India Joins the Digital Access Service

The Indian Patent Office (IPO) has become the latest country to join (Paragraphs 10 and 12 of the Framework Provisions that came into effect on July 1, 2012) the World Intellectual Property Organization’s (WIPO) Digital Access Service (DAS). (See) The DAS allows priority documents and other relevant documents to be securely exchanged through electronic means between intellectual property (IP) offices across the world. This will be of immense use to both applicants who plan to file patent applications claiming priority from an Indian patent application, as well as applicants that have or plan to file patent applications in India.

About the Digital Access Service (DAS)

Through the DAS, making and receiving applications under the Paris Convention for the Protection of Industrial Property and the Patent Cooperation Treaty (PCT) becomes easier, as documents can be accessed and retrieved in a secure electronic environment. The traditional form of filing applications uses a paper trail to make corresponding applications in different patent offices across the world. For example, an applicant has to first request for certified paper copies of documents pertaining to their application from one office, and then, submit those certified copies to other offices where they intend to make subsequent filings. In the DAS environment, if both the office of first filing and of second filing are parties to the Service, the requirement for physical certified copies is completely done away with.

The DAS is presently used for priority documents relating to patent applications. Over time, it will also be extended to other intellectual property (IP) rights such as industrial designs and trademarks.

Growing Network of Patent Offices

From 31 January 2018, (See) the IPO became both a Participating and an Accessing Office of the DAS, joining the ranks of leading international patent offices, including the United States Patent and Trademark Office (USPTO), theUnited Kingdom Intellectual Property Office (UKIPO), the Japan Patent Office (JPO), State Intellectual Property Office of the People’s Republic of China (SIPO), and the National Institute of Industrial Property (INPI) of Brazil.

Becoming a Participating Office means that the IPO will now allow electronic versions of the applications to be made available to the DAS. Similarly, as an Accessing Office, the IPO will now allow applicants to request that a priority document be retrieved – in electronic form – from the DAS instead of having to file a certified paper copy.

Advantages of DAS

The DAS transforms the application filing experience for both the applicant and the office. As an applicant, one merely has to request the office of first filing to add the priority document into the system, and similarly, request offices of second filing to use the service for obtaining access. The system uses secure channels, hosted and administered by WIPO, thus offering users a reliable and dependable service. Because transmission of documents is through electronic means, the speed at which documents are exchanged at is exponentially quicker. There is also a significant price advantage for applicants, since there will now be no payment required for multiple copies of paper versions of priority documents, and there are no charges issued by WIPO.

Similarly, patent offices that are part of the DAS can now work in paperless environments, in simplified, standardized formats, and through secure channels offered by WIPO. Speeds and costs also reduce significantly for offices as well.

Practical Aspects: Using the DAS at the IPO

As a Participating Office, the IPO will deposit certified copies of patent and industrial design applications as priority documents, including PCT applications filed at the Office on and after 31 January 2018, when specifically requested for by the applicant.

A request to the IPO to make an application available through the service may be made by using the “Request Form”, available from the Office website or by sending a letter.  (NB: The IPO is yet to make the Request Form operational. Thus, for now,  the applicant must send a letter to the IPO, clearly stating the relevant application number, and that it should be made available to the DAS.)

As an Accessing Office, the IPO will recognize priority documents available to it through the DAS for any application for which the time for furnishing the priority document has not expired by 31 January 2018.

To request the IPO to retrieve the document from the DAS, the applicant must check the relevant box next to the priority claim on the application form or send a letter to IPO. (NB: The e-filing system of the IPO presently does not have a check box for indicating that IPO is required to obtain the priority document from DAS. Thus, the applicant must send a letter to the IPO, clearly mentioning the application number of the priority document and the allotted DAS code.)

Conclusion

The IPO joins 16 other patent offices (See) as part of the DAS. With an ever-growing network of patent offices, it is expected that there will be an increase in patent applications from all over the world. The significantly low cost involved in switching to an electronic environment is also likely to attract a new breed of patent applicants, thus diversifying the landscape significantly. With promises of time and resource-efficient processes, the DAS is a welcome complement to the demands of a fast-paced technology-driven future.