Patent Law FAQ

When filing a reissue application to correct a priority claim, it’s crucial to adhere to the time limits set by law. The MPEP specifies:

‘The reissue application must be filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f).’

This means that the reissue application must typically be filed within 12 months from the filing date of the foreign application. However, there may be exceptions or additional considerations depending on specific circumstances. It’s advisable to consult with a patent attorney or the USPTO directly for guidance on your particular situation.

The time limit for filing a delayed claim for foreign priority after patent issuance is specified in 37 CFR 1.55(g). According to MPEP 216.01:

‘The time period set in 37 CFR 1.55(g) for filing a claim for priority and the certified copy required under 37 CFR 1.55(f) is the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.’

However, for patents that have already been issued, the claim must be filed within the period set forth in 37 CFR 1.55(g). This typically means that the claim should be filed as soon as possible after realizing the oversight, as any delay beyond the statutory period would require explanation and potentially affect the grant of the petition.

37 CFR 1.55(h) provides an important provision for satisfying the requirement for a certified copy of a foreign application. Key points include:

• It allows the certified copy requirement to be met through a prior-filed nonprovisional application.
• The prior-filed application must be one for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c).
• The prior-filed application must contain the certified copy and be identified as such.
• This provision can simplify the process of perfecting priority claims in related applications.

The MPEP states: 37 CFR 1.55(h) provides that the requirement for a certified copy of the foreign application will be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and the prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.

This provision can be particularly useful when requesting a certificate of correction to perfect a priority claim in a patent that claims benefit from an earlier application containing the certified copy.

What is the relationship between priority claims and the effective filing date?

The relationship between priority claims and the effective filing date is crucial in determining the patentability of an invention. According to MPEP 216:

“The effective filing date of a claimed invention is determined on a claim-by-claim basis and not an application-by-application basis.”

This means that each claim in a patent application may have a different effective filing date, depending on its content and the priority claims it can support. The effective filing date is important because it determines which prior art can be used against the claim during examination and potential litigation.

• If a claim is fully supported by an earlier application, its effective filing date may be the filing date of that earlier application.
• If a claim contains new matter not disclosed in any earlier application, its effective filing date will be the actual filing date of the current application.

Understanding this relationship is crucial for inventors and patent practitioners to properly claim priority and protect their inventions.

For more information on effective filing date, visit: effective filing date.

When a claim to priority and certified copy of a foreign application are received during the pendency of a patent application, the examiner generally follows these steps:

• Checks for obvious formal defects in the documents
• Verifies that the documents correspond to the application identified in the application data sheet
• For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, ensures the claim for foreign priority is timely

The examiner does not typically examine the subject matter to determine if the applicant is entitled to the benefit of the foreign filing date unless it’s necessary for patentability reasons. As stated in the MPEP, The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons.

For more information on application data sheet, visit: application data sheet.

For more information on certified copy, visit: certified copy.

For more information on foreign priority, visit: foreign priority.

For more information on patent examination, visit: patent examination.

The terms ‘right of priority’ and ‘benefit of an earlier filing date’ refer to different concepts in US patent law:

• Right of priority: This term is used in the context of foreign priority under 35 U.S.C. 119(a)-(d) and 365(a) and (b). It allows a US application to claim the priority date of a foreign application filed within the previous 12 months.
• Benefit of an earlier filing date: This term is used for domestic benefit under 35 U.S.C. 119(e) and 120. It allows a US application to claim the filing date of an earlier US provisional or nonprovisional application.

As stated in MPEP 216: ‘The right of priority is a statutory right, which is not considered an application property right.’

For more information on domestic benefit, visit: domestic benefit.

For more information on foreign priority, visit: foreign priority.

For more information on right of priority, visit: right of priority.

The ‘In re Van Esdonk’ case (187 USPQ 671, Comm’r Pat. 1975) is an important precedent in patent law regarding the perfection of foreign priority claims. Key points about this case include:

• It involved a situation where a claim to foreign priority benefits had not been filed in the application prior to patent issuance.
• The application was a continuation of an earlier application that had satisfied the requirements of 35 U.S.C. 119(a)-(d) or (f).
• The Commissioner held that perfecting a priority claim in the parent application satisfies the statute for the continuation application.

The MPEP states: In re Van Esdonk, a claim to foreign priority benefits had not been filed in the application prior to issuance of the patent. However, the application was a continuation of an earlier application in which the requirements of 35 U.S.C. 119(a)-(d) or (f) had been satisfied. Accordingly, the Commissioner held that the ‘applicants’ perfection of a priority claim under 35 U.S.C. 119 in the parent application will satisfy the statute with respect to their continuation application.’

This case is significant because it allows for the perfection of foreign priority claims in continuation applications based on the parent application’s compliance, even after patent issuance.

When submitting an English language translation of a non-English language foreign priority application, the following requirements must be met:

• The translation must be of the certified copy of the foreign application as filed
• The translation must be submitted together with a statement that the translation of the certified copy is accurate

As stated in the MPEP: When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate.

For more information on certified copy, visit: certified copy.

For more information on foreign priority, visit: foreign priority.

To perfect a claim for foreign priority after patent issuance, several documents are required. According to MPEP 216.01, the following must be submitted:

• A petition to accept an unintentionally delayed claim for priority
• The required petition fee
• A certified copy of the foreign application
• An English language translation of the foreign application (if not in English)
• A statement that the translation is accurate

The MPEP states: ‘In addition to the petition to accept an unintentionally delayed claim for priority and the required petition fee, the claim for priority must be made in an application data sheet (if the patent issued from a utility or plant application filed on or after September 16, 2012) or in a request for a certificate of correction, and a certified copy of the foreign application must be submitted.’

It’s important to note that the requirements may vary slightly depending on the specific circumstances of the application and patent. Consulting with a patent attorney or agent is advisable for ensuring all necessary documents are properly prepared and submitted.

What are the time limits for perfecting a foreign priority claim in a patent?

The time limits for perfecting a foreign priority claim in a patent are as follows:

• The priority claim must be made within 16 months from the filing date of the prior foreign application or 4 months from the actual filing date of the U.S. application, whichever is later.
• A certified copy of the foreign application must be filed within the same time period, unless previously submitted in a parent application.

According to MPEP 216.01: “The patent owner’s failure to make a timely priority claim and file the certified copy prior to issuance of the patent cannot be cured by filing a reissue application.” This emphasizes the importance of meeting these deadlines during the initial patent application process.

To file a delayed priority claim, you must submit a petition to accept an unintentionally delayed claim for priority. According to 37 CFR 1.55(e), the petition must include:

1. The priority claim in an application data sheet
2. A certified copy of the foreign application (unless exceptions apply)
3. The petition fee
4. A statement that the entire delay was unintentional

The MPEP states: A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) must be accompanied by: (1) The priority claim […]; (2) A certified copy of the foreign application […]; (3) The petition fee […]; and (4) A statement that the entire delay […] was unintentional.

What are the requirements for claiming domestic benefit in a patent application?

Claiming domestic benefit in a patent application allows an applicant to rely on the filing date of an earlier-filed US application. The MPEP 216 outlines the requirements for claiming domestic benefit, which are based on 35 U.S.C. 120. The key requirements include:

• The later-filed application must be filed before the patenting or abandonment of the prior application
• The later-filed application must contain or be amended to contain a specific reference to the prior application
• The prior application must disclose the invention claimed in the later-filed application in the manner required by 35 U.S.C. 112(a)
• At least one inventor named in the later-filed application must have been named as an inventor in the prior application

The MPEP states:

‘To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application.’

It’s important to note that these requirements must be met for each application in the chain of priority, ensuring a continuous line of co-pendency and proper disclosure.

For more information on continuation application, visit: continuation application.

For more information on domestic benefit, visit: domestic benefit.

How does the Paris Convention affect priority claims in US patent applications?

The Paris Convention plays a crucial role in international priority claims for US patent applications. According to MPEP 216:

‘The right of priority is based on the Paris Convention for the Protection of Industrial Property, which is adhered to by the United States.’

The Paris Convention affects US patent applications in the following ways:

• It allows applicants to claim priority from foreign applications filed in member countries
• It establishes a 12-month priority period for utility patents and a 6-month period for design patents
• It ensures that filing an application in one member country does not invalidate the novelty of the invention in other member countries

The implementation of the Paris Convention in US law is found in 35 U.S.C. 119(a)-(d), which outlines the requirements for claiming foreign priority.

For more information on foreign priority, visit: foreign priority.

For more information on international patent applications, visit: international patent applications.

For more information on Paris Convention, visit: Paris Convention.

The assignment of a priority right can significantly impact patent applications. According to MPEP 216:

‘The right of priority is a personal right of the applicant or his successor in title. It may be transferred to the extent and subject to the conditions provided for in the statutes.’

Key points about the assignment of priority rights:

• Priority rights can be transferred separately from the application itself.
• The assignment must be executed before filing the later application claiming priority.
• An assignment of the entire right, title, and interest in an application includes the right of priority.
• Partial assignments of priority rights are possible but must be clearly documented.

Proper assignment of priority rights is crucial for maintaining the earlier effective filing date, which can be critical for patentability and avoiding prior art rejections.

For more information on effective filing date, visit: effective filing date.

The America Invents Act’s (AIA) first-inventor-to-file (FITF) provision has significant implications for perfecting foreign priority claims, especially in cases where the foreign application has a pre-March 16, 2013 filing date. Key points include:

• If a patent was examined under FITF provisions, but the foreign priority application has a pre-AIA filing date, perfecting the priority claim may require further examination.
• In such cases, a certificate of correction is not sufficient, and a reissue application is necessary.
• This situation arises because changing the effective filing date could potentially subject the patent to a different statutory framework.

The MPEP states: In situations where further examination would be required, the petition should not be granted. For example, further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA.

This requirement ensures that patents are not inadvertently subjected to different legal standards without proper examination.

How does the AIA affect priority claims for applications filed on or after March 16, 2013?

The America Invents Act (AIA) significantly changed the U.S. patent system, particularly affecting priority claims for applications filed on or after March 16, 2013. According to MPEP 216:

“AIA 35 U.S.C. 100(i)(1)(B) provides that the effective filing date for a claimed invention in a patent or application for patent (other than a reissue application or reissued patent) is the filing date of the earliest application for which the patent or application is entitled to claim a right of foreign priority or domestic benefit.”

This change means that:

• The effective filing date can now include foreign priority dates, not just domestic benefit dates.
• The first-to-file system replaced the first-to-invent system for determining priority.
• Prior art is now determined based on the effective filing date, including foreign priority dates.

These changes have significant implications for inventors and patent practitioners in terms of strategy for filing applications and claiming priority, especially in a global context.

For more information on America Invents Act, visit: America Invents Act.

For more information on effective filing date, visit: effective filing date.

For more information on foreign priority, visit: foreign priority.

A certificate of correction can be used to perfect a foreign priority claim in the following scenarios:

1. When the priority claim was timely filed but not included on the patent due to failure to submit a certified copy.
2. When the priority claim was not timely made, but the correction would not require further examination.

To use a certificate of correction, you must:

• File a request for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
• Include a grantable petition under 37 CFR 1.55(e), (f), or (g) as appropriate.
• Pay the required fee and provide a showing of good and sufficient cause for the delay, if applicable.

The MPEP states: Where the priority claim required under 37 CFR 1.55 was timely filed in the application but was not included on the patent because the requirement under 37 CFR 1.55 for a certified copy was not satisfied, the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a grantable petition under 37 CFR 1.55(f) or, in the case of a design application, a grantable petition under 37 CFR 1.55(g).

How can I request a corrected patent with a perfected foreign priority claim?

To request a corrected patent with a perfected foreign priority claim after issuance, you need to follow these steps:

• File a reissue application under 35 U.S.C. 251.
• Include a petition for an expedited examination of the reissue application.
• Pay the required fees for both the reissue application and the petition.
• Submit the necessary documents to perfect the priority claim, such as a certified copy of the foreign application.

As stated in MPEP 216.01: “A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent.” It’s important to note that this process is only available for perfecting priority claims that were timely filed during the pendency of the application.

To correct the priority claim in an issued patent, you can file a reissue application under 35 U.S.C. 251. The MPEP states:

‘A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) or 35 U.S.C. 120 in the issued patent.’

This process allows you to amend the specification to include the required reference or correct the priority claim itself. However, it’s important to note that the reissue application must be filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f).

Can I perfect a foreign priority claim after my patent has been issued?

No, you cannot perfect a foreign priority claim after your patent has been issued if the claim was not timely filed during the pendency of the application. As stated in MPEP 216.01:

“A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent. However, a reissue application cannot be used to perfect a claim for priority benefit under 35 U.S.C. 119(a)-(d) or (f) where the claim for priority benefit was not timely filed during the pendency of the application that issued as the patent for which reissue is sought.”

This means that if you missed the deadline to file the priority claim or the required certified copy of the foreign application during the original patent application process, you cannot use a reissue application to retroactively perfect the claim after the patent has been issued.

Yes, it is possible to claim priority to a foreign application after your U.S. patent has been issued. According to MPEP 216.01, a claim for priority under 35 U.S.C. 119(a)-(d) or (f) can be made after the patent is granted, subject to certain conditions:

• The claim must be made within the time period set forth in 37 CFR 1.55(g).
• A petition to accept an unintentionally delayed claim for priority must be filed.
• The required fee must be paid.
• A certified copy of the foreign application must be submitted.

The MPEP states: ‘A claim for priority under 35 U.S.C. 119(a)-(d) or (f) for the benefit of a prior foreign application may be made after the patent issues if the claim is accompanied by a grantable petition to accept an unintentionally delayed claim for priority.’

Yes, it is possible to add a priority claim to a patent after it has been issued, but the process requires filing a reissue application. The MPEP states:

‘A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) or 35 U.S.C. 120 in the issued patent.’

To add a priority claim, you would need to:

• File a reissue application under 35 U.S.C. 251
• Amend the specification to include the required reference
• Ensure the reissue application is filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f)

It’s important to note that adding a priority claim may affect the patent’s term and could potentially impact its validity if prior art emerges between the new priority date and the original filing date.

Yes, a US patent application can claim both foreign priority and domestic benefit simultaneously. This is known as a ‘multiple priority claim’ or ‘multiple benefit claim.’ The MPEP 216 states:

‘It is possible for a U.S. application to be entitled to the benefit of an earlier U.S. filing date and also to the right of priority of a foreign application.’

Here’s how it works:

• The application can claim foreign priority under 35 U.S.C. 119(a)-(d) to a foreign application filed within the past 12 months.
• At the same time, it can claim domestic benefit under 35 U.S.C. 120 to an earlier US application.
• The earlier US application can also claim foreign priority to the same foreign application.

This allows the US application to potentially have an effective filing date that is earlier than both its actual filing date and the filing date of the US application it claims benefit from.

For more information on domestic benefit, visit: domestic benefit.

For more information on foreign priority, visit: foreign priority.

A Certificate of Correction is appropriate for perfecting a foreign priority claim in the following situations:

1. When the priority claim was timely filed in the application but was not included on the patent because the requirement for a certified copy was not satisfied. In this case, a grantable petition under 37 CFR 1.55(f) or 37 CFR 1.55(g) for design applications is also required.
2. When a priority claim under 37 CFR 1.55 was not timely made, but the correction sought would not require further examination.

The MPEP states: “Effective May 13, 2015, 37 CFR 1.55(g) provides that the claim for priority and the certified copy of the foreign application must be filed within the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. 37 CFR 1.55(g) eliminates the need in many instances to file a reissue application in order to perfect a claim for foreign priority.” (MPEP 216.01)

If the applicant files the certified copy of the foreign application to overcome the effective date of a reference, a translation is required if the copy is not in English.

The examiner should require the translation when requesting the certified copy. The translation must be a complete translation of the certified copy, and must be accompanied by a statement that the translation is accurate. [MPEP 216]

An examiner considers the merits of a foreign priority claim in the following situations:

• When a reference is found with an effective date between the foreign filing date and the U.S. filing date
• When determining if a reference’s prior art date falls within the grace period for the application under examination
• When an interference situation is under consideration

The MPEP states: “The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons. For example, the examiner considers the merits of an applicant’s claim of priority when a reference is found with an effective date between the date of the foreign filing and the date of filing in the United States, when determining whether a reference’s prior art date is within the grace period for the application under examination, and when an interference situation is under consideration.” (MPEP 216)

The filing date of foreign applications is significant in priority claims for the following reasons:

1. It establishes the effective date of the priority claim.
2. The date accorded is the date on which the specification and drawing were filed, not necessarily the date of the petition (which is called the application in some countries).
3. This date is used to determine the applicability of prior art and the eligibility for certain patent term adjustments.

The MPEP states: “In some instances, the specification and drawing of the foreign application may have been filed at a date subsequent to the filing of the petition in the foreign country. Even though the petition is called the application and the filing date of this petition is the filing date of the application in a particular country, the date accorded here is the date on which the specification and drawing were filed.” (MPEP 216)

The most important aspect of an examiner’s action regarding a right of priority is determining the identity of invention between the U.S. and foreign applications. This involves:

• Considering the foreign application as if it had been filed in the U.S. on the same date it was filed in the foreign country
• Examining the foreign application for sufficiency of disclosure under 35 U.S.C. 112
• Determining if there is a basis for the claims sought

The MPEP states: “The most important aspect of the examiner’s action pertaining to a right of priority is the determination of the identity of invention between the U.S. and the foreign applications. The foreign application may be considered in the same manner as if it had been filed in this country on the same date that it was filed in the foreign country, and the applicant is ordinarily entitled to any claims based on such foreign application that applicant would be entitled to under U.S. laws and practice.” (MPEP 216)

When submitting a certified copy of a foreign application for priority purposes, the following requirements apply:

• If the certified copy is not in English, a translation is required
• The translation must be of the certified copy of the foreign application as filed
• The translation must be filed together with a statement that the translation of the certified copy is accurate

The MPEP states: “When the examiner requires the filing of the certified copy, the translation should also be required at the same time. If an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) and it must be filed together with a statement that the translation of the certified copy is accurate.” (MPEP 216)

When reviewing a claim to foreign priority, the examiner generally checks the following:

• That the papers contain no obvious formal defects
• That the papers correspond in number, date and country to the application identified in the application data sheet
• For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, that the claim for foreign priority is timely

The MPEP states: “When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner generally makes no examination of the papers except to see that they contain no obvious formal defects and correspond in number, date and country to the application identified in the application data sheet for an application filed on or after September 16, 2012, or oath or declaration or application data sheet for an application filed prior to September 16, 2012.” (MPEP 216)

The requirements for accepting an unintentionally delayed claim for foreign priority include:

1. Filing a petition to accept a delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b).
2. Submitting the priority claim in an application data sheet identifying the foreign application.
3. Providing a certified copy of the foreign application, unless previously submitted or an exception applies.
4. Paying the petition fee as set forth in 37 CFR 1.17(m).
5. Submitting a statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The MPEP cites 37 CFR 1.55(e), which states: “A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) must be accompanied by: (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted; (2) A certified copy of the foreign application, unless previously submitted or an exception in paragraph (h), (i), or (j) of this section applies; (3) The petition fee as set forth in § 1.17(m); and (4) A statement that the entire delay between the date the priority claim was due under this section and the date the priority claim was filed was unintentional.” (37 CFR 1.55(e))

The USPTO handles United Kingdom provisional specifications in priority claims as follows:

• A certified copy of the “provisional specification” may be submitted, sometimes accompanied by a copy of the “complete specification.”
• The provisional specification is examined for completeness of disclosure, as it may not contain a complete disclosure in the sense of 35 U.S.C. 112.
• If the UK provisional specification is found insufficient for lack of disclosure, reliance may then be placed on the complete specification and its date, treating it as a different application than the provisional specification.

The MPEP states: “In applications filed from the United Kingdom there may be submitted a certified copy of the ‘provisional specification,’ which may also in some cases be accompanied by a copy of the ‘complete specification.’ According to United Kingdom law the provisional specification need not contain a complete disclosure of the invention in the sense of 35 U.S.C. 112, but need only describe the general nature of the invention, and neither claims nor drawings are required.” (MPEP 216)

The examiner generally does not examine the certified copy of the foreign priority application except to see that it contains no obvious formal defects and corresponds to the U.S. application. The examiner will consider the merits of the priority claim if:

• An intervening reference is found with an effective date between the foreign filing date and U.S. filing date
• Determining if a reference is prior art under the grace period
• An interference situation is under consideration

If the examiner finds the applicant is not entitled to the priority date, a rejection is made and the applicant must then perfect the claim. [MPEP 216]

When an examiner finds an intervening reference (a reference with an effective date between the foreign filing date and the U.S. filing date) and a foreign priority claim is present, the examiner follows these steps:

1. If the certified copy of the priority papers has not been filed, the examiner rejects the claims that may be unpatentable over the reference without considering the priority date.
2. The applicant may then argue the rejection or present the foreign papers to overcome the date of the reference.
3. If the applicant argues the rejection, the examiner may, in the next action:
   • Specifically require the foreign papers to be filed while repeating the rejection if still applicable, or
   • Simply continue the rejection

The MPEP states: “If at the time of making an action the examiner has found such an intervening reference, the examiner simply rejects whatever claims may be considered unpatentable thereover, without paying any attention to the priority date (assuming the certified copy of the priority papers has not yet been filed).” (MPEP 216)

A claim for foreign priority can be perfected after a patent has been issued through two main methods:

1. Certificate of Correction under 35 U.S.C. 255 and 37 CFR 1.323
2. Reissue application

The choice of method depends on the specific circumstances:

• A Certificate of Correction can be used if the requirements of 37 CFR 1.55 are met and no further examination is required.
• A reissue application is necessary if the requirements of 35 U.S.C. 119(a)-(d) or (f) were not satisfied in the patented application or its parent prior to issuance, or if further examination would be required.

The MPEP states: “The failure to perfect a claim to foreign priority prior to issuance of the patent may be cured via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, provided the requirements of 37 CFR 1.55 are met, or by filing a reissue application.” (MPEP 216.01)

Yes, the foreign application may have been filed by and in the name of the assignee or legal representative or agent of the inventor, as applicant.

If the certified copy of the foreign application corresponds with the one identified in the U.S. application and no discrepancies appear, it may be assumed the U.S. application is entitled to claim priority to the foreign application.

If the U.S. application and the certified copy do not name the same inventor or have at least one joint inventor in common, the priority date should be refused until the inconsistency is resolved. [MPEP 216]

Yes, a nonprovisional application can be entitled to different foreign filing dates for different claims. This can occur in two scenarios:

1. The application may be found entitled to the filing date of a foreign application for some claims but not for others.
2. An applicant may rely on two or more different foreign applications and may be entitled to the filing date of one application for certain claims and to another for other claims.

The MPEP states: “A nonprovisional application may be found entitled to the filing date of the foreign application with respect to some claims and not with respect to others. In addition, an applicant may rely on two or more different foreign applications and may be entitled to the filing date of one of them with respect to certain claims and to another with respect to other claims.” (MPEP 216)

A Certificate of Correction is appropriate for perfecting a foreign priority claim in the following situations:

1. When the priority claim was timely filed in the application but was not included on the patent because the requirement for a certified copy was not satisfied. In this case, a grantable petition under 37 CFR 1.55(f) or 37 CFR 1.55(g) for design applications is also required.
2. When a priority claim under 37 CFR 1.55 was not timely made, but the correction sought would not require further examination.

The MPEP states: “Effective May 13, 2015, 37 CFR 1.55(g) provides that the claim for priority and the certified copy of the foreign application must be filed within the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. 37 CFR 1.55(g) eliminates the need in many instances to file a reissue application in order to perfect a claim for foreign priority.” (MPEP 216.01)

If the applicant files the certified copy of the foreign application to overcome the effective date of a reference, a translation is required if the copy is not in English.

The examiner should require the translation when requesting the certified copy. The translation must be a complete translation of the certified copy, and must be accompanied by a statement that the translation is accurate. [MPEP 216]

An examiner considers the merits of a foreign priority claim in the following situations:

• When a reference is found with an effective date between the foreign filing date and the U.S. filing date
• When determining if a reference’s prior art date falls within the grace period for the application under examination
• When an interference situation is under consideration

The MPEP states: “The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons. For example, the examiner considers the merits of an applicant’s claim of priority when a reference is found with an effective date between the date of the foreign filing and the date of filing in the United States, when determining whether a reference’s prior art date is within the grace period for the application under examination, and when an interference situation is under consideration.” (MPEP 216)

When filing a reissue application to correct a priority claim, it’s crucial to adhere to the time limits set by law. The MPEP specifies:

‘The reissue application must be filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f).’

This means that the reissue application must typically be filed within 12 months from the filing date of the foreign application. However, there may be exceptions or additional considerations depending on specific circumstances. It’s advisable to consult with a patent attorney or the USPTO directly for guidance on your particular situation.

The time limit for filing a delayed claim for foreign priority after patent issuance is specified in 37 CFR 1.55(g). According to MPEP 216.01:

‘The time period set in 37 CFR 1.55(g) for filing a claim for priority and the certified copy required under 37 CFR 1.55(f) is the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.’

However, for patents that have already been issued, the claim must be filed within the period set forth in 37 CFR 1.55(g). This typically means that the claim should be filed as soon as possible after realizing the oversight, as any delay beyond the statutory period would require explanation and potentially affect the grant of the petition.

The filing date of foreign applications is significant in priority claims for the following reasons:

1. It establishes the effective date of the priority claim.
2. The date accorded is the date on which the specification and drawing were filed, not necessarily the date of the petition (which is called the application in some countries).
3. This date is used to determine the applicability of prior art and the eligibility for certain patent term adjustments.

The MPEP states: “In some instances, the specification and drawing of the foreign application may have been filed at a date subsequent to the filing of the petition in the foreign country. Even though the petition is called the application and the filing date of this petition is the filing date of the application in a particular country, the date accorded here is the date on which the specification and drawing were filed.” (MPEP 216)

37 CFR 1.55(h) provides an important provision for satisfying the requirement for a certified copy of a foreign application. Key points include:

• It allows the certified copy requirement to be met through a prior-filed nonprovisional application.
• The prior-filed application must be one for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c).
• The prior-filed application must contain the certified copy and be identified as such.
• This provision can simplify the process of perfecting priority claims in related applications.

The MPEP states: 37 CFR 1.55(h) provides that the requirement for a certified copy of the foreign application will be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and the prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.

This provision can be particularly useful when requesting a certificate of correction to perfect a priority claim in a patent that claims benefit from an earlier application containing the certified copy.

What is the relationship between priority claims and the effective filing date?

The relationship between priority claims and the effective filing date is crucial in determining the patentability of an invention. According to MPEP 216:

“The effective filing date of a claimed invention is determined on a claim-by-claim basis and not an application-by-application basis.”

This means that each claim in a patent application may have a different effective filing date, depending on its content and the priority claims it can support. The effective filing date is important because it determines which prior art can be used against the claim during examination and potential litigation.

• If a claim is fully supported by an earlier application, its effective filing date may be the filing date of that earlier application.
• If a claim contains new matter not disclosed in any earlier application, its effective filing date will be the actual filing date of the current application.

Understanding this relationship is crucial for inventors and patent practitioners to properly claim priority and protect their inventions.

For more information on effective filing date, visit: effective filing date.

When a claim to priority and certified copy of a foreign application are received during the pendency of a patent application, the examiner generally follows these steps:

• Checks for obvious formal defects in the documents
• Verifies that the documents correspond to the application identified in the application data sheet
• For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, ensures the claim for foreign priority is timely

The examiner does not typically examine the subject matter to determine if the applicant is entitled to the benefit of the foreign filing date unless it’s necessary for patentability reasons. As stated in the MPEP, The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons.

For more information on application data sheet, visit: application data sheet.

For more information on certified copy, visit: certified copy.

For more information on foreign priority, visit: foreign priority.

For more information on patent examination, visit: patent examination.

The most important aspect of an examiner’s action regarding a right of priority is determining the identity of invention between the U.S. and foreign applications. This involves:

• Considering the foreign application as if it had been filed in the U.S. on the same date it was filed in the foreign country
• Examining the foreign application for sufficiency of disclosure under 35 U.S.C. 112
• Determining if there is a basis for the claims sought

The MPEP states: “The most important aspect of the examiner’s action pertaining to a right of priority is the determination of the identity of invention between the U.S. and the foreign applications. The foreign application may be considered in the same manner as if it had been filed in this country on the same date that it was filed in the foreign country, and the applicant is ordinarily entitled to any claims based on such foreign application that applicant would be entitled to under U.S. laws and practice.” (MPEP 216)

The terms ‘right of priority’ and ‘benefit of an earlier filing date’ refer to different concepts in US patent law:

• Right of priority: This term is used in the context of foreign priority under 35 U.S.C. 119(a)-(d) and 365(a) and (b). It allows a US application to claim the priority date of a foreign application filed within the previous 12 months.
• Benefit of an earlier filing date: This term is used for domestic benefit under 35 U.S.C. 119(e) and 120. It allows a US application to claim the filing date of an earlier US provisional or nonprovisional application.

As stated in MPEP 216: ‘The right of priority is a statutory right, which is not considered an application property right.’

For more information on domestic benefit, visit: domestic benefit.

For more information on foreign priority, visit: foreign priority.

For more information on right of priority, visit: right of priority.

The ‘In re Van Esdonk’ case (187 USPQ 671, Comm’r Pat. 1975) is an important precedent in patent law regarding the perfection of foreign priority claims. Key points about this case include:

• It involved a situation where a claim to foreign priority benefits had not been filed in the application prior to patent issuance.
• The application was a continuation of an earlier application that had satisfied the requirements of 35 U.S.C. 119(a)-(d) or (f).
• The Commissioner held that perfecting a priority claim in the parent application satisfies the statute for the continuation application.

The MPEP states: In re Van Esdonk, a claim to foreign priority benefits had not been filed in the application prior to issuance of the patent. However, the application was a continuation of an earlier application in which the requirements of 35 U.S.C. 119(a)-(d) or (f) had been satisfied. Accordingly, the Commissioner held that the ‘applicants’ perfection of a priority claim under 35 U.S.C. 119 in the parent application will satisfy the statute with respect to their continuation application.’

This case is significant because it allows for the perfection of foreign priority claims in continuation applications based on the parent application’s compliance, even after patent issuance.

When submitting an English language translation of a non-English language foreign priority application, the following requirements must be met:

• The translation must be of the certified copy of the foreign application as filed
• The translation must be submitted together with a statement that the translation of the certified copy is accurate

As stated in the MPEP: When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate.

For more information on certified copy, visit: certified copy.

For more information on foreign priority, visit: foreign priority.

When submitting a certified copy of a foreign application for priority purposes, the following requirements apply:

• If the certified copy is not in English, a translation is required
• The translation must be of the certified copy of the foreign application as filed
• The translation must be filed together with a statement that the translation of the certified copy is accurate

The MPEP states: “When the examiner requires the filing of the certified copy, the translation should also be required at the same time. If an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) and it must be filed together with a statement that the translation of the certified copy is accurate.” (MPEP 216)

When reviewing a claim to foreign priority, the examiner generally checks the following:

• That the papers contain no obvious formal defects
• That the papers correspond in number, date and country to the application identified in the application data sheet
• For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, that the claim for foreign priority is timely

The MPEP states: “When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner generally makes no examination of the papers except to see that they contain no obvious formal defects and correspond in number, date and country to the application identified in the application data sheet for an application filed on or after September 16, 2012, or oath or declaration or application data sheet for an application filed prior to September 16, 2012.” (MPEP 216)

To perfect a claim for foreign priority after patent issuance, several documents are required. According to MPEP 216.01, the following must be submitted:

• A petition to accept an unintentionally delayed claim for priority
• The required petition fee
• A certified copy of the foreign application
• An English language translation of the foreign application (if not in English)
• A statement that the translation is accurate

The MPEP states: ‘In addition to the petition to accept an unintentionally delayed claim for priority and the required petition fee, the claim for priority must be made in an application data sheet (if the patent issued from a utility or plant application filed on or after September 16, 2012) or in a request for a certificate of correction, and a certified copy of the foreign application must be submitted.’

It’s important to note that the requirements may vary slightly depending on the specific circumstances of the application and patent. Consulting with a patent attorney or agent is advisable for ensuring all necessary documents are properly prepared and submitted.

What are the time limits for perfecting a foreign priority claim in a patent?

The time limits for perfecting a foreign priority claim in a patent are as follows:

• The priority claim must be made within 16 months from the filing date of the prior foreign application or 4 months from the actual filing date of the U.S. application, whichever is later.
• A certified copy of the foreign application must be filed within the same time period, unless previously submitted in a parent application.

According to MPEP 216.01: “The patent owner’s failure to make a timely priority claim and file the certified copy prior to issuance of the patent cannot be cured by filing a reissue application.” This emphasizes the importance of meeting these deadlines during the initial patent application process.

To file a delayed priority claim, you must submit a petition to accept an unintentionally delayed claim for priority. According to 37 CFR 1.55(e), the petition must include:

1. The priority claim in an application data sheet
2. A certified copy of the foreign application (unless exceptions apply)
3. The petition fee
4. A statement that the entire delay was unintentional

The MPEP states: A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) must be accompanied by: (1) The priority claim […]; (2) A certified copy of the foreign application […]; (3) The petition fee […]; and (4) A statement that the entire delay […] was unintentional.

What are the requirements for claiming domestic benefit in a patent application?

Claiming domestic benefit in a patent application allows an applicant to rely on the filing date of an earlier-filed US application. The MPEP 216 outlines the requirements for claiming domestic benefit, which are based on 35 U.S.C. 120. The key requirements include:

• The later-filed application must be filed before the patenting or abandonment of the prior application
• The later-filed application must contain or be amended to contain a specific reference to the prior application
• The prior application must disclose the invention claimed in the later-filed application in the manner required by 35 U.S.C. 112(a)
• At least one inventor named in the later-filed application must have been named as an inventor in the prior application

The MPEP states:

‘To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application.’

It’s important to note that these requirements must be met for each application in the chain of priority, ensuring a continuous line of co-pendency and proper disclosure.

For more information on continuation application, visit: continuation application.

For more information on domestic benefit, visit: domestic benefit.

The requirements for accepting an unintentionally delayed claim for foreign priority include:

1. Filing a petition to accept a delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b).
2. Submitting the priority claim in an application data sheet identifying the foreign application.
3. Providing a certified copy of the foreign application, unless previously submitted or an exception applies.
4. Paying the petition fee as set forth in 37 CFR 1.17(m).
5. Submitting a statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The MPEP cites 37 CFR 1.55(e), which states: “A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) must be accompanied by: (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted; (2) A certified copy of the foreign application, unless previously submitted or an exception in paragraph (h), (i), or (j) of this section applies; (3) The petition fee as set forth in § 1.17(m); and (4) A statement that the entire delay between the date the priority claim was due under this section and the date the priority claim was filed was unintentional.” (37 CFR 1.55(e))

The USPTO handles United Kingdom provisional specifications in priority claims as follows:

• A certified copy of the “provisional specification” may be submitted, sometimes accompanied by a copy of the “complete specification.”
• The provisional specification is examined for completeness of disclosure, as it may not contain a complete disclosure in the sense of 35 U.S.C. 112.
• If the UK provisional specification is found insufficient for lack of disclosure, reliance may then be placed on the complete specification and its date, treating it as a different application than the provisional specification.

The MPEP states: “In applications filed from the United Kingdom there may be submitted a certified copy of the ‘provisional specification,’ which may also in some cases be accompanied by a copy of the ‘complete specification.’ According to United Kingdom law the provisional specification need not contain a complete disclosure of the invention in the sense of 35 U.S.C. 112, but need only describe the general nature of the invention, and neither claims nor drawings are required.” (MPEP 216)

The examiner generally does not examine the certified copy of the foreign priority application except to see that it contains no obvious formal defects and corresponds to the U.S. application. The examiner will consider the merits of the priority claim if:

• An intervening reference is found with an effective date between the foreign filing date and U.S. filing date
• Determining if a reference is prior art under the grace period
• An interference situation is under consideration

If the examiner finds the applicant is not entitled to the priority date, a rejection is made and the applicant must then perfect the claim. [MPEP 216]

How does the Paris Convention affect priority claims in US patent applications?

The Paris Convention plays a crucial role in international priority claims for US patent applications. According to MPEP 216:

‘The right of priority is based on the Paris Convention for the Protection of Industrial Property, which is adhered to by the United States.’

The Paris Convention affects US patent applications in the following ways:

• It allows applicants to claim priority from foreign applications filed in member countries
• It establishes a 12-month priority period for utility patents and a 6-month period for design patents
• It ensures that filing an application in one member country does not invalidate the novelty of the invention in other member countries

The implementation of the Paris Convention in US law is found in 35 U.S.C. 119(a)-(d), which outlines the requirements for claiming foreign priority.

For more information on foreign priority, visit: foreign priority.

For more information on international patent applications, visit: international patent applications.

For more information on Paris Convention, visit: Paris Convention.

The assignment of a priority right can significantly impact patent applications. According to MPEP 216:

‘The right of priority is a personal right of the applicant or his successor in title. It may be transferred to the extent and subject to the conditions provided for in the statutes.’

Key points about the assignment of priority rights:

• Priority rights can be transferred separately from the application itself.
• The assignment must be executed before filing the later application claiming priority.
• An assignment of the entire right, title, and interest in an application includes the right of priority.
• Partial assignments of priority rights are possible but must be clearly documented.

Proper assignment of priority rights is crucial for maintaining the earlier effective filing date, which can be critical for patentability and avoiding prior art rejections.

For more information on effective filing date, visit: effective filing date.

The America Invents Act’s (AIA) first-inventor-to-file (FITF) provision has significant implications for perfecting foreign priority claims, especially in cases where the foreign application has a pre-March 16, 2013 filing date. Key points include:

• If a patent was examined under FITF provisions, but the foreign priority application has a pre-AIA filing date, perfecting the priority claim may require further examination.
• In such cases, a certificate of correction is not sufficient, and a reissue application is necessary.
• This situation arises because changing the effective filing date could potentially subject the patent to a different statutory framework.

The MPEP states: In situations where further examination would be required, the petition should not be granted. For example, further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA.

This requirement ensures that patents are not inadvertently subjected to different legal standards without proper examination.

How does the AIA affect priority claims for applications filed on or after March 16, 2013?

The America Invents Act (AIA) significantly changed the U.S. patent system, particularly affecting priority claims for applications filed on or after March 16, 2013. According to MPEP 216:

“AIA 35 U.S.C. 100(i)(1)(B) provides that the effective filing date for a claimed invention in a patent or application for patent (other than a reissue application or reissued patent) is the filing date of the earliest application for which the patent or application is entitled to claim a right of foreign priority or domestic benefit.”

This change means that:

• The effective filing date can now include foreign priority dates, not just domestic benefit dates.
• The first-to-file system replaced the first-to-invent system for determining priority.
• Prior art is now determined based on the effective filing date, including foreign priority dates.

These changes have significant implications for inventors and patent practitioners in terms of strategy for filing applications and claiming priority, especially in a global context.

For more information on America Invents Act, visit: America Invents Act.

For more information on effective filing date, visit: effective filing date.

For more information on foreign priority, visit: foreign priority.

When an examiner finds an intervening reference (a reference with an effective date between the foreign filing date and the U.S. filing date) and a foreign priority claim is present, the examiner follows these steps:

1. If the certified copy of the priority papers has not been filed, the examiner rejects the claims that may be unpatentable over the reference without considering the priority date.
2. The applicant may then argue the rejection or present the foreign papers to overcome the date of the reference.
3. If the applicant argues the rejection, the examiner may, in the next action:
   • Specifically require the foreign papers to be filed while repeating the rejection if still applicable, or
   • Simply continue the rejection

The MPEP states: “If at the time of making an action the examiner has found such an intervening reference, the examiner simply rejects whatever claims may be considered unpatentable thereover, without paying any attention to the priority date (assuming the certified copy of the priority papers has not yet been filed).” (MPEP 216)

A certificate of correction can be used to perfect a foreign priority claim in the following scenarios:

1. When the priority claim was timely filed but not included on the patent due to failure to submit a certified copy.
2. When the priority claim was not timely made, but the correction would not require further examination.

To use a certificate of correction, you must:

• File a request for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
• Include a grantable petition under 37 CFR 1.55(e), (f), or (g) as appropriate.
• Pay the required fee and provide a showing of good and sufficient cause for the delay, if applicable.

The MPEP states: Where the priority claim required under 37 CFR 1.55 was timely filed in the application but was not included on the patent because the requirement under 37 CFR 1.55 for a certified copy was not satisfied, the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a grantable petition under 37 CFR 1.55(f) or, in the case of a design application, a grantable petition under 37 CFR 1.55(g).

How can I request a corrected patent with a perfected foreign priority claim?

To request a corrected patent with a perfected foreign priority claim after issuance, you need to follow these steps:

• File a reissue application under 35 U.S.C. 251.
• Include a petition for an expedited examination of the reissue application.
• Pay the required fees for both the reissue application and the petition.
• Submit the necessary documents to perfect the priority claim, such as a certified copy of the foreign application.

As stated in MPEP 216.01: “A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent.” It’s important to note that this process is only available for perfecting priority claims that were timely filed during the pendency of the application.

To correct the priority claim in an issued patent, you can file a reissue application under 35 U.S.C. 251. The MPEP states:

‘A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) or 35 U.S.C. 120 in the issued patent.’

This process allows you to amend the specification to include the required reference or correct the priority claim itself. However, it’s important to note that the reissue application must be filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f).

A claim for foreign priority can be perfected after a patent has been issued through two main methods:

1. Certificate of Correction under 35 U.S.C. 255 and 37 CFR 1.323
2. Reissue application

The choice of method depends on the specific circumstances:

• A Certificate of Correction can be used if the requirements of 37 CFR 1.55 are met and no further examination is required.
• A reissue application is necessary if the requirements of 35 U.S.C. 119(a)-(d) or (f) were not satisfied in the patented application or its parent prior to issuance, or if further examination would be required.

The MPEP states: “The failure to perfect a claim to foreign priority prior to issuance of the patent may be cured via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, provided the requirements of 37 CFR 1.55 are met, or by filing a reissue application.” (MPEP 216.01)

Yes, the foreign application may have been filed by and in the name of the assignee or legal representative or agent of the inventor, as applicant.

If the certified copy of the foreign application corresponds with the one identified in the U.S. application and no discrepancies appear, it may be assumed the U.S. application is entitled to claim priority to the foreign application.

If the U.S. application and the certified copy do not name the same inventor or have at least one joint inventor in common, the priority date should be refused until the inconsistency is resolved. [MPEP 216]

Can I perfect a foreign priority claim after my patent has been issued?

No, you cannot perfect a foreign priority claim after your patent has been issued if the claim was not timely filed during the pendency of the application. As stated in MPEP 216.01:

“A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent. However, a reissue application cannot be used to perfect a claim for priority benefit under 35 U.S.C. 119(a)-(d) or (f) where the claim for priority benefit was not timely filed during the pendency of the application that issued as the patent for which reissue is sought.”

This means that if you missed the deadline to file the priority claim or the required certified copy of the foreign application during the original patent application process, you cannot use a reissue application to retroactively perfect the claim after the patent has been issued.

Yes, it is possible to claim priority to a foreign application after your U.S. patent has been issued. According to MPEP 216.01, a claim for priority under 35 U.S.C. 119(a)-(d) or (f) can be made after the patent is granted, subject to certain conditions:

• The claim must be made within the time period set forth in 37 CFR 1.55(g).
• A petition to accept an unintentionally delayed claim for priority must be filed.
• The required fee must be paid.
• A certified copy of the foreign application must be submitted.

The MPEP states: ‘A claim for priority under 35 U.S.C. 119(a)-(d) or (f) for the benefit of a prior foreign application may be made after the patent issues if the claim is accompanied by a grantable petition to accept an unintentionally delayed claim for priority.’

Yes, it is possible to add a priority claim to a patent after it has been issued, but the process requires filing a reissue application. The MPEP states:

‘A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) or 35 U.S.C. 120 in the issued patent.’

To add a priority claim, you would need to:

• File a reissue application under 35 U.S.C. 251
• Amend the specification to include the required reference
• Ensure the reissue application is filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f)

It’s important to note that adding a priority claim may affect the patent’s term and could potentially impact its validity if prior art emerges between the new priority date and the original filing date.

Yes, a US patent application can claim both foreign priority and domestic benefit simultaneously. This is known as a ‘multiple priority claim’ or ‘multiple benefit claim.’ The MPEP 216 states:

‘It is possible for a U.S. application to be entitled to the benefit of an earlier U.S. filing date and also to the right of priority of a foreign application.’

Here’s how it works:

• The application can claim foreign priority under 35 U.S.C. 119(a)-(d) to a foreign application filed within the past 12 months.
• At the same time, it can claim domestic benefit under 35 U.S.C. 120 to an earlier US application.
• The earlier US application can also claim foreign priority to the same foreign application.

This allows the US application to potentially have an effective filing date that is earlier than both its actual filing date and the filing date of the US application it claims benefit from.

For more information on domestic benefit, visit: domestic benefit.

For more information on foreign priority, visit: foreign priority.

Yes, a nonprovisional application can be entitled to different foreign filing dates for different claims. This can occur in two scenarios:

1. The application may be found entitled to the filing date of a foreign application for some claims but not for others.
2. An applicant may rely on two or more different foreign applications and may be entitled to the filing date of one application for certain claims and to another for other claims.

The MPEP states: “A nonprovisional application may be found entitled to the filing date of the foreign application with respect to some claims and not with respect to others. In addition, an applicant may rely on two or more different foreign applications and may be entitled to the filing date of one of them with respect to certain claims and to another with respect to other claims.” (MPEP 216)

A Certificate of Correction is appropriate for perfecting a foreign priority claim in the following situations:

1. When the priority claim was timely filed in the application but was not included on the patent because the requirement for a certified copy was not satisfied. In this case, a grantable petition under 37 CFR 1.55(f) or 37 CFR 1.55(g) for design applications is also required.
2. When a priority claim under 37 CFR 1.55 was not timely made, but the correction sought would not require further examination.

The MPEP states: “Effective May 13, 2015, 37 CFR 1.55(g) provides that the claim for priority and the certified copy of the foreign application must be filed within the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. 37 CFR 1.55(g) eliminates the need in many instances to file a reissue application in order to perfect a claim for foreign priority.” (MPEP 216.01)

If the applicant files the certified copy of the foreign application to overcome the effective date of a reference, a translation is required if the copy is not in English.

The examiner should require the translation when requesting the certified copy. The translation must be a complete translation of the certified copy, and must be accompanied by a statement that the translation is accurate. [MPEP 216]

An examiner considers the merits of a foreign priority claim in the following situations:

• When a reference is found with an effective date between the foreign filing date and the U.S. filing date
• When determining if a reference’s prior art date falls within the grace period for the application under examination
• When an interference situation is under consideration

The MPEP states: “The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons. For example, the examiner considers the merits of an applicant’s claim of priority when a reference is found with an effective date between the date of the foreign filing and the date of filing in the United States, when determining whether a reference’s prior art date is within the grace period for the application under examination, and when an interference situation is under consideration.” (MPEP 216)

When filing a reissue application to correct a priority claim, it’s crucial to adhere to the time limits set by law. The MPEP specifies:

‘The reissue application must be filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f).’

This means that the reissue application must typically be filed within 12 months from the filing date of the foreign application. However, there may be exceptions or additional considerations depending on specific circumstances. It’s advisable to consult with a patent attorney or the USPTO directly for guidance on your particular situation.

The time limit for filing a delayed claim for foreign priority after patent issuance is specified in 37 CFR 1.55(g). According to MPEP 216.01:

‘The time period set in 37 CFR 1.55(g) for filing a claim for priority and the certified copy required under 37 CFR 1.55(f) is the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.’

However, for patents that have already been issued, the claim must be filed within the period set forth in 37 CFR 1.55(g). This typically means that the claim should be filed as soon as possible after realizing the oversight, as any delay beyond the statutory period would require explanation and potentially affect the grant of the petition.

The filing date of foreign applications is significant in priority claims for the following reasons:

1. It establishes the effective date of the priority claim.
2. The date accorded is the date on which the specification and drawing were filed, not necessarily the date of the petition (which is called the application in some countries).
3. This date is used to determine the applicability of prior art and the eligibility for certain patent term adjustments.

The MPEP states: “In some instances, the specification and drawing of the foreign application may have been filed at a date subsequent to the filing of the petition in the foreign country. Even though the petition is called the application and the filing date of this petition is the filing date of the application in a particular country, the date accorded here is the date on which the specification and drawing were filed.” (MPEP 216)

37 CFR 1.55(h) provides an important provision for satisfying the requirement for a certified copy of a foreign application. Key points include:

• It allows the certified copy requirement to be met through a prior-filed nonprovisional application.
• The prior-filed application must be one for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c).
• The prior-filed application must contain the certified copy and be identified as such.
• This provision can simplify the process of perfecting priority claims in related applications.

The MPEP states: 37 CFR 1.55(h) provides that the requirement for a certified copy of the foreign application will be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and the prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.

This provision can be particularly useful when requesting a certificate of correction to perfect a priority claim in a patent that claims benefit from an earlier application containing the certified copy.

What is the relationship between priority claims and the effective filing date?

The relationship between priority claims and the effective filing date is crucial in determining the patentability of an invention. According to MPEP 216:

“The effective filing date of a claimed invention is determined on a claim-by-claim basis and not an application-by-application basis.”

This means that each claim in a patent application may have a different effective filing date, depending on its content and the priority claims it can support. The effective filing date is important because it determines which prior art can be used against the claim during examination and potential litigation.

• If a claim is fully supported by an earlier application, its effective filing date may be the filing date of that earlier application.
• If a claim contains new matter not disclosed in any earlier application, its effective filing date will be the actual filing date of the current application.

Understanding this relationship is crucial for inventors and patent practitioners to properly claim priority and protect their inventions.

For more information on effective filing date, visit: effective filing date.

When a claim to priority and certified copy of a foreign application are received during the pendency of a patent application, the examiner generally follows these steps:

• Checks for obvious formal defects in the documents
• Verifies that the documents correspond to the application identified in the application data sheet
• For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, ensures the claim for foreign priority is timely

The examiner does not typically examine the subject matter to determine if the applicant is entitled to the benefit of the foreign filing date unless it’s necessary for patentability reasons. As stated in the MPEP, The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons.

For more information on application data sheet, visit: application data sheet.

For more information on certified copy, visit: certified copy.

For more information on foreign priority, visit: foreign priority.

For more information on patent examination, visit: patent examination.

The most important aspect of an examiner’s action regarding a right of priority is determining the identity of invention between the U.S. and foreign applications. This involves:

• Considering the foreign application as if it had been filed in the U.S. on the same date it was filed in the foreign country
• Examining the foreign application for sufficiency of disclosure under 35 U.S.C. 112
• Determining if there is a basis for the claims sought

The MPEP states: “The most important aspect of the examiner’s action pertaining to a right of priority is the determination of the identity of invention between the U.S. and the foreign applications. The foreign application may be considered in the same manner as if it had been filed in this country on the same date that it was filed in the foreign country, and the applicant is ordinarily entitled to any claims based on such foreign application that applicant would be entitled to under U.S. laws and practice.” (MPEP 216)

The terms ‘right of priority’ and ‘benefit of an earlier filing date’ refer to different concepts in US patent law:

• Right of priority: This term is used in the context of foreign priority under 35 U.S.C. 119(a)-(d) and 365(a) and (b). It allows a US application to claim the priority date of a foreign application filed within the previous 12 months.
• Benefit of an earlier filing date: This term is used for domestic benefit under 35 U.S.C. 119(e) and 120. It allows a US application to claim the filing date of an earlier US provisional or nonprovisional application.

As stated in MPEP 216: ‘The right of priority is a statutory right, which is not considered an application property right.’

For more information on domestic benefit, visit: domestic benefit.

For more information on foreign priority, visit: foreign priority.

For more information on right of priority, visit: right of priority.

The ‘In re Van Esdonk’ case (187 USPQ 671, Comm’r Pat. 1975) is an important precedent in patent law regarding the perfection of foreign priority claims. Key points about this case include:

• It involved a situation where a claim to foreign priority benefits had not been filed in the application prior to patent issuance.
• The application was a continuation of an earlier application that had satisfied the requirements of 35 U.S.C. 119(a)-(d) or (f).
• The Commissioner held that perfecting a priority claim in the parent application satisfies the statute for the continuation application.

The MPEP states: In re Van Esdonk, a claim to foreign priority benefits had not been filed in the application prior to issuance of the patent. However, the application was a continuation of an earlier application in which the requirements of 35 U.S.C. 119(a)-(d) or (f) had been satisfied. Accordingly, the Commissioner held that the ‘applicants’ perfection of a priority claim under 35 U.S.C. 119 in the parent application will satisfy the statute with respect to their continuation application.’

This case is significant because it allows for the perfection of foreign priority claims in continuation applications based on the parent application’s compliance, even after patent issuance.

When submitting an English language translation of a non-English language foreign priority application, the following requirements must be met:

• The translation must be of the certified copy of the foreign application as filed
• The translation must be submitted together with a statement that the translation of the certified copy is accurate

As stated in the MPEP: When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate.

For more information on certified copy, visit: certified copy.

For more information on foreign priority, visit: foreign priority.

When submitting a certified copy of a foreign application for priority purposes, the following requirements apply:

• If the certified copy is not in English, a translation is required
• The translation must be of the certified copy of the foreign application as filed
• The translation must be filed together with a statement that the translation of the certified copy is accurate

The MPEP states: “When the examiner requires the filing of the certified copy, the translation should also be required at the same time. If an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) and it must be filed together with a statement that the translation of the certified copy is accurate.” (MPEP 216)

When reviewing a claim to foreign priority, the examiner generally checks the following:

• That the papers contain no obvious formal defects
• That the papers correspond in number, date and country to the application identified in the application data sheet
• For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, that the claim for foreign priority is timely

The MPEP states: “When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner generally makes no examination of the papers except to see that they contain no obvious formal defects and correspond in number, date and country to the application identified in the application data sheet for an application filed on or after September 16, 2012, or oath or declaration or application data sheet for an application filed prior to September 16, 2012.” (MPEP 216)

To perfect a claim for foreign priority after patent issuance, several documents are required. According to MPEP 216.01, the following must be submitted:

• A petition to accept an unintentionally delayed claim for priority
• The required petition fee
• A certified copy of the foreign application
• An English language translation of the foreign application (if not in English)
• A statement that the translation is accurate

The MPEP states: ‘In addition to the petition to accept an unintentionally delayed claim for priority and the required petition fee, the claim for priority must be made in an application data sheet (if the patent issued from a utility or plant application filed on or after September 16, 2012) or in a request for a certificate of correction, and a certified copy of the foreign application must be submitted.’

It’s important to note that the requirements may vary slightly depending on the specific circumstances of the application and patent. Consulting with a patent attorney or agent is advisable for ensuring all necessary documents are properly prepared and submitted.

What are the time limits for perfecting a foreign priority claim in a patent?

The time limits for perfecting a foreign priority claim in a patent are as follows:

• The priority claim must be made within 16 months from the filing date of the prior foreign application or 4 months from the actual filing date of the U.S. application, whichever is later.
• A certified copy of the foreign application must be filed within the same time period, unless previously submitted in a parent application.

According to MPEP 216.01: “The patent owner’s failure to make a timely priority claim and file the certified copy prior to issuance of the patent cannot be cured by filing a reissue application.” This emphasizes the importance of meeting these deadlines during the initial patent application process.

To file a delayed priority claim, you must submit a petition to accept an unintentionally delayed claim for priority. According to 37 CFR 1.55(e), the petition must include:

1. The priority claim in an application data sheet
2. A certified copy of the foreign application (unless exceptions apply)
3. The petition fee
4. A statement that the entire delay was unintentional

The MPEP states: A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) must be accompanied by: (1) The priority claim […]; (2) A certified copy of the foreign application […]; (3) The petition fee […]; and (4) A statement that the entire delay […] was unintentional.

What are the requirements for claiming domestic benefit in a patent application?

Claiming domestic benefit in a patent application allows an applicant to rely on the filing date of an earlier-filed US application. The MPEP 216 outlines the requirements for claiming domestic benefit, which are based on 35 U.S.C. 120. The key requirements include:

• The later-filed application must be filed before the patenting or abandonment of the prior application
• The later-filed application must contain or be amended to contain a specific reference to the prior application
• The prior application must disclose the invention claimed in the later-filed application in the manner required by 35 U.S.C. 112(a)
• At least one inventor named in the later-filed application must have been named as an inventor in the prior application

The MPEP states:

‘To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application.’

It’s important to note that these requirements must be met for each application in the chain of priority, ensuring a continuous line of co-pendency and proper disclosure.

For more information on continuation application, visit: continuation application.

For more information on domestic benefit, visit: domestic benefit.

The requirements for accepting an unintentionally delayed claim for foreign priority include:

1. Filing a petition to accept a delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b).
2. Submitting the priority claim in an application data sheet identifying the foreign application.
3. Providing a certified copy of the foreign application, unless previously submitted or an exception applies.
4. Paying the petition fee as set forth in 37 CFR 1.17(m).
5. Submitting a statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The MPEP cites 37 CFR 1.55(e), which states: “A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) must be accompanied by: (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted; (2) A certified copy of the foreign application, unless previously submitted or an exception in paragraph (h), (i), or (j) of this section applies; (3) The petition fee as set forth in § 1.17(m); and (4) A statement that the entire delay between the date the priority claim was due under this section and the date the priority claim was filed was unintentional.” (37 CFR 1.55(e))

The USPTO handles United Kingdom provisional specifications in priority claims as follows:

• A certified copy of the “provisional specification” may be submitted, sometimes accompanied by a copy of the “complete specification.”
• The provisional specification is examined for completeness of disclosure, as it may not contain a complete disclosure in the sense of 35 U.S.C. 112.
• If the UK provisional specification is found insufficient for lack of disclosure, reliance may then be placed on the complete specification and its date, treating it as a different application than the provisional specification.

The MPEP states: “In applications filed from the United Kingdom there may be submitted a certified copy of the ‘provisional specification,’ which may also in some cases be accompanied by a copy of the ‘complete specification.’ According to United Kingdom law the provisional specification need not contain a complete disclosure of the invention in the sense of 35 U.S.C. 112, but need only describe the general nature of the invention, and neither claims nor drawings are required.” (MPEP 216)

The examiner generally does not examine the certified copy of the foreign priority application except to see that it contains no obvious formal defects and corresponds to the U.S. application. The examiner will consider the merits of the priority claim if:

• An intervening reference is found with an effective date between the foreign filing date and U.S. filing date
• Determining if a reference is prior art under the grace period
• An interference situation is under consideration

If the examiner finds the applicant is not entitled to the priority date, a rejection is made and the applicant must then perfect the claim. [MPEP 216]

How does the Paris Convention affect priority claims in US patent applications?

The Paris Convention plays a crucial role in international priority claims for US patent applications. According to MPEP 216:

‘The right of priority is based on the Paris Convention for the Protection of Industrial Property, which is adhered to by the United States.’

The Paris Convention affects US patent applications in the following ways:

• It allows applicants to claim priority from foreign applications filed in member countries
• It establishes a 12-month priority period for utility patents and a 6-month period for design patents
• It ensures that filing an application in one member country does not invalidate the novelty of the invention in other member countries

The implementation of the Paris Convention in US law is found in 35 U.S.C. 119(a)-(d), which outlines the requirements for claiming foreign priority.

For more information on foreign priority, visit: foreign priority.

For more information on international patent applications, visit: international patent applications.

For more information on Paris Convention, visit: Paris Convention.

The assignment of a priority right can significantly impact patent applications. According to MPEP 216:

‘The right of priority is a personal right of the applicant or his successor in title. It may be transferred to the extent and subject to the conditions provided for in the statutes.’

Key points about the assignment of priority rights:

• Priority rights can be transferred separately from the application itself.
• The assignment must be executed before filing the later application claiming priority.
• An assignment of the entire right, title, and interest in an application includes the right of priority.
• Partial assignments of priority rights are possible but must be clearly documented.

Proper assignment of priority rights is crucial for maintaining the earlier effective filing date, which can be critical for patentability and avoiding prior art rejections.

For more information on effective filing date, visit: effective filing date.

The America Invents Act’s (AIA) first-inventor-to-file (FITF) provision has significant implications for perfecting foreign priority claims, especially in cases where the foreign application has a pre-March 16, 2013 filing date. Key points include:

• If a patent was examined under FITF provisions, but the foreign priority application has a pre-AIA filing date, perfecting the priority claim may require further examination.
• In such cases, a certificate of correction is not sufficient, and a reissue application is necessary.
• This situation arises because changing the effective filing date could potentially subject the patent to a different statutory framework.

The MPEP states: In situations where further examination would be required, the petition should not be granted. For example, further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA.

This requirement ensures that patents are not inadvertently subjected to different legal standards without proper examination.

How does the AIA affect priority claims for applications filed on or after March 16, 2013?

The America Invents Act (AIA) significantly changed the U.S. patent system, particularly affecting priority claims for applications filed on or after March 16, 2013. According to MPEP 216:

“AIA 35 U.S.C. 100(i)(1)(B) provides that the effective filing date for a claimed invention in a patent or application for patent (other than a reissue application or reissued patent) is the filing date of the earliest application for which the patent or application is entitled to claim a right of foreign priority or domestic benefit.”

This change means that:

• The effective filing date can now include foreign priority dates, not just domestic benefit dates.
• The first-to-file system replaced the first-to-invent system for determining priority.
• Prior art is now determined based on the effective filing date, including foreign priority dates.

These changes have significant implications for inventors and patent practitioners in terms of strategy for filing applications and claiming priority, especially in a global context.

For more information on America Invents Act, visit: America Invents Act.

For more information on effective filing date, visit: effective filing date.

For more information on foreign priority, visit: foreign priority.

When an examiner finds an intervening reference (a reference with an effective date between the foreign filing date and the U.S. filing date) and a foreign priority claim is present, the examiner follows these steps:

1. If the certified copy of the priority papers has not been filed, the examiner rejects the claims that may be unpatentable over the reference without considering the priority date.
2. The applicant may then argue the rejection or present the foreign papers to overcome the date of the reference.
3. If the applicant argues the rejection, the examiner may, in the next action:
   • Specifically require the foreign papers to be filed while repeating the rejection if still applicable, or
   • Simply continue the rejection

The MPEP states: “If at the time of making an action the examiner has found such an intervening reference, the examiner simply rejects whatever claims may be considered unpatentable thereover, without paying any attention to the priority date (assuming the certified copy of the priority papers has not yet been filed).” (MPEP 216)

A certificate of correction can be used to perfect a foreign priority claim in the following scenarios:

1. When the priority claim was timely filed but not included on the patent due to failure to submit a certified copy.
2. When the priority claim was not timely made, but the correction would not require further examination.

To use a certificate of correction, you must:

• File a request for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
• Include a grantable petition under 37 CFR 1.55(e), (f), or (g) as appropriate.
• Pay the required fee and provide a showing of good and sufficient cause for the delay, if applicable.

The MPEP states: Where the priority claim required under 37 CFR 1.55 was timely filed in the application but was not included on the patent because the requirement under 37 CFR 1.55 for a certified copy was not satisfied, the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a grantable petition under 37 CFR 1.55(f) or, in the case of a design application, a grantable petition under 37 CFR 1.55(g).

How can I request a corrected patent with a perfected foreign priority claim?

To request a corrected patent with a perfected foreign priority claim after issuance, you need to follow these steps:

• File a reissue application under 35 U.S.C. 251.
• Include a petition for an expedited examination of the reissue application.
• Pay the required fees for both the reissue application and the petition.
• Submit the necessary documents to perfect the priority claim, such as a certified copy of the foreign application.

As stated in MPEP 216.01: “A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent.” It’s important to note that this process is only available for perfecting priority claims that were timely filed during the pendency of the application.

To correct the priority claim in an issued patent, you can file a reissue application under 35 U.S.C. 251. The MPEP states:

‘A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) or 35 U.S.C. 120 in the issued patent.’

This process allows you to amend the specification to include the required reference or correct the priority claim itself. However, it’s important to note that the reissue application must be filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f).

A claim for foreign priority can be perfected after a patent has been issued through two main methods:

1. Certificate of Correction under 35 U.S.C. 255 and 37 CFR 1.323
2. Reissue application

The choice of method depends on the specific circumstances:

• A Certificate of Correction can be used if the requirements of 37 CFR 1.55 are met and no further examination is required.
• A reissue application is necessary if the requirements of 35 U.S.C. 119(a)-(d) or (f) were not satisfied in the patented application or its parent prior to issuance, or if further examination would be required.

The MPEP states: “The failure to perfect a claim to foreign priority prior to issuance of the patent may be cured via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, provided the requirements of 37 CFR 1.55 are met, or by filing a reissue application.” (MPEP 216.01)

Yes, the foreign application may have been filed by and in the name of the assignee or legal representative or agent of the inventor, as applicant.

If the certified copy of the foreign application corresponds with the one identified in the U.S. application and no discrepancies appear, it may be assumed the U.S. application is entitled to claim priority to the foreign application.

If the U.S. application and the certified copy do not name the same inventor or have at least one joint inventor in common, the priority date should be refused until the inconsistency is resolved. [MPEP 216]

Can I perfect a foreign priority claim after my patent has been issued?

No, you cannot perfect a foreign priority claim after your patent has been issued if the claim was not timely filed during the pendency of the application. As stated in MPEP 216.01:

“A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent. However, a reissue application cannot be used to perfect a claim for priority benefit under 35 U.S.C. 119(a)-(d) or (f) where the claim for priority benefit was not timely filed during the pendency of the application that issued as the patent for which reissue is sought.”

This means that if you missed the deadline to file the priority claim or the required certified copy of the foreign application during the original patent application process, you cannot use a reissue application to retroactively perfect the claim after the patent has been issued.

Yes, it is possible to claim priority to a foreign application after your U.S. patent has been issued. According to MPEP 216.01, a claim for priority under 35 U.S.C. 119(a)-(d) or (f) can be made after the patent is granted, subject to certain conditions:

• The claim must be made within the time period set forth in 37 CFR 1.55(g).
• A petition to accept an unintentionally delayed claim for priority must be filed.
• The required fee must be paid.
• A certified copy of the foreign application must be submitted.

The MPEP states: ‘A claim for priority under 35 U.S.C. 119(a)-(d) or (f) for the benefit of a prior foreign application may be made after the patent issues if the claim is accompanied by a grantable petition to accept an unintentionally delayed claim for priority.’

Yes, it is possible to add a priority claim to a patent after it has been issued, but the process requires filing a reissue application. The MPEP states:

‘A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) or 35 U.S.C. 120 in the issued patent.’

To add a priority claim, you would need to:

• File a reissue application under 35 U.S.C. 251
• Amend the specification to include the required reference
• Ensure the reissue application is filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f)

It’s important to note that adding a priority claim may affect the patent’s term and could potentially impact its validity if prior art emerges between the new priority date and the original filing date.

Yes, a US patent application can claim both foreign priority and domestic benefit simultaneously. This is known as a ‘multiple priority claim’ or ‘multiple benefit claim.’ The MPEP 216 states:

‘It is possible for a U.S. application to be entitled to the benefit of an earlier U.S. filing date and also to the right of priority of a foreign application.’

Here’s how it works:

• The application can claim foreign priority under 35 U.S.C. 119(a)-(d) to a foreign application filed within the past 12 months.
• At the same time, it can claim domestic benefit under 35 U.S.C. 120 to an earlier US application.
• The earlier US application can also claim foreign priority to the same foreign application.

This allows the US application to potentially have an effective filing date that is earlier than both its actual filing date and the filing date of the US application it claims benefit from.

For more information on domestic benefit, visit: domestic benefit.

For more information on foreign priority, visit: foreign priority.

Yes, a nonprovisional application can be entitled to different foreign filing dates for different claims. This can occur in two scenarios:

1. The application may be found entitled to the filing date of a foreign application for some claims but not for others.
2. An applicant may rely on two or more different foreign applications and may be entitled to the filing date of one application for certain claims and to another for other claims.

The MPEP states: “A nonprovisional application may be found entitled to the filing date of the foreign application with respect to some claims and not with respect to others. In addition, an applicant may rely on two or more different foreign applications and may be entitled to the filing date of one of them with respect to certain claims and to another with respect to other claims.” (MPEP 216)

A Certificate of Correction is appropriate for perfecting a foreign priority claim in the following situations:

1. When the priority claim was timely filed in the application but was not included on the patent because the requirement for a certified copy was not satisfied. In this case, a grantable petition under 37 CFR 1.55(f) or 37 CFR 1.55(g) for design applications is also required.
2. When a priority claim under 37 CFR 1.55 was not timely made, but the correction sought would not require further examination.

The MPEP states: “Effective May 13, 2015, 37 CFR 1.55(g) provides that the claim for priority and the certified copy of the foreign application must be filed within the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. 37 CFR 1.55(g) eliminates the need in many instances to file a reissue application in order to perfect a claim for foreign priority.” (MPEP 216.01)

If the applicant files the certified copy of the foreign application to overcome the effective date of a reference, a translation is required if the copy is not in English.

The examiner should require the translation when requesting the certified copy. The translation must be a complete translation of the certified copy, and must be accompanied by a statement that the translation is accurate. [MPEP 216]

An examiner considers the merits of a foreign priority claim in the following situations:

• When a reference is found with an effective date between the foreign filing date and the U.S. filing date
• When determining if a reference’s prior art date falls within the grace period for the application under examination
• When an interference situation is under consideration

The MPEP states: “The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons. For example, the examiner considers the merits of an applicant’s claim of priority when a reference is found with an effective date between the date of the foreign filing and the date of filing in the United States, when determining whether a reference’s prior art date is within the grace period for the application under examination, and when an interference situation is under consideration.” (MPEP 216)

When filing a reissue application to correct a priority claim, it’s crucial to adhere to the time limits set by law. The MPEP specifies:

‘The reissue application must be filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f).’

This means that the reissue application must typically be filed within 12 months from the filing date of the foreign application. However, there may be exceptions or additional considerations depending on specific circumstances. It’s advisable to consult with a patent attorney or the USPTO directly for guidance on your particular situation.

The time limit for filing a delayed claim for foreign priority after patent issuance is specified in 37 CFR 1.55(g). According to MPEP 216.01:

‘The time period set in 37 CFR 1.55(g) for filing a claim for priority and the certified copy required under 37 CFR 1.55(f) is the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.’

However, for patents that have already been issued, the claim must be filed within the period set forth in 37 CFR 1.55(g). This typically means that the claim should be filed as soon as possible after realizing the oversight, as any delay beyond the statutory period would require explanation and potentially affect the grant of the petition.

The filing date of foreign applications is significant in priority claims for the following reasons:

1. It establishes the effective date of the priority claim.
2. The date accorded is the date on which the specification and drawing were filed, not necessarily the date of the petition (which is called the application in some countries).
3. This date is used to determine the applicability of prior art and the eligibility for certain patent term adjustments.

The MPEP states: “In some instances, the specification and drawing of the foreign application may have been filed at a date subsequent to the filing of the petition in the foreign country. Even though the petition is called the application and the filing date of this petition is the filing date of the application in a particular country, the date accorded here is the date on which the specification and drawing were filed.” (MPEP 216)

37 CFR 1.55(h) provides an important provision for satisfying the requirement for a certified copy of a foreign application. Key points include:

• It allows the certified copy requirement to be met through a prior-filed nonprovisional application.
• The prior-filed application must be one for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c).
• The prior-filed application must contain the certified copy and be identified as such.
• This provision can simplify the process of perfecting priority claims in related applications.

The MPEP states: 37 CFR 1.55(h) provides that the requirement for a certified copy of the foreign application will be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and the prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.

This provision can be particularly useful when requesting a certificate of correction to perfect a priority claim in a patent that claims benefit from an earlier application containing the certified copy.

What is the relationship between priority claims and the effective filing date?

The relationship between priority claims and the effective filing date is crucial in determining the patentability of an invention. According to MPEP 216:

“The effective filing date of a claimed invention is determined on a claim-by-claim basis and not an application-by-application basis.”

This means that each claim in a patent application may have a different effective filing date, depending on its content and the priority claims it can support. The effective filing date is important because it determines which prior art can be used against the claim during examination and potential litigation.

• If a claim is fully supported by an earlier application, its effective filing date may be the filing date of that earlier application.
• If a claim contains new matter not disclosed in any earlier application, its effective filing date will be the actual filing date of the current application.

Understanding this relationship is crucial for inventors and patent practitioners to properly claim priority and protect their inventions.

For more information on effective filing date, visit: effective filing date.

When a claim to priority and certified copy of a foreign application are received during the pendency of a patent application, the examiner generally follows these steps:

• Checks for obvious formal defects in the documents
• Verifies that the documents correspond to the application identified in the application data sheet
• For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, ensures the claim for foreign priority is timely

The examiner does not typically examine the subject matter to determine if the applicant is entitled to the benefit of the foreign filing date unless it’s necessary for patentability reasons. As stated in the MPEP, The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons.

For more information on application data sheet, visit: application data sheet.

For more information on certified copy, visit: certified copy.

For more information on foreign priority, visit: foreign priority.

For more information on patent examination, visit: patent examination.

The most important aspect of an examiner’s action regarding a right of priority is determining the identity of invention between the U.S. and foreign applications. This involves:

• Considering the foreign application as if it had been filed in the U.S. on the same date it was filed in the foreign country
• Examining the foreign application for sufficiency of disclosure under 35 U.S.C. 112
• Determining if there is a basis for the claims sought

The MPEP states: “The most important aspect of the examiner’s action pertaining to a right of priority is the determination of the identity of invention between the U.S. and the foreign applications. The foreign application may be considered in the same manner as if it had been filed in this country on the same date that it was filed in the foreign country, and the applicant is ordinarily entitled to any claims based on such foreign application that applicant would be entitled to under U.S. laws and practice.” (MPEP 216)

The terms ‘right of priority’ and ‘benefit of an earlier filing date’ refer to different concepts in US patent law:

• Right of priority: This term is used in the context of foreign priority under 35 U.S.C. 119(a)-(d) and 365(a) and (b). It allows a US application to claim the priority date of a foreign application filed within the previous 12 months.
• Benefit of an earlier filing date: This term is used for domestic benefit under 35 U.S.C. 119(e) and 120. It allows a US application to claim the filing date of an earlier US provisional or nonprovisional application.

As stated in MPEP 216: ‘The right of priority is a statutory right, which is not considered an application property right.’

For more information on domestic benefit, visit: domestic benefit.

For more information on foreign priority, visit: foreign priority.

For more information on right of priority, visit: right of priority.

The ‘In re Van Esdonk’ case (187 USPQ 671, Comm’r Pat. 1975) is an important precedent in patent law regarding the perfection of foreign priority claims. Key points about this case include:

• It involved a situation where a claim to foreign priority benefits had not been filed in the application prior to patent issuance.
• The application was a continuation of an earlier application that had satisfied the requirements of 35 U.S.C. 119(a)-(d) or (f).
• The Commissioner held that perfecting a priority claim in the parent application satisfies the statute for the continuation application.

The MPEP states: In re Van Esdonk, a claim to foreign priority benefits had not been filed in the application prior to issuance of the patent. However, the application was a continuation of an earlier application in which the requirements of 35 U.S.C. 119(a)-(d) or (f) had been satisfied. Accordingly, the Commissioner held that the ‘applicants’ perfection of a priority claim under 35 U.S.C. 119 in the parent application will satisfy the statute with respect to their continuation application.’

This case is significant because it allows for the perfection of foreign priority claims in continuation applications based on the parent application’s compliance, even after patent issuance.

When submitting an English language translation of a non-English language foreign priority application, the following requirements must be met:

• The translation must be of the certified copy of the foreign application as filed
• The translation must be submitted together with a statement that the translation of the certified copy is accurate

As stated in the MPEP: When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate.

For more information on certified copy, visit: certified copy.

For more information on foreign priority, visit: foreign priority.

When submitting a certified copy of a foreign application for priority purposes, the following requirements apply:

• If the certified copy is not in English, a translation is required
• The translation must be of the certified copy of the foreign application as filed
• The translation must be filed together with a statement that the translation of the certified copy is accurate

The MPEP states: “When the examiner requires the filing of the certified copy, the translation should also be required at the same time. If an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) and it must be filed together with a statement that the translation of the certified copy is accurate.” (MPEP 216)

When reviewing a claim to foreign priority, the examiner generally checks the following:

• That the papers contain no obvious formal defects
• That the papers correspond in number, date and country to the application identified in the application data sheet
• For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, that the claim for foreign priority is timely

The MPEP states: “When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner generally makes no examination of the papers except to see that they contain no obvious formal defects and correspond in number, date and country to the application identified in the application data sheet for an application filed on or after September 16, 2012, or oath or declaration or application data sheet for an application filed prior to September 16, 2012.” (MPEP 216)

To perfect a claim for foreign priority after patent issuance, several documents are required. According to MPEP 216.01, the following must be submitted:

• A petition to accept an unintentionally delayed claim for priority
• The required petition fee
• A certified copy of the foreign application
• An English language translation of the foreign application (if not in English)
• A statement that the translation is accurate

The MPEP states: ‘In addition to the petition to accept an unintentionally delayed claim for priority and the required petition fee, the claim for priority must be made in an application data sheet (if the patent issued from a utility or plant application filed on or after September 16, 2012) or in a request for a certificate of correction, and a certified copy of the foreign application must be submitted.’

It’s important to note that the requirements may vary slightly depending on the specific circumstances of the application and patent. Consulting with a patent attorney or agent is advisable for ensuring all necessary documents are properly prepared and submitted.

What are the time limits for perfecting a foreign priority claim in a patent?

The time limits for perfecting a foreign priority claim in a patent are as follows:

• The priority claim must be made within 16 months from the filing date of the prior foreign application or 4 months from the actual filing date of the U.S. application, whichever is later.
• A certified copy of the foreign application must be filed within the same time period, unless previously submitted in a parent application.

According to MPEP 216.01: “The patent owner’s failure to make a timely priority claim and file the certified copy prior to issuance of the patent cannot be cured by filing a reissue application.” This emphasizes the importance of meeting these deadlines during the initial patent application process.

To file a delayed priority claim, you must submit a petition to accept an unintentionally delayed claim for priority. According to 37 CFR 1.55(e), the petition must include:

1. The priority claim in an application data sheet
2. A certified copy of the foreign application (unless exceptions apply)
3. The petition fee
4. A statement that the entire delay was unintentional

The MPEP states: A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) must be accompanied by: (1) The priority claim […]; (2) A certified copy of the foreign application […]; (3) The petition fee […]; and (4) A statement that the entire delay […] was unintentional.

What are the requirements for claiming domestic benefit in a patent application?

Claiming domestic benefit in a patent application allows an applicant to rely on the filing date of an earlier-filed US application. The MPEP 216 outlines the requirements for claiming domestic benefit, which are based on 35 U.S.C. 120. The key requirements include:

• The later-filed application must be filed before the patenting or abandonment of the prior application
• The later-filed application must contain or be amended to contain a specific reference to the prior application
• The prior application must disclose the invention claimed in the later-filed application in the manner required by 35 U.S.C. 112(a)
• At least one inventor named in the later-filed application must have been named as an inventor in the prior application

The MPEP states:

‘To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application.’

It’s important to note that these requirements must be met for each application in the chain of priority, ensuring a continuous line of co-pendency and proper disclosure.

For more information on continuation application, visit: continuation application.

For more information on domestic benefit, visit: domestic benefit.

The requirements for accepting an unintentionally delayed claim for foreign priority include:

1. Filing a petition to accept a delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b).
2. Submitting the priority claim in an application data sheet identifying the foreign application.
3. Providing a certified copy of the foreign application, unless previously submitted or an exception applies.
4. Paying the petition fee as set forth in 37 CFR 1.17(m).
5. Submitting a statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The MPEP cites 37 CFR 1.55(e), which states: “A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) must be accompanied by: (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted; (2) A certified copy of the foreign application, unless previously submitted or an exception in paragraph (h), (i), or (j) of this section applies; (3) The petition fee as set forth in § 1.17(m); and (4) A statement that the entire delay between the date the priority claim was due under this section and the date the priority claim was filed was unintentional.” (37 CFR 1.55(e))

The USPTO handles United Kingdom provisional specifications in priority claims as follows:

• A certified copy of the “provisional specification” may be submitted, sometimes accompanied by a copy of the “complete specification.”
• The provisional specification is examined for completeness of disclosure, as it may not contain a complete disclosure in the sense of 35 U.S.C. 112.
• If the UK provisional specification is found insufficient for lack of disclosure, reliance may then be placed on the complete specification and its date, treating it as a different application than the provisional specification.

The MPEP states: “In applications filed from the United Kingdom there may be submitted a certified copy of the ‘provisional specification,’ which may also in some cases be accompanied by a copy of the ‘complete specification.’ According to United Kingdom law the provisional specification need not contain a complete disclosure of the invention in the sense of 35 U.S.C. 112, but need only describe the general nature of the invention, and neither claims nor drawings are required.” (MPEP 216)

The examiner generally does not examine the certified copy of the foreign priority application except to see that it contains no obvious formal defects and corresponds to the U.S. application. The examiner will consider the merits of the priority claim if:

• An intervening reference is found with an effective date between the foreign filing date and U.S. filing date
• Determining if a reference is prior art under the grace period
• An interference situation is under consideration

If the examiner finds the applicant is not entitled to the priority date, a rejection is made and the applicant must then perfect the claim. [MPEP 216]

How does the Paris Convention affect priority claims in US patent applications?

The Paris Convention plays a crucial role in international priority claims for US patent applications. According to MPEP 216:

‘The right of priority is based on the Paris Convention for the Protection of Industrial Property, which is adhered to by the United States.’

The Paris Convention affects US patent applications in the following ways:

• It allows applicants to claim priority from foreign applications filed in member countries
• It establishes a 12-month priority period for utility patents and a 6-month period for design patents
• It ensures that filing an application in one member country does not invalidate the novelty of the invention in other member countries

The implementation of the Paris Convention in US law is found in 35 U.S.C. 119(a)-(d), which outlines the requirements for claiming foreign priority.

For more information on foreign priority, visit: foreign priority.

For more information on international patent applications, visit: international patent applications.

For more information on Paris Convention, visit: Paris Convention.

The assignment of a priority right can significantly impact patent applications. According to MPEP 216:

‘The right of priority is a personal right of the applicant or his successor in title. It may be transferred to the extent and subject to the conditions provided for in the statutes.’

Key points about the assignment of priority rights:

• Priority rights can be transferred separately from the application itself.
• The assignment must be executed before filing the later application claiming priority.
• An assignment of the entire right, title, and interest in an application includes the right of priority.
• Partial assignments of priority rights are possible but must be clearly documented.

Proper assignment of priority rights is crucial for maintaining the earlier effective filing date, which can be critical for patentability and avoiding prior art rejections.

For more information on effective filing date, visit: effective filing date.

The America Invents Act’s (AIA) first-inventor-to-file (FITF) provision has significant implications for perfecting foreign priority claims, especially in cases where the foreign application has a pre-March 16, 2013 filing date. Key points include:

• If a patent was examined under FITF provisions, but the foreign priority application has a pre-AIA filing date, perfecting the priority claim may require further examination.
• In such cases, a certificate of correction is not sufficient, and a reissue application is necessary.
• This situation arises because changing the effective filing date could potentially subject the patent to a different statutory framework.

The MPEP states: In situations where further examination would be required, the petition should not be granted. For example, further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA.

This requirement ensures that patents are not inadvertently subjected to different legal standards without proper examination.

How does the AIA affect priority claims for applications filed on or after March 16, 2013?

The America Invents Act (AIA) significantly changed the U.S. patent system, particularly affecting priority claims for applications filed on or after March 16, 2013. According to MPEP 216:

“AIA 35 U.S.C. 100(i)(1)(B) provides that the effective filing date for a claimed invention in a patent or application for patent (other than a reissue application or reissued patent) is the filing date of the earliest application for which the patent or application is entitled to claim a right of foreign priority or domestic benefit.”

This change means that:

• The effective filing date can now include foreign priority dates, not just domestic benefit dates.
• The first-to-file system replaced the first-to-invent system for determining priority.
• Prior art is now determined based on the effective filing date, including foreign priority dates.

These changes have significant implications for inventors and patent practitioners in terms of strategy for filing applications and claiming priority, especially in a global context.

For more information on America Invents Act, visit: America Invents Act.

For more information on effective filing date, visit: effective filing date.

For more information on foreign priority, visit: foreign priority.

When an examiner finds an intervening reference (a reference with an effective date between the foreign filing date and the U.S. filing date) and a foreign priority claim is present, the examiner follows these steps:

1. If the certified copy of the priority papers has not been filed, the examiner rejects the claims that may be unpatentable over the reference without considering the priority date.
2. The applicant may then argue the rejection or present the foreign papers to overcome the date of the reference.
3. If the applicant argues the rejection, the examiner may, in the next action:
   • Specifically require the foreign papers to be filed while repeating the rejection if still applicable, or
   • Simply continue the rejection

The MPEP states: “If at the time of making an action the examiner has found such an intervening reference, the examiner simply rejects whatever claims may be considered unpatentable thereover, without paying any attention to the priority date (assuming the certified copy of the priority papers has not yet been filed).” (MPEP 216)

A certificate of correction can be used to perfect a foreign priority claim in the following scenarios:

1. When the priority claim was timely filed but not included on the patent due to failure to submit a certified copy.
2. When the priority claim was not timely made, but the correction would not require further examination.

To use a certificate of correction, you must:

• File a request for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
• Include a grantable petition under 37 CFR 1.55(e), (f), or (g) as appropriate.
• Pay the required fee and provide a showing of good and sufficient cause for the delay, if applicable.

The MPEP states: Where the priority claim required under 37 CFR 1.55 was timely filed in the application but was not included on the patent because the requirement under 37 CFR 1.55 for a certified copy was not satisfied, the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a grantable petition under 37 CFR 1.55(f) or, in the case of a design application, a grantable petition under 37 CFR 1.55(g).

How can I request a corrected patent with a perfected foreign priority claim?

To request a corrected patent with a perfected foreign priority claim after issuance, you need to follow these steps:

• File a reissue application under 35 U.S.C. 251.
• Include a petition for an expedited examination of the reissue application.
• Pay the required fees for both the reissue application and the petition.
• Submit the necessary documents to perfect the priority claim, such as a certified copy of the foreign application.

As stated in MPEP 216.01: “A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent.” It’s important to note that this process is only available for perfecting priority claims that were timely filed during the pendency of the application.

To correct the priority claim in an issued patent, you can file a reissue application under 35 U.S.C. 251. The MPEP states:

‘A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) or 35 U.S.C. 120 in the issued patent.’

This process allows you to amend the specification to include the required reference or correct the priority claim itself. However, it’s important to note that the reissue application must be filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f).

A claim for foreign priority can be perfected after a patent has been issued through two main methods:

1. Certificate of Correction under 35 U.S.C. 255 and 37 CFR 1.323
2. Reissue application

The choice of method depends on the specific circumstances:

• A Certificate of Correction can be used if the requirements of 37 CFR 1.55 are met and no further examination is required.
• A reissue application is necessary if the requirements of 35 U.S.C. 119(a)-(d) or (f) were not satisfied in the patented application or its parent prior to issuance, or if further examination would be required.

The MPEP states: “The failure to perfect a claim to foreign priority prior to issuance of the patent may be cured via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, provided the requirements of 37 CFR 1.55 are met, or by filing a reissue application.” (MPEP 216.01)

Yes, the foreign application may have been filed by and in the name of the assignee or legal representative or agent of the inventor, as applicant.

If the certified copy of the foreign application corresponds with the one identified in the U.S. application and no discrepancies appear, it may be assumed the U.S. application is entitled to claim priority to the foreign application.

If the U.S. application and the certified copy do not name the same inventor or have at least one joint inventor in common, the priority date should be refused until the inconsistency is resolved. [MPEP 216]

Can I perfect a foreign priority claim after my patent has been issued?

No, you cannot perfect a foreign priority claim after your patent has been issued if the claim was not timely filed during the pendency of the application. As stated in MPEP 216.01:

“A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent. However, a reissue application cannot be used to perfect a claim for priority benefit under 35 U.S.C. 119(a)-(d) or (f) where the claim for priority benefit was not timely filed during the pendency of the application that issued as the patent for which reissue is sought.”

This means that if you missed the deadline to file the priority claim or the required certified copy of the foreign application during the original patent application process, you cannot use a reissue application to retroactively perfect the claim after the patent has been issued.

Yes, it is possible to claim priority to a foreign application after your U.S. patent has been issued. According to MPEP 216.01, a claim for priority under 35 U.S.C. 119(a)-(d) or (f) can be made after the patent is granted, subject to certain conditions:

• The claim must be made within the time period set forth in 37 CFR 1.55(g).
• A petition to accept an unintentionally delayed claim for priority must be filed.
• The required fee must be paid.
• A certified copy of the foreign application must be submitted.

The MPEP states: ‘A claim for priority under 35 U.S.C. 119(a)-(d) or (f) for the benefit of a prior foreign application may be made after the patent issues if the claim is accompanied by a grantable petition to accept an unintentionally delayed claim for priority.’

Yes, it is possible to add a priority claim to a patent after it has been issued, but the process requires filing a reissue application. The MPEP states:

‘A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) or 35 U.S.C. 120 in the issued patent.’

To add a priority claim, you would need to:

• File a reissue application under 35 U.S.C. 251
• Amend the specification to include the required reference
• Ensure the reissue application is filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f)

It’s important to note that adding a priority claim may affect the patent’s term and could potentially impact its validity if prior art emerges between the new priority date and the original filing date.

Yes, a US patent application can claim both foreign priority and domestic benefit simultaneously. This is known as a ‘multiple priority claim’ or ‘multiple benefit claim.’ The MPEP 216 states:

‘It is possible for a U.S. application to be entitled to the benefit of an earlier U.S. filing date and also to the right of priority of a foreign application.’

Here’s how it works:

• The application can claim foreign priority under 35 U.S.C. 119(a)-(d) to a foreign application filed within the past 12 months.
• At the same time, it can claim domestic benefit under 35 U.S.C. 120 to an earlier US application.
• The earlier US application can also claim foreign priority to the same foreign application.

This allows the US application to potentially have an effective filing date that is earlier than both its actual filing date and the filing date of the US application it claims benefit from.

For more information on domestic benefit, visit: domestic benefit.

For more information on foreign priority, visit: foreign priority.

Yes, a nonprovisional application can be entitled to different foreign filing dates for different claims. This can occur in two scenarios:

1. The application may be found entitled to the filing date of a foreign application for some claims but not for others.
2. An applicant may rely on two or more different foreign applications and may be entitled to the filing date of one application for certain claims and to another for other claims.

The MPEP states: “A nonprovisional application may be found entitled to the filing date of the foreign application with respect to some claims and not with respect to others. In addition, an applicant may rely on two or more different foreign applications and may be entitled to the filing date of one of them with respect to certain claims and to another with respect to other claims.” (MPEP 216)