Patent Law FAQ

The requirements for filing a foreign priority claim differ for applications filed before and after September 16, 2012. The key difference lies in where the priority claim must be presented:

• For applications filed on or after September 16, 2012: The priority claim must be presented in an Application Data Sheet (ADS). This is specified in 37 CFR 1.55(d)(1): For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, 37 CFR 1.55(d)(1) requires the claim for priority to be presented in an application data sheet.
• For applications filed before September 16, 2012: The priority claim can be presented either in an Application Data Sheet or in the oath or declaration. As stated in the MPEP: For applications filed under 35 U.S.C. 111(a) prior to September 16, 2012, unless provided in an application data sheet, the oath or declaration under 37 CFR 1.63 must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.

Regardless of the filing date, the priority claim must include the same essential information: the application number, country (or intellectual property authority), and filing date (day, month, and year) of the foreign application. The difference is primarily in the document where this information must be presented.

The USPTO treats a proper priority claim to an application filed in a participating foreign intellectual property office as a request to obtain a copy of the foreign application. The MPEP states:

The Office treats a proper priority claim under 37 CFR 1.55 to an application filed in a participating foreign intellectual property office as a request that the Office obtain a copy of the foreign application from the participating intellectual property office.

This means that applicants do not need to submit a separate request for the USPTO to retrieve the foreign application if they have made a proper priority claim and the foreign office is a PDX participant.

How does the USPTO handle certified copies for international design applications?

For international design applications, the USPTO has a specific process for handling certified copies. According to the MPEP:

‘For international design applications designating the United States, the certified copy requirement is considered to have been met by the filing of the international design application pursuant to 37 CFR 1.55(m).’

This means that if you file an international design application that designates the United States, you don’t need to separately submit a certified copy of the priority document. The filing of the international design application itself fulfills this requirement.

However, it’s important to note that this only applies to international design applications. For other types of patent applications claiming priority to a foreign application, you would still need to ensure that a certified copy is filed or retrievable through the priority document exchange program within the specified time period.

The USPTO determines if a foreign country qualifies for priority rights based on specific criteria outlined in the MPEP. According to MPEP 213.01:

The right of priority is recognized only if the foreign country in which the original application was filed is recognized at the time of filing the application in the United States.

The USPTO considers several factors:

• The country must be a member of the Paris Convention for the Protection of Industrial Property or have a bilateral agreement with the United States.
• The country must grant similar priority rights to U.S. citizens.
• The country must be recognized by the U.S. Department of State.

The USPTO maintains a list of recognized countries and regional patent offices in MPEP 213.01, which is updated periodically to reflect changes in international relations and treaty memberships.

How does the Electronic Priority Document Exchange (PDX) program work with the USPTO?

The Electronic Priority Document Exchange (PDX) program is a system that allows participating intellectual property offices to exchange priority documents electronically. According to MPEP 215.01, the USPTO participates in this program, which can simplify the process of submitting certified copies of foreign priority applications.

The MPEP states: The USPTO has agreements with the European Patent Office (EPO) and the Japan Patent Office (JPO) that enable the USPTO to obtain certified copies of foreign applications filed in those offices from their electronic records management systems.

Here’s how the PDX program works with the USPTO:

• If a foreign application was filed with a participating office (e.g., EPO or JPO), the applicant can request that office to make the certified copy of the priority document available to the USPTO.
• The applicant must submit a request to retrieve the priority document through the USPTO’s electronic filing system (EFS-Web or Patent Center).
• The USPTO will then attempt to retrieve the document electronically from the foreign office.
• If successful, this electronic retrieval satisfies the requirement to file a certified copy of the foreign priority application.

It’s important to note that the applicant is still responsible for ensuring that the certified copy is received by the USPTO within the required time frame, even when using the PDX program.

To file a foreign priority claim in a U.S. patent application, you must:

1. File the claim within the specified time limit (see previous FAQ for details).
2. Present the claim in an application data sheet (ADS) for applications filed on or after September 16, 2012. For applications filed before this date, the claim can be in the ADS or in the oath/declaration.
3. Identify the foreign application by providing:
• Application number
• Country (or intellectual property authority)
• Filing date (day, month, and year)

This is specified in 37 CFR 1.55(d)(1): The claim for priority must be presented in an application data sheet (§1.76(b)(6)) and must identify 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.

It’s crucial to provide accurate and complete information to ensure your priority claim is properly recorded and considered.

Generally, there are no additional fees charged by the USPTO for using the PDX program to exchange priority documents. The MPEP 215.01 does not mention any specific fees for this service. However, it’s important to note:

• Regular patent application fees still apply.
• If the PDX retrieval fails and you need to submit a certified copy, standard fees for document submission may apply.
• Some foreign offices might charge fees for making documents available through PDX.

Always check the most current fee schedule on the USPTO website for the most up-to-date information on patent-related fees.

Yes, there are exceptions to the standard time limits for filing foreign priority claims, particularly for design patent applications and certain applications filed before November 29, 2000. According to 37 CFR 1.55(d)(1):

The time periods in this paragraph do not apply if the later-filed application is:
(i) An application for a design patent; or
(ii) An application filed under 35 U.S.C. 111(a) before November 29, 2000.

For design patent applications, the MPEP states:

In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).

This means that for design patent applications, you can file a foreign priority claim at any time while the application is pending, without being restricted by the usual time limits.

For applications filed under 35 U.S.C. 111(a) before November 29, 2000, different rules may apply, and it’s best to consult with a patent attorney or the USPTO directly for guidance on such cases.

It’s important to note that while these exceptions exist, it’s generally advisable to file priority claims as early as possible to ensure they are properly recorded and considered.

The USPTO determines if a foreign country qualifies for priority rights based on specific criteria outlined in the MPEP. According to MPEP 213.01:

The right of priority is recognized only if the foreign country in which the original application was filed is recognized at the time of filing the application in the United States.

The USPTO considers several factors:

• The country must be a member of the Paris Convention for the Protection of Industrial Property or have a bilateral agreement with the United States.
• The country must grant similar priority rights to U.S. citizens.
• The country must be recognized by the U.S. Department of State.

The USPTO maintains a list of recognized countries and regional patent offices in MPEP 213.01, which is updated periodically to reflect changes in international relations and treaty memberships.

The requirements for filing a foreign priority claim differ for applications filed before and after September 16, 2012. The key difference lies in where the priority claim must be presented:

• For applications filed on or after September 16, 2012: The priority claim must be presented in an Application Data Sheet (ADS). This is specified in 37 CFR 1.55(d)(1): For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, 37 CFR 1.55(d)(1) requires the claim for priority to be presented in an application data sheet.
• For applications filed before September 16, 2012: The priority claim can be presented either in an Application Data Sheet or in the oath or declaration. As stated in the MPEP: For applications filed under 35 U.S.C. 111(a) prior to September 16, 2012, unless provided in an application data sheet, the oath or declaration under 37 CFR 1.63 must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.

Regardless of the filing date, the priority claim must include the same essential information: the application number, country (or intellectual property authority), and filing date (day, month, and year) of the foreign application. The difference is primarily in the document where this information must be presented.

To file a foreign priority claim in a U.S. patent application, you must:

1. File the claim within the specified time limit (see previous FAQ for details).
2. Present the claim in an application data sheet (ADS) for applications filed on or after September 16, 2012. For applications filed before this date, the claim can be in the ADS or in the oath/declaration.
3. Identify the foreign application by providing:
• Application number
• Country (or intellectual property authority)
• Filing date (day, month, and year)

This is specified in 37 CFR 1.55(d)(1): The claim for priority must be presented in an application data sheet (§1.76(b)(6)) and must identify 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.

It’s crucial to provide accurate and complete information to ensure your priority claim is properly recorded and considered.

Yes, there are exceptions to the standard time limits for filing foreign priority claims, particularly for design patent applications and certain applications filed before November 29, 2000. According to 37 CFR 1.55(d)(1):

The time periods in this paragraph do not apply if the later-filed application is:
(i) An application for a design patent; or
(ii) An application filed under 35 U.S.C. 111(a) before November 29, 2000.

For design patent applications, the MPEP states:

In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).

This means that for design patent applications, you can file a foreign priority claim at any time while the application is pending, without being restricted by the usual time limits.

For applications filed under 35 U.S.C. 111(a) before November 29, 2000, different rules may apply, and it’s best to consult with a patent attorney or the USPTO directly for guidance on such cases.

It’s important to note that while these exceptions exist, it’s generally advisable to file priority claims as early as possible to ensure they are properly recorded and considered.

The USPTO treats a proper priority claim to an application filed in a participating foreign intellectual property office as a request to obtain a copy of the foreign application. The MPEP states:

The Office treats a proper priority claim under 37 CFR 1.55 to an application filed in a participating foreign intellectual property office as a request that the Office obtain a copy of the foreign application from the participating intellectual property office.

This means that applicants do not need to submit a separate request for the USPTO to retrieve the foreign application if they have made a proper priority claim and the foreign office is a PDX participant.

How does the USPTO handle certified copies for international design applications?

For international design applications, the USPTO has a specific process for handling certified copies. According to the MPEP:

‘For international design applications designating the United States, the certified copy requirement is considered to have been met by the filing of the international design application pursuant to 37 CFR 1.55(m).’

This means that if you file an international design application that designates the United States, you don’t need to separately submit a certified copy of the priority document. The filing of the international design application itself fulfills this requirement.

However, it’s important to note that this only applies to international design applications. For other types of patent applications claiming priority to a foreign application, you would still need to ensure that a certified copy is filed or retrievable through the priority document exchange program within the specified time period.

How does the Electronic Priority Document Exchange (PDX) program work with the USPTO?

The Electronic Priority Document Exchange (PDX) program is a system that allows participating intellectual property offices to exchange priority documents electronically. According to MPEP 215.01, the USPTO participates in this program, which can simplify the process of submitting certified copies of foreign priority applications.

The MPEP states: The USPTO has agreements with the European Patent Office (EPO) and the Japan Patent Office (JPO) that enable the USPTO to obtain certified copies of foreign applications filed in those offices from their electronic records management systems.

Here’s how the PDX program works with the USPTO:

• If a foreign application was filed with a participating office (e.g., EPO or JPO), the applicant can request that office to make the certified copy of the priority document available to the USPTO.
• The applicant must submit a request to retrieve the priority document through the USPTO’s electronic filing system (EFS-Web or Patent Center).
• The USPTO will then attempt to retrieve the document electronically from the foreign office.
• If successful, this electronic retrieval satisfies the requirement to file a certified copy of the foreign priority application.

It’s important to note that the applicant is still responsible for ensuring that the certified copy is received by the USPTO within the required time frame, even when using the PDX program.

Generally, there are no additional fees charged by the USPTO for using the PDX program to exchange priority documents. The MPEP 215.01 does not mention any specific fees for this service. However, it’s important to note:

• Regular patent application fees still apply.
• If the PDX retrieval fails and you need to submit a certified copy, standard fees for document submission may apply.
• Some foreign offices might charge fees for making documents available through PDX.

Always check the most current fee schedule on the USPTO website for the most up-to-date information on patent-related fees.

The recording date for a document at the USPTO is the date when the document meeting all recording requirements is filed with the Office. As stated in 37 CFR 3.51, “The date of recording of a document is the date the document meeting the requirements for recording set forth in this part is filed in the Office.” This means that all necessary criteria, including proper identification and fees, must be met for the document to be officially recorded on that date.

If corrected documents are not resubmitted within the specified period, the original filing date will not be preserved. The MPEP clearly states: “If the returned papers are not corrected and resubmitted within the specified period, the date of filing of the corrected papers will be considered to be the date of recording of the document.” This means that failing to meet the deadline for resubmission will result in the loss of the original filing date, and the new submission date will be used as the recording date.

What happens if an assignment document is not legible for recording?

If an assignment document is not legible for recording, it will be rejected by the USPTO. According to MPEP 302.01, “Documents submitted for recording must be legible and capable of being reproduced in legible copies by use of photocopy and standard office copying equipment.” If a document is rejected due to legibility issues, the USPTO will notify the person who submitted the document, and they will need to resubmit a legible copy for recording.

What happens if an assignment document is not a copy when submitted for recording?

If an assignment document submitted for recording is not a copy, it will not be accepted for recording. The MPEP clearly states: The Assignment Division will not accept an original assignment document because it becomes part of the USPTO permanent records. This is to protect the original document and ensure that the USPTO maintains proper records. If you submit an original document, it will be returned to you unrecorded, and you will need to submit a copy instead.

To ensure your assignment is properly recorded, always submit a legible copy of the original assignment document. This can be a photocopy or other reproduction of the original.

To request copies of patent assignment records, follow these steps:

1. For records after May 1, 1957: Contact the USPTO and pay the fee set forth in 37 CFR 1.19.
2. For records before May 1, 1957: Contact the National Archives and Records Administration (NARA) directly.
3. For recent records: Check the USPTO website for online availability.

When requesting a copy, the MPEP advises: “An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded.” Failure to provide this information may result in additional charges.

Patent assignment records can be accessed online through the USPTO’s Assignment Search database. The MPEP states: Assignment records that affect the title of patents and patent applications are recorded in the USPTO’s Assignment Recordation Branch. To access these records:

• Visit the USPTO Assignment Search website
• Enter the relevant patent or application number, assignee name, or other search criteria
• Review the search results for assignment information

This online database provides public access to assignment records, allowing for easy verification of patent ownership.

Documents that don’t meet other recording requirements, such as missing a completed cover sheet or required fee, are handled differently by the USPTO. According to the MPEP, “Documents not meeting the other requirements for recording, for example, a document submitted without a completed cover sheet or without the required fee, will be returned for correction to the sender where a correspondence address is available.” This means that unlike documents with identification issues, these documents are returned to the sender for correction, provided a correspondence address is available.

Yes, the original filing date can be preserved for corrected documents under certain conditions. The MPEP states: “The returned papers, stamped with the original date of receipt by the Office, will be accompanied by a letter which will indicate that if the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of filing of the papers as the date of recording of the document.” This means that if you correct and resubmit the document within the specified timeframe, the USPTO will use the original filing date as the recording date.

To request copies of patent assignment records, follow these steps:

1. For records after May 1, 1957: Contact the USPTO and pay the fee set forth in 37 CFR 1.19.
2. For records before May 1, 1957: Contact the National Archives and Records Administration (NARA) directly.
3. For recent records: Check the USPTO website for online availability.

When requesting a copy, the MPEP advises: “An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded.” Failure to provide this information may result in additional charges.

Patent assignment records can be accessed online through the USPTO’s Assignment Search database. The MPEP states: Assignment records that affect the title of patents and patent applications are recorded in the USPTO’s Assignment Recordation Branch. To access these records:

• Visit the USPTO Assignment Search website
• Enter the relevant patent or application number, assignee name, or other search criteria
• Review the search results for assignment information

This online database provides public access to assignment records, allowing for easy verification of patent ownership.

What happens if an assignment document is not legible for recording?

If an assignment document is not legible for recording, it will be rejected by the USPTO. According to MPEP 302.01, “Documents submitted for recording must be legible and capable of being reproduced in legible copies by use of photocopy and standard office copying equipment.” If a document is rejected due to legibility issues, the USPTO will notify the person who submitted the document, and they will need to resubmit a legible copy for recording.

What happens if an assignment document is not a copy when submitted for recording?

If an assignment document submitted for recording is not a copy, it will not be accepted for recording. The MPEP clearly states: The Assignment Division will not accept an original assignment document because it becomes part of the USPTO permanent records. This is to protect the original document and ensure that the USPTO maintains proper records. If you submit an original document, it will be returned to you unrecorded, and you will need to submit a copy instead.

To ensure your assignment is properly recorded, always submit a legible copy of the original assignment document. This can be a photocopy or other reproduction of the original.

The recording date for a document at the USPTO is the date when the document meeting all recording requirements is filed with the Office. As stated in 37 CFR 3.51, “The date of recording of a document is the date the document meeting the requirements for recording set forth in this part is filed in the Office.” This means that all necessary criteria, including proper identification and fees, must be met for the document to be officially recorded on that date.

If corrected documents are not resubmitted within the specified period, the original filing date will not be preserved. The MPEP clearly states: “If the returned papers are not corrected and resubmitted within the specified period, the date of filing of the corrected papers will be considered to be the date of recording of the document.” This means that failing to meet the deadline for resubmission will result in the loss of the original filing date, and the new submission date will be used as the recording date.

Documents that don’t meet other recording requirements, such as missing a completed cover sheet or required fee, are handled differently by the USPTO. According to the MPEP, “Documents not meeting the other requirements for recording, for example, a document submitted without a completed cover sheet or without the required fee, will be returned for correction to the sender where a correspondence address is available.” This means that unlike documents with identification issues, these documents are returned to the sender for correction, provided a correspondence address is available.

Yes, the original filing date can be preserved for corrected documents under certain conditions. The MPEP states: “The returned papers, stamped with the original date of receipt by the Office, will be accompanied by a letter which will indicate that if the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of filing of the papers as the date of recording of the document.” This means that if you correct and resubmit the document within the specified timeframe, the USPTO will use the original filing date as the recording date.

The Public Search Facility in Alexandria has extended hours compared to the regular USPTO business hours:

• 8:00 a.m. to 8:00 p.m., Monday through Friday
• Excluding federal holidays in the District of Columbia

As stated in MPEP 510: “The hours for the Public Search Facility in Alexandria are 8:00 a.m. to 8:00 p.m., Monday through Friday, excluding federal holidays in the District of Columbia.”

The Public Search Facility in Alexandria has extended hours compared to the regular USPTO business hours:

• 8:00 a.m. to 8:00 p.m., Monday through Friday
• Excluding federal holidays in the District of Columbia

As stated in MPEP 510: “The hours for the Public Search Facility in Alexandria are 8:00 a.m. to 8:00 p.m., Monday through Friday, excluding federal holidays in the District of Columbia.”

The recording date for a document at the USPTO is the date when the document meeting all recording requirements is filed with the Office. As stated in 37 CFR 3.51, “The date of recording of a document is the date the document meeting the requirements for recording set forth in this part is filed in the Office.” This means that all necessary criteria, including proper identification and fees, must be met for the document to be officially recorded on that date.

The requirements for filing a foreign priority claim differ for applications filed before and after September 16, 2012. The key difference lies in where the priority claim must be presented:

• For applications filed on or after September 16, 2012: The priority claim must be presented in an Application Data Sheet (ADS). This is specified in 37 CFR 1.55(d)(1): For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, 37 CFR 1.55(d)(1) requires the claim for priority to be presented in an application data sheet.
• For applications filed before September 16, 2012: The priority claim can be presented either in an Application Data Sheet or in the oath or declaration. As stated in the MPEP: For applications filed under 35 U.S.C. 111(a) prior to September 16, 2012, unless provided in an application data sheet, the oath or declaration under 37 CFR 1.63 must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.

Regardless of the filing date, the priority claim must include the same essential information: the application number, country (or intellectual property authority), and filing date (day, month, and year) of the foreign application. The difference is primarily in the document where this information must be presented.

If corrected documents are not resubmitted within the specified period, the original filing date will not be preserved. The MPEP clearly states: “If the returned papers are not corrected and resubmitted within the specified period, the date of filing of the corrected papers will be considered to be the date of recording of the document.” This means that failing to meet the deadline for resubmission will result in the loss of the original filing date, and the new submission date will be used as the recording date.

What happens if an assignment document is not legible for recording?

If an assignment document is not legible for recording, it will be rejected by the USPTO. According to MPEP 302.01, “Documents submitted for recording must be legible and capable of being reproduced in legible copies by use of photocopy and standard office copying equipment.” If a document is rejected due to legibility issues, the USPTO will notify the person who submitted the document, and they will need to resubmit a legible copy for recording.

What happens if an assignment document is not a copy when submitted for recording?

If an assignment document submitted for recording is not a copy, it will not be accepted for recording. The MPEP clearly states: The Assignment Division will not accept an original assignment document because it becomes part of the USPTO permanent records. This is to protect the original document and ensure that the USPTO maintains proper records. If you submit an original document, it will be returned to you unrecorded, and you will need to submit a copy instead.

To ensure your assignment is properly recorded, always submit a legible copy of the original assignment document. This can be a photocopy or other reproduction of the original.

The Public Search Facility in Alexandria has extended hours compared to the regular USPTO business hours:

• 8:00 a.m. to 8:00 p.m., Monday through Friday
• Excluding federal holidays in the District of Columbia

As stated in MPEP 510: “The hours for the Public Search Facility in Alexandria are 8:00 a.m. to 8:00 p.m., Monday through Friday, excluding federal holidays in the District of Columbia.”

The USPTO treats a proper priority claim to an application filed in a participating foreign intellectual property office as a request to obtain a copy of the foreign application. The MPEP states:

The Office treats a proper priority claim under 37 CFR 1.55 to an application filed in a participating foreign intellectual property office as a request that the Office obtain a copy of the foreign application from the participating intellectual property office.

This means that applicants do not need to submit a separate request for the USPTO to retrieve the foreign application if they have made a proper priority claim and the foreign office is a PDX participant.

How does the USPTO handle certified copies for international design applications?

For international design applications, the USPTO has a specific process for handling certified copies. According to the MPEP:

‘For international design applications designating the United States, the certified copy requirement is considered to have been met by the filing of the international design application pursuant to 37 CFR 1.55(m).’

This means that if you file an international design application that designates the United States, you don’t need to separately submit a certified copy of the priority document. The filing of the international design application itself fulfills this requirement.

However, it’s important to note that this only applies to international design applications. For other types of patent applications claiming priority to a foreign application, you would still need to ensure that a certified copy is filed or retrievable through the priority document exchange program within the specified time period.

The USPTO determines if a foreign country qualifies for priority rights based on specific criteria outlined in the MPEP. According to MPEP 213.01:

The right of priority is recognized only if the foreign country in which the original application was filed is recognized at the time of filing the application in the United States.

The USPTO considers several factors:

• The country must be a member of the Paris Convention for the Protection of Industrial Property or have a bilateral agreement with the United States.
• The country must grant similar priority rights to U.S. citizens.
• The country must be recognized by the U.S. Department of State.

The USPTO maintains a list of recognized countries and regional patent offices in MPEP 213.01, which is updated periodically to reflect changes in international relations and treaty memberships.

How does the Electronic Priority Document Exchange (PDX) program work with the USPTO?

The Electronic Priority Document Exchange (PDX) program is a system that allows participating intellectual property offices to exchange priority documents electronically. According to MPEP 215.01, the USPTO participates in this program, which can simplify the process of submitting certified copies of foreign priority applications.

The MPEP states: The USPTO has agreements with the European Patent Office (EPO) and the Japan Patent Office (JPO) that enable the USPTO to obtain certified copies of foreign applications filed in those offices from their electronic records management systems.

Here’s how the PDX program works with the USPTO:

• If a foreign application was filed with a participating office (e.g., EPO or JPO), the applicant can request that office to make the certified copy of the priority document available to the USPTO.
• The applicant must submit a request to retrieve the priority document through the USPTO’s electronic filing system (EFS-Web or Patent Center).
• The USPTO will then attempt to retrieve the document electronically from the foreign office.
• If successful, this electronic retrieval satisfies the requirement to file a certified copy of the foreign priority application.

It’s important to note that the applicant is still responsible for ensuring that the certified copy is received by the USPTO within the required time frame, even when using the PDX program.

To request copies of patent assignment records, follow these steps:

1. For records after May 1, 1957: Contact the USPTO and pay the fee set forth in 37 CFR 1.19.
2. For records before May 1, 1957: Contact the National Archives and Records Administration (NARA) directly.
3. For recent records: Check the USPTO website for online availability.

When requesting a copy, the MPEP advises: “An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded.” Failure to provide this information may result in additional charges.

To file a foreign priority claim in a U.S. patent application, you must:

1. File the claim within the specified time limit (see previous FAQ for details).
2. Present the claim in an application data sheet (ADS) for applications filed on or after September 16, 2012. For applications filed before this date, the claim can be in the ADS or in the oath/declaration.
3. Identify the foreign application by providing:
• Application number
• Country (or intellectual property authority)
• Filing date (day, month, and year)

This is specified in 37 CFR 1.55(d)(1): The claim for priority must be presented in an application data sheet (§1.76(b)(6)) and must identify 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.

It’s crucial to provide accurate and complete information to ensure your priority claim is properly recorded and considered.

Patent assignment records can be accessed online through the USPTO’s Assignment Search database. The MPEP states: Assignment records that affect the title of patents and patent applications are recorded in the USPTO’s Assignment Recordation Branch. To access these records:

• Visit the USPTO Assignment Search website
• Enter the relevant patent or application number, assignee name, or other search criteria
• Review the search results for assignment information

This online database provides public access to assignment records, allowing for easy verification of patent ownership.

Documents that don’t meet other recording requirements, such as missing a completed cover sheet or required fee, are handled differently by the USPTO. According to the MPEP, “Documents not meeting the other requirements for recording, for example, a document submitted without a completed cover sheet or without the required fee, will be returned for correction to the sender where a correspondence address is available.” This means that unlike documents with identification issues, these documents are returned to the sender for correction, provided a correspondence address is available.

Yes, the original filing date can be preserved for corrected documents under certain conditions. The MPEP states: “The returned papers, stamped with the original date of receipt by the Office, will be accompanied by a letter which will indicate that if the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of filing of the papers as the date of recording of the document.” This means that if you correct and resubmit the document within the specified timeframe, the USPTO will use the original filing date as the recording date.

Generally, there are no additional fees charged by the USPTO for using the PDX program to exchange priority documents. The MPEP 215.01 does not mention any specific fees for this service. However, it’s important to note:

• Regular patent application fees still apply.
• If the PDX retrieval fails and you need to submit a certified copy, standard fees for document submission may apply.
• Some foreign offices might charge fees for making documents available through PDX.

Always check the most current fee schedule on the USPTO website for the most up-to-date information on patent-related fees.

Yes, there are exceptions to the standard time limits for filing foreign priority claims, particularly for design patent applications and certain applications filed before November 29, 2000. According to 37 CFR 1.55(d)(1):

The time periods in this paragraph do not apply if the later-filed application is:
(i) An application for a design patent; or
(ii) An application filed under 35 U.S.C. 111(a) before November 29, 2000.

For design patent applications, the MPEP states:

In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).

This means that for design patent applications, you can file a foreign priority claim at any time while the application is pending, without being restricted by the usual time limits.

For applications filed under 35 U.S.C. 111(a) before November 29, 2000, different rules may apply, and it’s best to consult with a patent attorney or the USPTO directly for guidance on such cases.

It’s important to note that while these exceptions exist, it’s generally advisable to file priority claims as early as possible to ensure they are properly recorded and considered.

The recording date for a document at the USPTO is the date when the document meeting all recording requirements is filed with the Office. As stated in 37 CFR 3.51, “The date of recording of a document is the date the document meeting the requirements for recording set forth in this part is filed in the Office.” This means that all necessary criteria, including proper identification and fees, must be met for the document to be officially recorded on that date.

The requirements for filing a foreign priority claim differ for applications filed before and after September 16, 2012. The key difference lies in where the priority claim must be presented:

• For applications filed on or after September 16, 2012: The priority claim must be presented in an Application Data Sheet (ADS). This is specified in 37 CFR 1.55(d)(1): For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, 37 CFR 1.55(d)(1) requires the claim for priority to be presented in an application data sheet.
• For applications filed before September 16, 2012: The priority claim can be presented either in an Application Data Sheet or in the oath or declaration. As stated in the MPEP: For applications filed under 35 U.S.C. 111(a) prior to September 16, 2012, unless provided in an application data sheet, the oath or declaration under 37 CFR 1.63 must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.

Regardless of the filing date, the priority claim must include the same essential information: the application number, country (or intellectual property authority), and filing date (day, month, and year) of the foreign application. The difference is primarily in the document where this information must be presented.

If corrected documents are not resubmitted within the specified period, the original filing date will not be preserved. The MPEP clearly states: “If the returned papers are not corrected and resubmitted within the specified period, the date of filing of the corrected papers will be considered to be the date of recording of the document.” This means that failing to meet the deadline for resubmission will result in the loss of the original filing date, and the new submission date will be used as the recording date.

What happens if an assignment document is not legible for recording?

If an assignment document is not legible for recording, it will be rejected by the USPTO. According to MPEP 302.01, “Documents submitted for recording must be legible and capable of being reproduced in legible copies by use of photocopy and standard office copying equipment.” If a document is rejected due to legibility issues, the USPTO will notify the person who submitted the document, and they will need to resubmit a legible copy for recording.

What happens if an assignment document is not a copy when submitted for recording?

If an assignment document submitted for recording is not a copy, it will not be accepted for recording. The MPEP clearly states: The Assignment Division will not accept an original assignment document because it becomes part of the USPTO permanent records. This is to protect the original document and ensure that the USPTO maintains proper records. If you submit an original document, it will be returned to you unrecorded, and you will need to submit a copy instead.

To ensure your assignment is properly recorded, always submit a legible copy of the original assignment document. This can be a photocopy or other reproduction of the original.

The Public Search Facility in Alexandria has extended hours compared to the regular USPTO business hours:

• 8:00 a.m. to 8:00 p.m., Monday through Friday
• Excluding federal holidays in the District of Columbia

As stated in MPEP 510: “The hours for the Public Search Facility in Alexandria are 8:00 a.m. to 8:00 p.m., Monday through Friday, excluding federal holidays in the District of Columbia.”

The USPTO treats a proper priority claim to an application filed in a participating foreign intellectual property office as a request to obtain a copy of the foreign application. The MPEP states:

The Office treats a proper priority claim under 37 CFR 1.55 to an application filed in a participating foreign intellectual property office as a request that the Office obtain a copy of the foreign application from the participating intellectual property office.

This means that applicants do not need to submit a separate request for the USPTO to retrieve the foreign application if they have made a proper priority claim and the foreign office is a PDX participant.

How does the USPTO handle certified copies for international design applications?

For international design applications, the USPTO has a specific process for handling certified copies. According to the MPEP:

‘For international design applications designating the United States, the certified copy requirement is considered to have been met by the filing of the international design application pursuant to 37 CFR 1.55(m).’

This means that if you file an international design application that designates the United States, you don’t need to separately submit a certified copy of the priority document. The filing of the international design application itself fulfills this requirement.

However, it’s important to note that this only applies to international design applications. For other types of patent applications claiming priority to a foreign application, you would still need to ensure that a certified copy is filed or retrievable through the priority document exchange program within the specified time period.

The USPTO determines if a foreign country qualifies for priority rights based on specific criteria outlined in the MPEP. According to MPEP 213.01:

The right of priority is recognized only if the foreign country in which the original application was filed is recognized at the time of filing the application in the United States.

The USPTO considers several factors:

• The country must be a member of the Paris Convention for the Protection of Industrial Property or have a bilateral agreement with the United States.
• The country must grant similar priority rights to U.S. citizens.
• The country must be recognized by the U.S. Department of State.

The USPTO maintains a list of recognized countries and regional patent offices in MPEP 213.01, which is updated periodically to reflect changes in international relations and treaty memberships.

How does the Electronic Priority Document Exchange (PDX) program work with the USPTO?

The Electronic Priority Document Exchange (PDX) program is a system that allows participating intellectual property offices to exchange priority documents electronically. According to MPEP 215.01, the USPTO participates in this program, which can simplify the process of submitting certified copies of foreign priority applications.

The MPEP states: The USPTO has agreements with the European Patent Office (EPO) and the Japan Patent Office (JPO) that enable the USPTO to obtain certified copies of foreign applications filed in those offices from their electronic records management systems.

Here’s how the PDX program works with the USPTO:

• If a foreign application was filed with a participating office (e.g., EPO or JPO), the applicant can request that office to make the certified copy of the priority document available to the USPTO.
• The applicant must submit a request to retrieve the priority document through the USPTO’s electronic filing system (EFS-Web or Patent Center).
• The USPTO will then attempt to retrieve the document electronically from the foreign office.
• If successful, this electronic retrieval satisfies the requirement to file a certified copy of the foreign priority application.

It’s important to note that the applicant is still responsible for ensuring that the certified copy is received by the USPTO within the required time frame, even when using the PDX program.

To request copies of patent assignment records, follow these steps:

1. For records after May 1, 1957: Contact the USPTO and pay the fee set forth in 37 CFR 1.19.
2. For records before May 1, 1957: Contact the National Archives and Records Administration (NARA) directly.
3. For recent records: Check the USPTO website for online availability.

When requesting a copy, the MPEP advises: “An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded.” Failure to provide this information may result in additional charges.

To file a foreign priority claim in a U.S. patent application, you must:

1. File the claim within the specified time limit (see previous FAQ for details).
2. Present the claim in an application data sheet (ADS) for applications filed on or after September 16, 2012. For applications filed before this date, the claim can be in the ADS or in the oath/declaration.
3. Identify the foreign application by providing:
• Application number
• Country (or intellectual property authority)
• Filing date (day, month, and year)

This is specified in 37 CFR 1.55(d)(1): The claim for priority must be presented in an application data sheet (§1.76(b)(6)) and must identify 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.

It’s crucial to provide accurate and complete information to ensure your priority claim is properly recorded and considered.

Patent assignment records can be accessed online through the USPTO’s Assignment Search database. The MPEP states: Assignment records that affect the title of patents and patent applications are recorded in the USPTO’s Assignment Recordation Branch. To access these records:

• Visit the USPTO Assignment Search website
• Enter the relevant patent or application number, assignee name, or other search criteria
• Review the search results for assignment information

This online database provides public access to assignment records, allowing for easy verification of patent ownership.

Documents that don’t meet other recording requirements, such as missing a completed cover sheet or required fee, are handled differently by the USPTO. According to the MPEP, “Documents not meeting the other requirements for recording, for example, a document submitted without a completed cover sheet or without the required fee, will be returned for correction to the sender where a correspondence address is available.” This means that unlike documents with identification issues, these documents are returned to the sender for correction, provided a correspondence address is available.

Yes, the original filing date can be preserved for corrected documents under certain conditions. The MPEP states: “The returned papers, stamped with the original date of receipt by the Office, will be accompanied by a letter which will indicate that if the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of filing of the papers as the date of recording of the document.” This means that if you correct and resubmit the document within the specified timeframe, the USPTO will use the original filing date as the recording date.

Generally, there are no additional fees charged by the USPTO for using the PDX program to exchange priority documents. The MPEP 215.01 does not mention any specific fees for this service. However, it’s important to note:

• Regular patent application fees still apply.
• If the PDX retrieval fails and you need to submit a certified copy, standard fees for document submission may apply.
• Some foreign offices might charge fees for making documents available through PDX.

Always check the most current fee schedule on the USPTO website for the most up-to-date information on patent-related fees.

Yes, there are exceptions to the standard time limits for filing foreign priority claims, particularly for design patent applications and certain applications filed before November 29, 2000. According to 37 CFR 1.55(d)(1):

The time periods in this paragraph do not apply if the later-filed application is:
(i) An application for a design patent; or
(ii) An application filed under 35 U.S.C. 111(a) before November 29, 2000.

For design patent applications, the MPEP states:

In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).

This means that for design patent applications, you can file a foreign priority claim at any time while the application is pending, without being restricted by the usual time limits.

For applications filed under 35 U.S.C. 111(a) before November 29, 2000, different rules may apply, and it’s best to consult with a patent attorney or the USPTO directly for guidance on such cases.

It’s important to note that while these exceptions exist, it’s generally advisable to file priority claims as early as possible to ensure they are properly recorded and considered.