Under the Priority Document Exchange Agreement between the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO), the electronic transfer of certified copies of patent applications (priority documents) between the USPTO and the JPO, which serves as the basis for claims for priority under the Paris Convention, started in July 2007. Based on the agreement, an applicant shall be relieved from submitting priority document(s) with certain reservations. (Article 43(5) of the Japanese Patent Law and Rule 27-3-3(2) of the Japanese Patent Law Enforcement Regulation)

For Japanese applications claiming US priority rights, the electronic transfer will be applied to priority documents that certify that an application has been filed in the USPTO claiming US priority ONLY if the US application meets at least one of the following criteria:

1.  The application has been published in the US; and
2. “Authorization to Permit Electronic Access to Application(s)”(Form PTO/SB/39) for the application has been submitted to the USPTO.

Thus, for Paris convention cases, please provide us with a copy of the Form PTO/SB/39 that was filed in the USPTO.  In this way, an applicant will be able to omit filing the priority documents with the JPO.

For more details, please see the following URLs:

http://www.uspto.gov/web/forms/moreinfosb39.pdf(USPTO)
http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/uspatent_data_exemption_e.htm (JPO)