sr. No. 49 i.e. 'For preparation of certified copy of priority document and for transmission of the same to the International Bureau of World Intellectual Property Organization' in the First Schedule of the Patent Rules, 2003. The applicable fee is INR 1000, INR 2500 and INR 5000 (up to 30 pages and, thereafter, INR 30, INR 75 and INR 150 for each extra page) for a 'Natural Person', 'Small Entity' and 'Large Entity' as applicants, respectively.

For Designs: Similar request* can be made on Form 16 i.e. 'Application for certified copy of registered design' along with fee of INR 500, INR 1000 and INR 2000 applicable for 'Natural Person', 'Small Entity' and 'Large Entity', respectively.

*Once the request is made, an access code for the particular priority document is shared with the applicant via email on the id submitted by the applicant/ authorized agent or attorney (validity and functionality of the email id should be duly confirmed by the applicant or his/her agent). Access code so generated ensures the security of the priority document. Hence, it should only be shared with participating offices of second filing, using which they can access the document from a secure server.

Procedure for accessing priority document

For Patent & Design applications: Request needs to be made to the accessing participating office for retrieval of the priority document through WIPO DAS. Request is made via a letter along with details of application number and specific access code.

For PCT International Applications: For filing a PCT International application priority document needs to be retrieved from the depositing office. For retrieval, applicant needs to submit the access code and tick the relevant box in the priority details section while filing PCT request form (PCT/RO/101).

After receiving a formal request from the applicant, IPO can directly access the priority document from any depositing country or organization.

Additional Instructions: Pursuant to public notice dated 12/03/2018 regarding availability of WIPO Digital Access Service, the following additional instructions were issued on November 22, 2018⁷, for the applicants applying for the priority documents to be supplied to International Bureau (IB) through WIPO DAS after filing International Application:

• Applicant(s)/ Authorized Agent(s) or Attorney(s) should ensure that the submitted priority documents should only be in PDF format with all the fonts embedded with an exclusion for only 7 fonts i.e. Helvetica, Times, Courier, Symbol, Zapf Dingbats, Arial, Verdana.
• After receiving the access code, the Applicant(s)/ Authorized Agent(s) or Attorney(s) should request IB to retrieve the priority document from the DAS portal, in absence of which the priority documents will not be considered as transmitted to IB.
• If DAS code is not received, then the same can be informed to DAS support by sending an email to das.support@wipo.int, keeping a copy to the RO/IN. The mail das.support@wipo.int should be kept in loop for all communications regarding WIPO DAS.

Footnotes

1. DAS User Guide (Dec 1, 2017 ver. 2.4). Available at https://www.wipo.int/export/sites/www/das/en/pdf/das_user_guide.pdf

2. WIPO DAS: Participating Offices. Available at: https://www.wipo.int/das/en/participating_offices/

3. WIPO DAS: Participating Offices. Available at: https://www.wipo.int/das/en/participating_offices/search.jsp?territory_id=80&depositing_id=2385&accessing_id=2389

4. DAS User Guide (Dec 1, 2017 ver. 2.4). Available at https://www.wipo.int/export/sites/www/das/en/pdf/das_user_guide.pdf

5. WIPO Digital Access Service. Available at: https://www.wipo.int/das/en/

6. Public Notice- public notice 'Availability of WIPO Digital Access Service (DAS) under WIPO-India Cooperation Agreement and its utilization by Applicants, Stakeholders and Public in general. Available at: http://www.ipindia.nic.in/writereaddata/Portal/News/397_1_WIPO_Digital_Access_Service.pdf

7. WIPO DAS Public Notice. Available at: http://www.ipindia.nic.in/writereaddata/Portal/News/474_1_WIPO_DAS_Public_notice.pdf

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