The WIPO Digital Access Service Proves its Worth but Challenges Remain

The World Intellectual Property Organization’s WIPO Digital Access Service (DAS) is an electronic system allowing participating intellectual property (IP) offices to exchange priority and similar documents securely.

The system enables applicants and offices to meet the requirements of the Paris Convention for certification in an electronic environment. Prior to its creation, applicants had to request certified paper copies of priority filing documents from the IP office at which the priority application was filed and then transmit those documents to other IP offices, typically through a foreign agent. WIPO DAS allows applicants to request the priority filing IP office (known as the Depositing Office or Office of First Filing) to make priority documents available through the Service and then to request other offices (known as the Accessing Offices or Offices of Second Filing) to retrieve those documents through the Service. The exchange of documents then takes place electronically between the offices.

The benefits of the Service are many:

• It is a quick, easy, and inexpensive way to satisfy the requirement to provide priority documents when and where required;
• It eliminates not only the cost of obtaining the documents, but also the cost of sending documents around the globe—a cost which has increased significantly;
• It avoids processing delays for certified copies, which have become an increasing problem since the start of the COVID pandemic when IP offices were short staffed and found fulfilling document requests challenging;
• It minimizes errors because the files come directly from the records of the IP offices, which avoids any printing errors, particularly with application drawings, which are so critical to design applications; and
• It is secure because the transactions take place directly from one IP office to another, thus eliminating the potential for third–parties (such as shipping vendors and customs) to access the documents. This can be an important safeguard for designs which have not yet been released to the public at the time of filing.

However, the Service is not without its challenges, particularly because it is still new. The most common challenge is the inability of some IP offices to access the documents despite being provided with the necessary information. Some IP offices will make more than one attempt to retrieve the documents, others will not. When an office cannot access documents through the system, the applicant must resort to the traditional method of providing the IP office with the necessary documents. Another challenge is that applicants cannot access or view the documents transmitted through the system to verify their contents or accuracy. This is particularly problematic for IP offices that require a translation of the document. If the applicant does not provide a translation that precisely matches the document as transmitted, the priority claim could be forfeited. And finally, many IP offices are not yet members of the system, which limits its efficiency.

The members of the ID5—the world’s five largest industrial design IP offices (CNIPA (the China National Intellectual Property Administration), the EUIPO (the European Union Intellectual Property Office), the JPO (the Japan Patent Office), KIPO (the Korean Intellectual Property Office), and the USPTO (U.S. Patent and Trademark Office)—were early adopters of the Service and recently received comments from user groups including INTA at the ID5 Annual Meeting in October 2022.

The ID5 project report from its 2016 study of the Service is available here.

The 2022 Annual Meeting Record of Discussion can be found here and a booklet summarizing the work of the ID5 to date can be found here.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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