Digital Access Service for priority documents (Abbr. as DAS hereinafter) is an electronic service established and managed by the International Bureau of the World Intellectual Property Organization (WIPO), which obtains priority documents by electronic exchange through cooperation among patent offices of various countries. China National Intellectual Property Administration (CNIPA), as a member of Organization's "Working Group on Digital Access Services for Priority Documents" of World Intellectual Property Organization, not only serves as the Office of First Filing (OFF) to accept the applicant's DAS deposit request, and also serves as the Office of Second Filing (OSF) to accept the DAS retrieve request of the applicant.
When the applicants use the DAS service and submit a deposit request to the OFF (CNIPA) for their invention and utility model applications made in China, do they need to submit a foreign filing license request in advance?
In accordance with the provisions of Article 19, paragraph 1 of the Chinese Patent Law, where any entity or individual intends to file an application for patent abroad for any invention or utility model developed in China, it or he shall request in advance CNIPA for confidentiality examination.
The applicant’s purpose of using DAS service is to alleviate the burden of providing priority documents when applying for patents in foreign countries. As the OFF, CNIPA accepts the priority documents from applicants and stores them in a dedicated digital library. Before storing them, CNIPA does not examine whether the priority documents are experienced confidentiality examination, only transferring and storing the documents. Therefore, applicants need to be noted to submit a foreign filing license request before submitting the deposit request.
As can be seen from the above, for invention-creations made in China, the applications have been submitted in China. Before submitting the DAS deposit requests for these applications, applicants should submit the requests for confidentiality examination to CNIPA in advance. Only after the examinations is passed and no confidentiality is needed, the DAS deposit requests can be submitted. In practice, the applicants can submit requests for confidentiality examination while filing Chinese applications, that is, they can check the corresponding item in the request form for the invention or utility model application. This method is the most convenient way and does not incur additional costs. If a request for confidentiality examination is not submitted while filing an application, it is also acceptable to file a separate request for confidentiality examination after filing an application, which should be submitted as soon as possible within the priority period and before filing a foreign application.
It should be noted that if the applicant intends to file an international patent application with CNIPA as the receiving office claiming the priority of this China application, it or he should also comply with the aforementioned provisions, and before submitting the DAS deposit request, he should submit a request for confidentiality examination to CNIPA and obtain approval.
To sum up, as for invention-creations made in China, when filing an application in China, the applicant should submit a request for confidentiality examination to CNIPA before using DAS deposit service in any case.
