Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
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MPEP 200 - Types and Status of Application; Benefit and Priority (40)
If the United States Patent and Trademark Office (USPTO) doesn’t receive your priority document through the Priority Document Exchange (PDX) program within the specified time frame, you have options. According to MPEP 215.02(a):
The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.
If you find yourself in this situation:
- File a certified copy of the foreign application directly with the USPTO.
- Ensure this is done during the pendency of your application and before the patent is granted.
- Consider filing a petition under 37 CFR 1.55(e) or (f) if necessary.
Remember, it’s ultimately the applicant’s responsibility to ensure the priority document is properly filed, even when using the PDX program.
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For more information on PDX, visit: PDX.
For more information on priority document exchange, visit: priority document exchange.
For international design applications designating the United States, there is generally no specific time limit for submitting a certified copy of the priority document. The MPEP 213.07 explains:
‘In accordance with Hague Agreement Rule 7(5)(f), a copy of the priority document may be submitted to the International Bureau within three months from the date of filing of the international design application. The copy of the priority document so submitted will be considered to satisfy the requirement for a certified copy of the priority document in accordance with 37 CFR 1.55(m).’
However, it’s important to note that if the USPTO requires a certified copy for specific reasons (e.g., to overcome a reference), you may need to submit it within a specified timeframe as requested by the Office.
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What is the time limit for submitting a certified copy of a foreign application for priority claim?
The time limit for submitting a certified copy of a foreign application for a priority claim depends on the specific circumstances of your application. According to MPEP 213.04:
The time period for filing a certified copy of the foreign application in the United States application (or written statement) is no later than the date the issue fee is paid.
However, there are some exceptions and additional considerations:
- If you file the priority claim within 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, you may not need to file a certified copy immediately.
- If the foreign application was filed in a foreign intellectual property office participating in a priority document exchange agreement with the USPTO, the exchange may satisfy the certified copy requirement.
- In some cases, an interim copy of the foreign application or a statement that the copy was previously filed may be sufficient.
Note: While it’s possible to file the certified copy after paying the issue fee, it requires an additional processing fee and must be done before the patent is granted. To avoid complications and extra fees, it’s best to submit the certified copy as early as possible during the application process.
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The time limit for filing a certified copy of a foreign application depends on the type of application:
- For applications under 35 U.S.C. 111(a):
A certified copy of the foreign application must be filed within 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,
as stated in 37 CFR 1.55(f)(1). - For applications under 35 U.S.C. 371 (national stage applications):
A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT,
as per 37 CFR 1.55(f)(2).
If these time limits are not met, a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in ยง 1.17(g) must accompany the certified copy.
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For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) sets the time limit for filing a certified copy of the foreign application. The certified copy must be filed within 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
This time limit does not apply to design applications. For international applications entering the national stage under 35 U.S.C. 371, the time limit is set forth in 37 CFR 1.55(f)(2).
It’s important to note that there are exceptions to these time limits, as provided in 37 CFR 1.55(h), (i), and (j).
For more information on certified copy, visit: certified copy.
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For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) requires that a certified copy of the foreign application be filed within 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
This time period does not apply to design applications. There are three exceptions to this requirement, as outlined in 37 CFR 1.55(h), (i), and (j).
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What is the significance of the four-month time period in filing a certified copy?
The four-month time period is significant in filing a certified copy of a foreign application for priority claims. According to MPEP 213.04, “If the certified copy is not filed within the four-month period, the certified copy must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee.” This means that if you file the certified copy within four months of the actual filing date of the application (or entry into the national stage for PCT applications), you don’t need to provide any explanation or pay additional fees. However, if you miss this four-month window, you’ll need to file a petition explaining the delay and pay an additional fee. This rule encourages prompt filing of priority documents and helps streamline the examination process.
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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.
When claiming foreign priority, applicants are generally required to file a certified copy of the foreign application within a specified time period. The requirements and deadlines for filing the certified copy depend on the type of application and the circumstances of the filing.
According to MPEP 213.04: “37 CFR 1.55(g) sets forth the requirements for filing a priority claim, certified copy of foreign application, and translation that are applicable in all applications.”
Key points about the certified copy requirement include:
- The certified copy must be filed within the pendency of the application, unless filed with a petition.
- For applications filed under 35 U.S.C. 111(a), the certified copy must typically be filed within the later of four months from the actual filing date or sixteen months from the filing date of the prior foreign application.
- For national stage applications under 35 U.S.C. 371, the certified copy must be filed within the time limit set forth in the PCT and the Regulations under the PCT.
- If the certified copy is not filed within the required time period, it must be accompanied by a petition and fee, along with a showing of good and sufficient cause for the delay.
- In some cases, the requirement may be satisfied through the priority document exchange program or by identifying a previously filed application containing the certified copy.
The MPEP also notes: “If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.”
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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.
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The priority document exchange program is a bilateral or multilateral agreement between the USPTO and participating foreign intellectual property offices that allows for the electronic exchange of priority documents. This program can satisfy the requirement for filing a certified copy of a foreign application under certain conditions.
According to 37 CFR 1.55(i), the certified copy requirement will be considered satisfied if:
- The foreign application was filed in a participating foreign intellectual property office
- The claim for priority is presented in an application data sheet (ADS)
- The applicant provides the necessary information for the participating office to provide the USPTO with access to the foreign application
- The USPTO receives a copy of the foreign application from the participating office during the pendency of the application and before the patent is granted
This provision can significantly simplify the process of meeting the certified copy requirement for applicants whose priority applications are from participating countries.
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For more information on priority document exchange, visit: priority document exchange.
The deadline for submitting a certified copy of a foreign priority application depends on the filing date of the U.S. application. According to MPEP 213.02:
In the case of a U.S. application filed on or after March 16, 2013, the certified copy must be filed within 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.
If the certified copy is not filed within this timeframe, the applicant must file a petition to accept a delayed submission and pay the associated fee.
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For applications filed before March 16, 2013, the certified copy of the foreign application must be filed within the pendency of the application. According to 37 CFR 1.55(g)(1):
The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in ยง 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application.
However, it’s important to note that if the claim for priority or the certified copy is filed after the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction.
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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.
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For more information on foreign priority, visit: foreign priority.
An interim copy of a foreign priority document is a copy that is submitted before the certified copy is available. The MPEP 213.02 provides guidance on when an interim copy is acceptable:
The Office may require that an ‘interim copy’ of the foreign application be furnished in the event that the certified copy of the foreign application is not filed within the time period set forth in 37 CFR 1.55(f) and an exception in 37 CFR 1.55(h), (i), or (j) is not applicable.
An interim copy must:
- Be filed within the later of 4 months from the filing date of the application or 16 months from the filing date of the prior foreign application
- Be a copy of the original foreign application
- Be accompanied by a statement that the copy is a true copy
Note: An interim copy does not substitute the requirement for a certified copy, which must still be filed during the pendency of the application.
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An ‘interim copy’ is a mechanism provided by 37 CFR 1.55(j) that allows applicants to meet the timeliness requirement for submitting a certified copy of a foreign application. It’s a copy of the original foreign application that the applicant can provide from their own records when they cannot obtain a certified copy within the time limit set by 37 CFR 1.55(f).
The MPEP states: 37 CFR 1.55(j) permits an applicant to provide an ‘interim copy’ of the original foreign application from the applicant’s own records to provide for the situation in which the applicant cannot obtain a certified copy of the foreign application within the time limit set forth in 37 CFR 1.55(f), although there is no requirement that an applicant be unable to obtain a certified copy of the foreign application within the time limit set forth in 37 CFR 1.55(f) to use 37 CFR 1.55(j).
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37 CFR 1.55(j) allows an applicant to provide an ‘interim copy’ of the original foreign application to satisfy the requirement for a certified copy to be filed within the time limit set in 37 CFR 1.55(f). An interim copy must:
- Be clearly labeled as ‘Interim Copy’
- Include the specification, drawings, and claims of the foreign application
- Be filed with a separate cover sheet identifying the foreign application
- Be filed within the later of 16 months from the foreign filing date or 4 months from the actual U.S. filing date
A certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g).
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If the certified copy of the foreign application is filed after the issue fee is paid but before the patent is granted, the following occurs:
- The priority claim or certified copy will be placed in the file record
- There will be no review of the papers
- The published patent will not include the priority claim
To have the priority claim considered after publication, a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 must be filed. For original applications filed under 35 U.S.C. 111(a), additional requirements may apply, such as a petition to accept an unintentionally delayed priority claim.
This is outlined in MPEP 215.03.
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What happens if I fail to file a priority claim during the pendency of my application?
If you fail to file a priority claim during the pendency of your application, you may lose the right to claim priority. According to MPEP 213.04:
If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, it must also be accompanied by the processing fee set forth in 37 CFR 1.17(i).
This means that if you miss the deadline to file your priority claim before the issue fee is paid, you’ll need to pay an additional processing fee. Moreover, if the application has already been patented, you cannot file a priority claim retroactively.
It’s crucial to file your priority claim as early as possible during the pendency of your application to avoid potential complications or additional fees.
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If a priority document is not timely retrieved through the PDX program, there can be significant consequences for the patent application. According to MPEP 215.02(a):
“If the priority document is not retrieved within the time period set in 37 CFR 1.55(g)(1), the applicant is notified and given a time period within which to file the certified copy in accordance with 37 CFR 1.55(g)(1).”
Consequences of untimely retrieval:
- Applicant receives a notification of non-retrieval
- A time limit is set for manual submission of the certified copy
- Failure to submit within the time limit may result in loss of priority claim
- Additional fees may be required for late submission
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If a certified copy of the priority document is not filed within the time limit in a U.S. national stage application, the following consequences may occur:
- The right to priority may be lost if the certified copy is not filed within the time period set in 37 CFR 1.55.
- However, if the certified copy is filed after the time period set in 37 CFR 1.55 but during the pendency of the application, the right to priority may be restored under certain conditions.
- According to MPEP 213.06, ‘If the certified copy is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.’
It’s crucial to file the certified copy within the specified time limit to avoid potential complications in claiming priority.
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What happens if a certified copy is not received within the time period set in 37 CFR 1.55(f)?
If a certified copy is not received within the time period set in 37 CFR 1.55(f), the USPTO will send a Notice of Allowance and Issue Fee Due (Notice of Allowance) with a requirement for the certified copy. As stated in the MPEP:
‘If a certified copy of the foreign application is not filed within the time period specified in 37 CFR 1.55(f) and the exceptions in 37 CFR 1.55(h), (i), and (j) are not applicable, the certified copy of the foreign application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in 37 CFR 1.17(g).’
This means that if you miss the deadline, you’ll need to file a petition explaining the delay and pay an additional fee. It’s crucial to submit the certified copy or ensure it’s retrievable through the priority document exchange program to avoid complications in the patent application process.
To claim foreign priority in a U.S. application, you must file a claim for priority and submit a certified copy of the foreign application. MPEP 213.04 states: ‘The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application.’
For applications filed on or after September 16, 2012, the priority claim must be presented in an Application Data Sheet (ADS). The certified copy must be filed within the later of 4 months from the actual filing date or 16 months from the foreign filing date, with some exceptions.
For more information on certified copy, visit: certified copy.
For more information on foreign priority, visit: foreign priority.
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.
The time limits for filing a certified copy in an international design application are:
- General rule: Within the later of four months from the filing date of the international design application, or sixteen months from the filing date of the prior foreign application.
- Exception: These time limits do not apply if the priority document is available to the Office from a participating digital library.
MPEP 213.07 specifies: The time period requirement in 37 CFR 1.55(f) for filing a certified copy of the foreign application in a nonprovisional international design application is the later of four months from the filing date of the international design application, or sixteen months from the filing date of the prior foreign application, except as provided in paragraphs (h), (i), and (j) of this section.
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To use the Priority Document Exchange (PDX) program, several requirements must be met as outlined in MPEP 215.02(a):
- The foreign application must be filed in a participating foreign intellectual property office.
- The claim for priority must be presented in an application data sheet (ADS) with specific details about the foreign application.
- The copy of the foreign application must be received by the USPTO from the participating foreign office, or a certified copy must be filed, within the specified time period.
The MPEP states:
37 CFR 1.55(i) specifically provides that this requirement for a timely filed certified copy of the foreign application will be considered satisfied if: (1) The foreign application was filed in a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office); (2) the claim for priority is presented in an application data sheet (ยง1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and including the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application; and (3) the copy of the foreign application is received by the Office from the participating foreign intellectual property office, or a certified copy of the foreign application is filed, within the time period set forth in 37 CFR 1.55(g)(1)).
Meeting these requirements allows applicants to potentially avoid manually filing certified copies of foreign priority documents.
For more information on certified copy, visit: certified copy.
For more information on foreign application, visit: foreign application.
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For more information on priority document exchange, visit: priority document exchange.
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What are the requirements for submitting an interim copy of a foreign priority application?
Submitting an interim copy of a foreign priority application can be useful when there are delays in obtaining a certified copy. According to MPEP 213.04, here are the requirements:
37 CFR 1.55(j) provides that an applicant who has not filed a certified copy of the foreign application may file an interim copy of the foreign application during the pendency of the application.
To submit an interim copy:
- It must be filed during the pendency of the application
- The copy must be clearly labeled as ‘Interim Copy’
- Include a cover sheet identifying:
- The application number
- The foreign application number
- The country or intellectual property office
- The filing date
- The interim copy must be a legible copy of the foreign application
Note: An interim copy does not satisfy the requirement for a certified copy. You must still submit a certified copy of the foreign application before the patent is granted.
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What are the requirements for filing a priority claim and certified copy of a foreign application?
According to 37 CFR 1.55(g)(1), the claim for priority and the certified copy of the foreign application must be filed within the pendency of the application. The MPEP states:
“The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in ยง 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application.”
This requirement applies to all applications and ensures that priority claims are properly documented before the application is granted.
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For national stage applications under 35 U.S.C. 371, the requirements for filing a certified copy of a foreign application are outlined in 37 CFR 1.55(f)(2). The MPEP states:
A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371.
If the certified copy was not filed during the international stage, it must be filed within the later of:
- Four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f)
- Four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage
- Sixteen months from the filing date of the prior foreign application
Exceptions to these time limits are provided in paragraphs (h), (i), and (j) of 37 CFR 1.55.
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To be entitled to priority under the PDX program, the following requirements must be met:
- The Office must receive a copy of the foreign application from the participating foreign intellectual property office within the pendency of the application and before the patent is granted, or
- The Office must receive a paper certified copy of the foreign application during that time period.
The MPEP states:
To be entitled to priority, the Office must receive a copy of the foreign application from the participating foreign intellectual property office within the pendency of the application and before the patent is granted, or receive a paper certified copy of the foreign application during that time period.
It’s crucial to note that if a certified copy is filed after the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
What are the requirements for claiming priority to a foreign application?
To claim priority to a foreign application, several requirements must be met:
- The U.S. application must be filed within 12 months of the foreign application (or 6 months for design patents).
- The foreign application must be from a country that grants similar privileges to U.S. applicants (Paris Convention member or WTO member).
- The applicant must file a claim for priority and a certified copy of the foreign application.
- As stated in MPEP 213: “The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed before the patent is granted.”
It’s important to note that the subject matter claimed in the U.S. application must be adequately supported by the foreign application to receive the benefit of the earlier filing date.
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An interim copy of a foreign application serves as a temporary substitute for a certified copy but does not replace the requirement for a certified copy. The key differences are:
- An interim copy can be from the applicant’s own records, while a certified copy must be from the foreign patent office.
- An interim copy satisfies the initial time requirement in 37 CFR 1.55(f), but a certified copy is still required.
- An interim copy is labeled as ‘Interim Copy,’ while a certified copy has official certification from the foreign patent office.
The MPEP clarifies:
‘Thus, providing an interim copy of a foreign application under 37 CFR 1.55(j) satisfies the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f), but a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate.’
In essence, the interim copy is a temporary measure to meet deadlines, while the certified copy remains a formal requirement.
For more information on certified copy, visit: certified copy.
For more information on foreign application, visit: foreign application.
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For more information on patent procedure, visit: patent procedure.
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 right of priority for international applications filed under the Patent Cooperation Treaty (PCT) operates similarly to national applications, but with some specific provisions and requirements set by the PCT system.
According to MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”
Key points about priority in PCT applications include:
- The priority claim must be made in the PCT Request form or through a later correction.
- The applicant must file a certified copy of the priority document with the International Bureau within 16 months from the priority date, unless it was previously filed with the receiving Office.
- If the priority document is issued by the receiving Office, the applicant can request that Office to prepare and transmit the document to the International Bureau.
- The International Bureau will make the priority document available to designated Offices.
- For U.S. national stage entry, if the certified copy was submitted during the international phase, it generally satisfies the requirement for the U.S. application.
The MPEP further notes: “If, however, the International Bureau is unable to forward a copy of the certified priority document because the applicant failed to submit a certified copy of the foreign priority document during the international phase, the applicant will need to provide a certified copy of the priority document or have the Office retrieve the priority application in accordance with the priority document exchange program during the national stage to fulfill the requirements of 37 CFR 1.55.”
For more information on certified copy, visit: certified copy.
How do I properly identify a foreign application when claiming priority in a U.S. patent application?
When claiming priority to a foreign application in a U.S. patent application, it’s crucial to provide accurate identification information. According to MPEP 214.01, you must include the following details:
- The application number of the foreign application
- The country or intellectual property authority where the foreign application was filed
- The day, month, and year of filing of the foreign application
The MPEP states: ‘The claim for priority must identify the foreign application for which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.’
Additionally, if you’re submitting a certified copy of the foreign application, ensure that it matches the identification information provided in your priority claim. Accurate identification is essential for establishing your priority rights and avoiding potential issues during examination or litigation.
37 CFR 1.55(i) provides that the requirement for a timely filed certified copy can be satisfied if:
- The foreign application was filed in a participating foreign intellectual property office;
- The claim for priority is presented in an application data sheet, identifying the foreign application;
- The copy of the foreign application is received by the USPTO from the participating foreign intellectual property office, or a certified copy is filed, within the period specified in 37 CFR 1.55(g)(1).
The USPTO website provides information about the priority document exchange program, including participating offices and necessary information for access to foreign applications.
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In a continuing application, you can satisfy the requirement for a certified copy of a foreign application without actually filing the certified copy again. According to 37 CFR 1.55(h):
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 means that if you have already filed a certified copy in a parent application, you can simply identify that application as containing the certified copy when filing your continuing application. This approach can save time and reduce the paperwork required for perfecting priority claims in continuing applications.
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No, filing an interim copy does not replace the need for a certified copy of the foreign application. While an interim copy satisfies the timeliness requirement, a certified copy is still required. The MPEP clarifies this point:
Thus, providing an interim copy of a foreign application under 37 CFR 1.55(j) satisfies the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f), but a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate.
In essence, the interim copy allows applicants to meet initial deadlines, but they must still provide a certified copy of the foreign application during the pendency of the U.S. application, unless they file a specific petition.
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Can I file a priority claim after paying the issue fee for my patent application?
Yes, you can file a priority claim after paying the issue fee for your patent application, but it comes with additional requirements and costs. According to MPEP 213.04:
If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, it must also be accompanied by the processing fee set forth in 37 CFR 1.17(i).
This means that if you file your priority claim after paying the issue fee, you must:
- Include the priority claim or certified copy of the foreign application
- Pay the additional processing fee specified in 37 CFR 1.17(i)
- Ensure the application hasn’t been patented yet
It’s important to note that once the patent is granted, you cannot file a priority claim retroactively. Therefore, it’s always best to file your priority claim as early as possible during the application process to avoid additional fees and potential complications.
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Can I file a certified copy of a foreign application after paying the issue fee?
Yes, you can file a certified copy of a foreign application after paying the issue fee, but there are important considerations. According to MPEP 213.04, “If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.” This means that while you can still file the certified copy, it won’t automatically be included in your patent. You would need to request a certificate of correction after the patent issues to have the priority claim recognized. It’s always best to file the certified copy before paying the issue fee to avoid this additional step and potential complications.
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MPEP 200 - Types and Status of Application; Benefit and Priority Claims (12)
The certified copy of the foreign application must be filed before the patent is granted. If the certified copy is filed after payment of the issue fee but prior to the date of grant, the priority claim will be placed in the file record but the patent will not include the priority claim unless corrected after the patent is granted using a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
For applications filed under 35 U.S.C. 111(a) (other than design applications), a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim must also be filed with the certificate of correction. For all applications, a grantable petition under 37 CFR 1.55(f) or (g) must also be filed with the certificate of correction unless the priority claim was timely made but a certified copy was not yet in the file. See MPEP 215.03.
For an original application filed under 35 U.S.C. 111(a) on or after March 16, 2013, a certified copy of the foreign application must be filed within 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, except as provided in 37 CFR 1.55(h), (i), and (j). See MPEP 215.02.
For an international application entering the national stage under 35 U.S.C. 371 in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior foreign application, except as provided in 37 CFR 1.55(h), (i), and (j). See MPEP 215.02.
A certified copy of a foreign application is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. According to the MPEP, “Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information.” It’s important to note that a copy of the certified copy filed by the applicant will not satisfy the requirement for a certified copy.
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)
An ‘interim copy’ is a true copy of the original foreign application that an applicant can file to meet the timeliness requirement when they cannot obtain a certified copy within the time limit. According to 37 CFR 1.55(j), the interim copy must be clearly labeled as ‘Interim Copy’ and filed with a cover sheet stating it is a true copy of the original foreign application.
A certified copy of a foreign application is an official copy of the foreign patent application, certified by the patent office where it was filed. It is required to perfect a claim of foreign priority in a U.S. patent application.
According to 37 CFR 1.55(f), for applications filed on or after March 16, 2013:
“A certified copy of the foreign application must be filed within 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, in an original application under 35 U.S.C. 111(a) filed on or after March 16, 2013, except as provided in paragraphs (h), (i), and (j) of this section.”
There are exceptions to this requirement, such as when the foreign application was filed in a foreign intellectual property office participating in a priority document exchange agreement with the USPTO. In such cases, the applicant can request that the USPTO retrieve the certified copy electronically.
If priority papers are found to be deficient in material respects, such as failure to include the correct certified copy, applicants should ensure that there is sufficient time to remedy any defects. The MPEP advises: “Frequently, priority papers are found to be deficient in material respects, such as for example, the failure to include the correct certified copy, and applicants should ensure that there is sufficient time to remedy any defects.” It’s recommended to file priority papers as early as possible to allow time for correction if needed.
If the certified copy of the foreign application is filed after the date the issue fee is paid but prior to the date of grant of the patent, it will be placed in the file record but there will be no review of the papers. The patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the priority claim considered after publication of the patent.
A certified copy of the foreign application must be filed within the time period set in 37 CFR 1.55, which is the later of four months from the filing date of the US application or sixteen months from the foreign application filing date.
The certified copy requirement will be considered satisfied in a national stage application under 35 U.S.C. 371 if a certified copy was filed in the international application and the copy is present in the national stage application. See MPEP ยง 215.
A certified copy is also not required if the foreign priority application was filed in a participating foreign intellectual property office and the USPTO retrieves a copy via the priority document exchange program. See MPEP ยง 215.01.
An interim copy of the foreign application may also be filed to meet the timeliness requirement. See 37 CFR 1.55(j) and MPEP ยง 215.02(b).
To claim foreign priority in a U.S. patent application, you must:
1. File the U.S. application within 12 months (6 months for design applications) of the foreign filing date.
2. Submit a claim for priority identifying the foreign application.
3. File a certified copy of the foreign application.
For applications filed on or after September 16, 2012, 37 CFR 1.55(d)(1) requires that the claim for priority be presented in an application data sheet. The claim must identify the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.
A certified copy of the foreign application must also be filed within a specified time period, usually within the later of 4 months from the actual U.S. filing date or 16 months from the foreign filing date.
Yes, under 37 CFR 1.55(j), the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f) will be considered satisfied if:
- A copy of the original foreign application clearly labeled as “Interim Copy,” including the specification, and any drawings or claims upon which it is based, is filed in the Office together with a separate cover sheet identifying the foreign application and stating that the copy is a true copy of the original application as filed; and
- The copy of the foreign application and cover sheet are filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), or four months from the date the national stage commenced under 35 U.S.C. 371(b) or (f) of an international application.
However, a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. See MPEP 215.02(b).
No, a copy of the foreign patent as issued does not comply with the certified copy requirement. The MPEP states: “A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the certification indicates that it corresponds to the application as filed.” The key is that the certified copy must represent the application as originally filed, not the patent as eventually issued.
MPEP 213-Right of Priority of Foreign Application (5)
When claiming foreign priority, applicants are generally required to file a certified copy of the foreign application within a specified time period. The requirements and deadlines for filing the certified copy depend on the type of application and the circumstances of the filing.
According to MPEP 213.04: “37 CFR 1.55(g) sets forth the requirements for filing a priority claim, certified copy of foreign application, and translation that are applicable in all applications.”
Key points about the certified copy requirement include:
- The certified copy must be filed within the pendency of the application, unless filed with a petition.
- For applications filed under 35 U.S.C. 111(a), the certified copy must typically be filed within the later of four months from the actual filing date or sixteen months from the filing date of the prior foreign application.
- For national stage applications under 35 U.S.C. 371, the certified copy must be filed within the time limit set forth in the PCT and the Regulations under the PCT.
- If the certified copy is not filed within the required time period, it must be accompanied by a petition and fee, along with a showing of good and sufficient cause for the delay.
- In some cases, the requirement may be satisfied through the priority document exchange program or by identifying a previously filed application containing the certified copy.
The MPEP also notes: “If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.”
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A certified copy of a foreign application is an official copy of the foreign patent application, certified by the patent office where it was filed. It is required to perfect a claim of foreign priority in a U.S. patent application.
According to 37 CFR 1.55(f), for applications filed on or after March 16, 2013:
“A certified copy of the foreign application must be filed within 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, in an original application under 35 U.S.C. 111(a) filed on or after March 16, 2013, except as provided in paragraphs (h), (i), and (j) of this section.”
There are exceptions to this requirement, such as when the foreign application was filed in a foreign intellectual property office participating in a priority document exchange agreement with the USPTO. In such cases, the applicant can request that the USPTO retrieve the certified copy electronically.
To claim foreign priority in a U.S. application, you must file a claim for priority and submit a certified copy of the foreign application. MPEP 213.04 states: ‘The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application.’
For applications filed on or after September 16, 2012, the priority claim must be presented in an Application Data Sheet (ADS). The certified copy must be filed within the later of 4 months from the actual filing date or 16 months from the foreign filing date, with some exceptions.
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The right of priority for international applications filed under the Patent Cooperation Treaty (PCT) operates similarly to national applications, but with some specific provisions and requirements set by the PCT system.
According to MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”
Key points about priority in PCT applications include:
- The priority claim must be made in the PCT Request form or through a later correction.
- The applicant must file a certified copy of the priority document with the International Bureau within 16 months from the priority date, unless it was previously filed with the receiving Office.
- If the priority document is issued by the receiving Office, the applicant can request that Office to prepare and transmit the document to the International Bureau.
- The International Bureau will make the priority document available to designated Offices.
- For U.S. national stage entry, if the certified copy was submitted during the international phase, it generally satisfies the requirement for the U.S. application.
The MPEP further notes: “If, however, the International Bureau is unable to forward a copy of the certified priority document because the applicant failed to submit a certified copy of the foreign priority document during the international phase, the applicant will need to provide a certified copy of the priority document or have the Office retrieve the priority application in accordance with the priority document exchange program during the national stage to fulfill the requirements of 37 CFR 1.55.”
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To claim foreign priority in a U.S. patent application, you must:
1. File the U.S. application within 12 months (6 months for design applications) of the foreign filing date.
2. Submit a claim for priority identifying the foreign application.
3. File a certified copy of the foreign application.
For applications filed on or after September 16, 2012, 37 CFR 1.55(d)(1) requires that the claim for priority be presented in an application data sheet. The claim must identify the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.
A certified copy of the foreign application must also be filed within a specified time period, usually within the later of 4 months from the actual U.S. filing date or 16 months from the foreign filing date.
MPEP 214-Formal Requirements of Claim for Foreign Priority (2)
A certified copy of the foreign application must be filed within the time period set in 37 CFR 1.55, which is the later of four months from the filing date of the US application or sixteen months from the foreign application filing date.
The certified copy requirement will be considered satisfied in a national stage application under 35 U.S.C. 371 if a certified copy was filed in the international application and the copy is present in the national stage application. See MPEP ยง 215.
A certified copy is also not required if the foreign priority application was filed in a participating foreign intellectual property office and the USPTO retrieves a copy via the priority document exchange program. See MPEP ยง 215.01.
An interim copy of the foreign application may also be filed to meet the timeliness requirement. See 37 CFR 1.55(j) and MPEP ยง 215.02(b).
How do I properly identify a foreign application when claiming priority in a U.S. patent application?
When claiming priority to a foreign application in a U.S. patent application, it’s crucial to provide accurate identification information. According to MPEP 214.01, you must include the following details:
- The application number of the foreign application
- The country or intellectual property authority where the foreign application was filed
- The day, month, and year of filing of the foreign application
The MPEP states: ‘The claim for priority must identify the foreign application for which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.’
Additionally, if you’re submitting a certified copy of the foreign application, ensure that it matches the identification information provided in your priority claim. Accurate identification is essential for establishing your priority rights and avoiding potential issues during examination or litigation.
MPEP 215-Certified Copy of Foreign Application (17)
The certified copy of the foreign application must be filed before the patent is granted. If the certified copy is filed after payment of the issue fee but prior to the date of grant, the priority claim will be placed in the file record but the patent will not include the priority claim unless corrected after the patent is granted using a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
For applications filed under 35 U.S.C. 111(a) (other than design applications), a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim must also be filed with the certificate of correction. For all applications, a grantable petition under 37 CFR 1.55(f) or (g) must also be filed with the certificate of correction unless the priority claim was timely made but a certified copy was not yet in the file. See MPEP 215.03.
If the United States Patent and Trademark Office (USPTO) doesn’t receive your priority document through the Priority Document Exchange (PDX) program within the specified time frame, you have options. According to MPEP 215.02(a):
The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.
If you find yourself in this situation:
- File a certified copy of the foreign application directly with the USPTO.
- Ensure this is done during the pendency of your application and before the patent is granted.
- Consider filing a petition under 37 CFR 1.55(e) or (f) if necessary.
Remember, it’s ultimately the applicant’s responsibility to ensure the priority document is properly filed, even when using the PDX program.
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For an original application filed under 35 U.S.C. 111(a) on or after March 16, 2013, a certified copy of the foreign application must be filed within 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, except as provided in 37 CFR 1.55(h), (i), and (j). See MPEP 215.02.
For an international application entering the national stage under 35 U.S.C. 371 in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior foreign application, except as provided in 37 CFR 1.55(h), (i), and (j). See MPEP 215.02.
For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) sets the time limit for filing a certified copy of the foreign application. The certified copy must be filed within 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
This time limit does not apply to design applications. For international applications entering the national stage under 35 U.S.C. 371, the time limit is set forth in 37 CFR 1.55(f)(2).
It’s important to note that there are exceptions to these time limits, as provided in 37 CFR 1.55(h), (i), and (j).
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The priority document exchange program is a bilateral or multilateral agreement between the USPTO and participating foreign intellectual property offices that allows for the electronic exchange of priority documents. This program can satisfy the requirement for filing a certified copy of a foreign application under certain conditions.
According to 37 CFR 1.55(i), the certified copy requirement will be considered satisfied if:
- The foreign application was filed in a participating foreign intellectual property office
- The claim for priority is presented in an application data sheet (ADS)
- The applicant provides the necessary information for the participating office to provide the USPTO with access to the foreign application
- The USPTO receives a copy of the foreign application from the participating office during the pendency of the application and before the patent is granted
This provision can significantly simplify the process of meeting the certified copy requirement for applicants whose priority applications are from participating countries.
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A certified copy of a foreign application is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. According to the MPEP, “Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information.” It’s important to note that a copy of the certified copy filed by the applicant will not satisfy the requirement for a certified copy.
An ‘interim copy’ is a true copy of the original foreign application that an applicant can file to meet the timeliness requirement when they cannot obtain a certified copy within the time limit. According to 37 CFR 1.55(j), the interim copy must be clearly labeled as ‘Interim Copy’ and filed with a cover sheet stating it is a true copy of the original foreign application.
If priority papers are found to be deficient in material respects, such as failure to include the correct certified copy, applicants should ensure that there is sufficient time to remedy any defects. The MPEP advises: “Frequently, priority papers are found to be deficient in material respects, such as for example, the failure to include the correct certified copy, and applicants should ensure that there is sufficient time to remedy any defects.” It’s recommended to file priority papers as early as possible to allow time for correction if needed.
If the certified copy of the foreign application is filed after the issue fee is paid but before the patent is granted, the following occurs:
- The priority claim or certified copy will be placed in the file record
- There will be no review of the papers
- The published patent will not include the priority claim
To have the priority claim considered after publication, a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 must be filed. For original applications filed under 35 U.S.C. 111(a), additional requirements may apply, such as a petition to accept an unintentionally delayed priority claim.
This is outlined in MPEP 215.03.
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If the certified copy of the foreign application is filed after the date the issue fee is paid but prior to the date of grant of the patent, it will be placed in the file record but there will be no review of the papers. The patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the priority claim considered after publication of the patent.
What happens if a certified copy is not received within the time period set in 37 CFR 1.55(f)?
If a certified copy is not received within the time period set in 37 CFR 1.55(f), the USPTO will send a Notice of Allowance and Issue Fee Due (Notice of Allowance) with a requirement for the certified copy. As stated in the MPEP:
‘If a certified copy of the foreign application is not filed within the time period specified in 37 CFR 1.55(f) and the exceptions in 37 CFR 1.55(h), (i), and (j) are not applicable, the certified copy of the foreign application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in 37 CFR 1.17(g).’
This means that if you miss the deadline, you’ll need to file a petition explaining the delay and pay an additional fee. It’s crucial to submit the certified copy or ensure it’s retrievable through the priority document exchange program to avoid complications in the patent application process.
To use the Priority Document Exchange (PDX) program, several requirements must be met as outlined in MPEP 215.02(a):
- The foreign application must be filed in a participating foreign intellectual property office.
- The claim for priority must be presented in an application data sheet (ADS) with specific details about the foreign application.
- The copy of the foreign application must be received by the USPTO from the participating foreign office, or a certified copy must be filed, within the specified time period.
The MPEP states:
37 CFR 1.55(i) specifically provides that this requirement for a timely filed certified copy of the foreign application will be considered satisfied if: (1) The foreign application was filed in a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office); (2) the claim for priority is presented in an application data sheet (ยง1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and including the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application; and (3) the copy of the foreign application is received by the Office from the participating foreign intellectual property office, or a certified copy of the foreign application is filed, within the time period set forth in 37 CFR 1.55(g)(1)).
Meeting these requirements allows applicants to potentially avoid manually filing certified copies of foreign priority documents.
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To be entitled to priority under the PDX program, the following requirements must be met:
- The Office must receive a copy of the foreign application from the participating foreign intellectual property office within the pendency of the application and before the patent is granted, or
- The Office must receive a paper certified copy of the foreign application during that time period.
The MPEP states:
To be entitled to priority, the Office must receive a copy of the foreign application from the participating foreign intellectual property office within the pendency of the application and before the patent is granted, or receive a paper certified copy of the foreign application during that time period.
It’s crucial to note that if a certified copy is filed after the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
An interim copy of a foreign application serves as a temporary substitute for a certified copy but does not replace the requirement for a certified copy. The key differences are:
- An interim copy can be from the applicant’s own records, while a certified copy must be from the foreign patent office.
- An interim copy satisfies the initial time requirement in 37 CFR 1.55(f), but a certified copy is still required.
- An interim copy is labeled as ‘Interim Copy,’ while a certified copy has official certification from the foreign patent office.
The MPEP clarifies:
‘Thus, providing an interim copy of a foreign application under 37 CFR 1.55(j) satisfies the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f), but a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate.’
In essence, the interim copy is a temporary measure to meet deadlines, while the certified copy remains a formal requirement.
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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.
Yes, under 37 CFR 1.55(j), the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f) will be considered satisfied if:
- A copy of the original foreign application clearly labeled as “Interim Copy,” including the specification, and any drawings or claims upon which it is based, is filed in the Office together with a separate cover sheet identifying the foreign application and stating that the copy is a true copy of the original application as filed; and
- The copy of the foreign application and cover sheet are filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), or four months from the date the national stage commenced under 35 U.S.C. 371(b) or (f) of an international application.
However, a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. See MPEP 215.02(b).
No, a copy of the foreign patent as issued does not comply with the certified copy requirement. The MPEP states: “A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the certification indicates that it corresponds to the application as filed.” The key is that the certified copy must represent the application as originally filed, not the patent as eventually issued.
MPEP 216 - Entitlement to Priority (5)
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.
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.
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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)
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.
MPEP 300 - Ownership and Assignment (1)
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.
MPEP 302 - Recording of Assignment Documents (1)
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.
Patent Law (53)
The certified copy of the foreign application must be filed before the patent is granted. If the certified copy is filed after payment of the issue fee but prior to the date of grant, the priority claim will be placed in the file record but the patent will not include the priority claim unless corrected after the patent is granted using a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
For applications filed under 35 U.S.C. 111(a) (other than design applications), a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim must also be filed with the certificate of correction. For all applications, a grantable petition under 37 CFR 1.55(f) or (g) must also be filed with the certificate of correction unless the priority claim was timely made but a certified copy was not yet in the file. See MPEP 215.03.
If the United States Patent and Trademark Office (USPTO) doesn’t receive your priority document through the Priority Document Exchange (PDX) program within the specified time frame, you have options. According to MPEP 215.02(a):
The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.
If you find yourself in this situation:
- File a certified copy of the foreign application directly with the USPTO.
- Ensure this is done during the pendency of your application and before the patent is granted.
- Consider filing a petition under 37 CFR 1.55(e) or (f) if necessary.
Remember, it’s ultimately the applicant’s responsibility to ensure the priority document is properly filed, even when using the PDX program.
For more information on certified copy, visit: certified copy.
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For an original application filed under 35 U.S.C. 111(a) on or after March 16, 2013, a certified copy of the foreign application must be filed within 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, except as provided in 37 CFR 1.55(h), (i), and (j). See MPEP 215.02.
For an international application entering the national stage under 35 U.S.C. 371 in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior foreign application, except as provided in 37 CFR 1.55(h), (i), and (j). See MPEP 215.02.
For international design applications designating the United States, there is generally no specific time limit for submitting a certified copy of the priority document. The MPEP 213.07 explains:
‘In accordance with Hague Agreement Rule 7(5)(f), a copy of the priority document may be submitted to the International Bureau within three months from the date of filing of the international design application. The copy of the priority document so submitted will be considered to satisfy the requirement for a certified copy of the priority document in accordance with 37 CFR 1.55(m).’
However, it’s important to note that if the USPTO requires a certified copy for specific reasons (e.g., to overcome a reference), you may need to submit it within a specified timeframe as requested by the Office.
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What is the time limit for submitting a certified copy of a foreign application for priority claim?
The time limit for submitting a certified copy of a foreign application for a priority claim depends on the specific circumstances of your application. According to MPEP 213.04:
The time period for filing a certified copy of the foreign application in the United States application (or written statement) is no later than the date the issue fee is paid.
However, there are some exceptions and additional considerations:
- If you file the priority claim within 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, you may not need to file a certified copy immediately.
- If the foreign application was filed in a foreign intellectual property office participating in a priority document exchange agreement with the USPTO, the exchange may satisfy the certified copy requirement.
- In some cases, an interim copy of the foreign application or a statement that the copy was previously filed may be sufficient.
Note: While it’s possible to file the certified copy after paying the issue fee, it requires an additional processing fee and must be done before the patent is granted. To avoid complications and extra fees, it’s best to submit the certified copy as early as possible during the application process.
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The time limit for filing a certified copy of a foreign application depends on the type of application:
- For applications under 35 U.S.C. 111(a):
A certified copy of the foreign application must be filed within 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,
as stated in 37 CFR 1.55(f)(1). - For applications under 35 U.S.C. 371 (national stage applications):
A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT,
as per 37 CFR 1.55(f)(2).
If these time limits are not met, a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in ยง 1.17(g) must accompany the certified copy.
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For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) sets the time limit for filing a certified copy of the foreign application. The certified copy must be filed within 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
This time limit does not apply to design applications. For international applications entering the national stage under 35 U.S.C. 371, the time limit is set forth in 37 CFR 1.55(f)(2).
It’s important to note that there are exceptions to these time limits, as provided in 37 CFR 1.55(h), (i), and (j).
For more information on certified copy, visit: certified copy.
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For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) requires that a certified copy of the foreign application be filed within 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
This time period does not apply to design applications. There are three exceptions to this requirement, as outlined in 37 CFR 1.55(h), (i), and (j).
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What is the significance of the four-month time period in filing a certified copy?
The four-month time period is significant in filing a certified copy of a foreign application for priority claims. According to MPEP 213.04, “If the certified copy is not filed within the four-month period, the certified copy must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee.” This means that if you file the certified copy within four months of the actual filing date of the application (or entry into the national stage for PCT applications), you don’t need to provide any explanation or pay additional fees. However, if you miss this four-month window, you’ll need to file a petition explaining the delay and pay an additional fee. This rule encourages prompt filing of priority documents and helps streamline the examination process.
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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.
When claiming foreign priority, applicants are generally required to file a certified copy of the foreign application within a specified time period. The requirements and deadlines for filing the certified copy depend on the type of application and the circumstances of the filing.
According to MPEP 213.04: “37 CFR 1.55(g) sets forth the requirements for filing a priority claim, certified copy of foreign application, and translation that are applicable in all applications.”
Key points about the certified copy requirement include:
- The certified copy must be filed within the pendency of the application, unless filed with a petition.
- For applications filed under 35 U.S.C. 111(a), the certified copy must typically be filed within the later of four months from the actual filing date or sixteen months from the filing date of the prior foreign application.
- For national stage applications under 35 U.S.C. 371, the certified copy must be filed within the time limit set forth in the PCT and the Regulations under the PCT.
- If the certified copy is not filed within the required time period, it must be accompanied by a petition and fee, along with a showing of good and sufficient cause for the delay.
- In some cases, the requirement may be satisfied through the priority document exchange program or by identifying a previously filed application containing the certified copy.
The MPEP also notes: “If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.”
For more information on certified copy, visit: certified copy.
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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.
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The priority document exchange program is a bilateral or multilateral agreement between the USPTO and participating foreign intellectual property offices that allows for the electronic exchange of priority documents. This program can satisfy the requirement for filing a certified copy of a foreign application under certain conditions.
According to 37 CFR 1.55(i), the certified copy requirement will be considered satisfied if:
- The foreign application was filed in a participating foreign intellectual property office
- The claim for priority is presented in an application data sheet (ADS)
- The applicant provides the necessary information for the participating office to provide the USPTO with access to the foreign application
- The USPTO receives a copy of the foreign application from the participating office during the pendency of the application and before the patent is granted
This provision can significantly simplify the process of meeting the certified copy requirement for applicants whose priority applications are from participating countries.
For more information on certified copy, visit: certified copy.
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For more information on priority document exchange, visit: priority document exchange.
The deadline for submitting a certified copy of a foreign priority application depends on the filing date of the U.S. application. According to MPEP 213.02:
In the case of a U.S. application filed on or after March 16, 2013, the certified copy must be filed within 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.
If the certified copy is not filed within this timeframe, the applicant must file a petition to accept a delayed submission and pay the associated fee.
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For applications filed before March 16, 2013, the certified copy of the foreign application must be filed within the pendency of the application. According to 37 CFR 1.55(g)(1):
The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in ยง 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application.
However, it’s important to note that if the claim for priority or the certified copy is filed after the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction.
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A certified copy of a foreign application is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. According to the MPEP, “Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information.” It’s important to note that a copy of the certified copy filed by the applicant will not satisfy the requirement for a certified copy.
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)
An interim copy of a foreign priority document is a copy that is submitted before the certified copy is available. The MPEP 213.02 provides guidance on when an interim copy is acceptable:
The Office may require that an ‘interim copy’ of the foreign application be furnished in the event that the certified copy of the foreign application is not filed within the time period set forth in 37 CFR 1.55(f) and an exception in 37 CFR 1.55(h), (i), or (j) is not applicable.
An interim copy must:
- Be filed within the later of 4 months from the filing date of the application or 16 months from the filing date of the prior foreign application
- Be a copy of the original foreign application
- Be accompanied by a statement that the copy is a true copy
Note: An interim copy does not substitute the requirement for a certified copy, which must still be filed during the pendency of the application.
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An ‘interim copy’ is a true copy of the original foreign application that an applicant can file to meet the timeliness requirement when they cannot obtain a certified copy within the time limit. According to 37 CFR 1.55(j), the interim copy must be clearly labeled as ‘Interim Copy’ and filed with a cover sheet stating it is a true copy of the original foreign application.
An ‘interim copy’ is a mechanism provided by 37 CFR 1.55(j) that allows applicants to meet the timeliness requirement for submitting a certified copy of a foreign application. It’s a copy of the original foreign application that the applicant can provide from their own records when they cannot obtain a certified copy within the time limit set by 37 CFR 1.55(f).
The MPEP states: 37 CFR 1.55(j) permits an applicant to provide an ‘interim copy’ of the original foreign application from the applicant’s own records to provide for the situation in which the applicant cannot obtain a certified copy of the foreign application within the time limit set forth in 37 CFR 1.55(f), although there is no requirement that an applicant be unable to obtain a certified copy of the foreign application within the time limit set forth in 37 CFR 1.55(f) to use 37 CFR 1.55(j).
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37 CFR 1.55(j) allows an applicant to provide an ‘interim copy’ of the original foreign application to satisfy the requirement for a certified copy to be filed within the time limit set in 37 CFR 1.55(f). An interim copy must:
- Be clearly labeled as ‘Interim Copy’
- Include the specification, drawings, and claims of the foreign application
- Be filed with a separate cover sheet identifying the foreign application
- Be filed within the later of 16 months from the foreign filing date or 4 months from the actual U.S. filing date
A certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g).
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A certified copy of a foreign application is an official copy of the foreign patent application, certified by the patent office where it was filed. It is required to perfect a claim of foreign priority in a U.S. patent application.
According to 37 CFR 1.55(f), for applications filed on or after March 16, 2013:
“A certified copy of the foreign application must be filed within 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, in an original application under 35 U.S.C. 111(a) filed on or after March 16, 2013, except as provided in paragraphs (h), (i), and (j) of this section.”
There are exceptions to this requirement, such as when the foreign application was filed in a foreign intellectual property office participating in a priority document exchange agreement with the USPTO. In such cases, the applicant can request that the USPTO retrieve the certified copy electronically.
If priority papers are found to be deficient in material respects, such as failure to include the correct certified copy, applicants should ensure that there is sufficient time to remedy any defects. The MPEP advises: “Frequently, priority papers are found to be deficient in material respects, such as for example, the failure to include the correct certified copy, and applicants should ensure that there is sufficient time to remedy any defects.” It’s recommended to file priority papers as early as possible to allow time for correction if needed.
If the certified copy of the foreign application is filed after the issue fee is paid but before the patent is granted, the following occurs:
- The priority claim or certified copy will be placed in the file record
- There will be no review of the papers
- The published patent will not include the priority claim
To have the priority claim considered after publication, a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 must be filed. For original applications filed under 35 U.S.C. 111(a), additional requirements may apply, such as a petition to accept an unintentionally delayed priority claim.
This is outlined in MPEP 215.03.
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If the certified copy of the foreign application is filed after the date the issue fee is paid but prior to the date of grant of the patent, it will be placed in the file record but there will be no review of the papers. The patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the priority claim considered after publication of the patent.
What happens if I fail to file a priority claim during the pendency of my application?
If you fail to file a priority claim during the pendency of your application, you may lose the right to claim priority. According to MPEP 213.04:
If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, it must also be accompanied by the processing fee set forth in 37 CFR 1.17(i).
This means that if you miss the deadline to file your priority claim before the issue fee is paid, you’ll need to pay an additional processing fee. Moreover, if the application has already been patented, you cannot file a priority claim retroactively.
It’s crucial to file your priority claim as early as possible during the pendency of your application to avoid potential complications or additional fees.
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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.
If a priority document is not timely retrieved through the PDX program, there can be significant consequences for the patent application. According to MPEP 215.02(a):
“If the priority document is not retrieved within the time period set in 37 CFR 1.55(g)(1), the applicant is notified and given a time period within which to file the certified copy in accordance with 37 CFR 1.55(g)(1).”
Consequences of untimely retrieval:
- Applicant receives a notification of non-retrieval
- A time limit is set for manual submission of the certified copy
- Failure to submit within the time limit may result in loss of priority claim
- Additional fees may be required for late submission
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If a certified copy of the priority document is not filed within the time limit in a U.S. national stage application, the following consequences may occur:
- The right to priority may be lost if the certified copy is not filed within the time period set in 37 CFR 1.55.
- However, if the certified copy is filed after the time period set in 37 CFR 1.55 but during the pendency of the application, the right to priority may be restored under certain conditions.
- According to MPEP 213.06, ‘If the certified copy is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.’
It’s crucial to file the certified copy within the specified time limit to avoid potential complications in claiming priority.
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What happens if a certified copy is not received within the time period set in 37 CFR 1.55(f)?
If a certified copy is not received within the time period set in 37 CFR 1.55(f), the USPTO will send a Notice of Allowance and Issue Fee Due (Notice of Allowance) with a requirement for the certified copy. As stated in the MPEP:
‘If a certified copy of the foreign application is not filed within the time period specified in 37 CFR 1.55(f) and the exceptions in 37 CFR 1.55(h), (i), and (j) are not applicable, the certified copy of the foreign application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in 37 CFR 1.17(g).’
This means that if you miss the deadline, you’ll need to file a petition explaining the delay and pay an additional fee. It’s crucial to submit the certified copy or ensure it’s retrievable through the priority document exchange program to avoid complications in the patent application process.
To claim foreign priority in a U.S. application, you must file a claim for priority and submit a certified copy of the foreign application. MPEP 213.04 states: ‘The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application.’
For applications filed on or after September 16, 2012, the priority claim must be presented in an Application Data Sheet (ADS). The certified copy must be filed within the later of 4 months from the actual filing date or 16 months from the foreign filing date, with some exceptions.
For more information on certified copy, visit: certified copy.
For more information on foreign priority, visit: foreign priority.
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.
The time limits for filing a certified copy in an international design application are:
- General rule: Within the later of four months from the filing date of the international design application, or sixteen months from the filing date of the prior foreign application.
- Exception: These time limits do not apply if the priority document is available to the Office from a participating digital library.
MPEP 213.07 specifies: The time period requirement in 37 CFR 1.55(f) for filing a certified copy of the foreign application in a nonprovisional international design application is the later of four months from the filing date of the international design application, or sixteen months from the filing date of the prior foreign application, except as provided in paragraphs (h), (i), and (j) of this section.
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To use the Priority Document Exchange (PDX) program, several requirements must be met as outlined in MPEP 215.02(a):
- The foreign application must be filed in a participating foreign intellectual property office.
- The claim for priority must be presented in an application data sheet (ADS) with specific details about the foreign application.
- The copy of the foreign application must be received by the USPTO from the participating foreign office, or a certified copy must be filed, within the specified time period.
The MPEP states:
37 CFR 1.55(i) specifically provides that this requirement for a timely filed certified copy of the foreign application will be considered satisfied if: (1) The foreign application was filed in a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office); (2) the claim for priority is presented in an application data sheet (ยง1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and including the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application; and (3) the copy of the foreign application is received by the Office from the participating foreign intellectual property office, or a certified copy of the foreign application is filed, within the time period set forth in 37 CFR 1.55(g)(1)).
Meeting these requirements allows applicants to potentially avoid manually filing certified copies of foreign priority documents.
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A certified copy of the foreign application must be filed within the time period set in 37 CFR 1.55, which is the later of four months from the filing date of the US application or sixteen months from the foreign application filing date.
The certified copy requirement will be considered satisfied in a national stage application under 35 U.S.C. 371 if a certified copy was filed in the international application and the copy is present in the national stage application. See MPEP ยง 215.
A certified copy is also not required if the foreign priority application was filed in a participating foreign intellectual property office and the USPTO retrieves a copy via the priority document exchange program. See MPEP ยง 215.01.
An interim copy of the foreign application may also be filed to meet the timeliness requirement. See 37 CFR 1.55(j) and MPEP ยง 215.02(b).
What are the requirements for submitting an interim copy of a foreign priority application?
Submitting an interim copy of a foreign priority application can be useful when there are delays in obtaining a certified copy. According to MPEP 213.04, here are the requirements:
37 CFR 1.55(j) provides that an applicant who has not filed a certified copy of the foreign application may file an interim copy of the foreign application during the pendency of the application.
To submit an interim copy:
- It must be filed during the pendency of the application
- The copy must be clearly labeled as ‘Interim Copy’
- Include a cover sheet identifying:
- The application number
- The foreign application number
- The country or intellectual property office
- The filing date
- The interim copy must be a legible copy of the foreign application
Note: An interim copy does not satisfy the requirement for a certified copy. You must still submit a certified copy of the foreign application before the patent is granted.
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What are the requirements for filing a priority claim and certified copy of a foreign application?
According to 37 CFR 1.55(g)(1), the claim for priority and the certified copy of the foreign application must be filed within the pendency of the application. The MPEP states:
“The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in ยง 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application.”
This requirement applies to all applications and ensures that priority claims are properly documented before the application is granted.
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For national stage applications under 35 U.S.C. 371, the requirements for filing a certified copy of a foreign application are outlined in 37 CFR 1.55(f)(2). The MPEP states:
A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371.
If the certified copy was not filed during the international stage, it must be filed within the later of:
- Four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f)
- Four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage
- Sixteen months from the filing date of the prior foreign application
Exceptions to these time limits are provided in paragraphs (h), (i), and (j) of 37 CFR 1.55.
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To be entitled to priority under the PDX program, the following requirements must be met:
- The Office must receive a copy of the foreign application from the participating foreign intellectual property office within the pendency of the application and before the patent is granted, or
- The Office must receive a paper certified copy of the foreign application during that time period.
The MPEP states:
To be entitled to priority, the Office must receive a copy of the foreign application from the participating foreign intellectual property office within the pendency of the application and before the patent is granted, or receive a paper certified copy of the foreign application during that time period.
It’s crucial to note that if a certified copy is filed after the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
What are the requirements for claiming priority to a foreign application?
To claim priority to a foreign application, several requirements must be met:
- The U.S. application must be filed within 12 months of the foreign application (or 6 months for design patents).
- The foreign application must be from a country that grants similar privileges to U.S. applicants (Paris Convention member or WTO member).
- The applicant must file a claim for priority and a certified copy of the foreign application.
- As stated in MPEP 213: “The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed before the patent is granted.”
It’s important to note that the subject matter claimed in the U.S. application must be adequately supported by the foreign application to receive the benefit of the earlier filing date.
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An interim copy of a foreign application serves as a temporary substitute for a certified copy but does not replace the requirement for a certified copy. The key differences are:
- An interim copy can be from the applicant’s own records, while a certified copy must be from the foreign patent office.
- An interim copy satisfies the initial time requirement in 37 CFR 1.55(f), but a certified copy is still required.
- An interim copy is labeled as ‘Interim Copy,’ while a certified copy has official certification from the foreign patent office.
The MPEP clarifies:
‘Thus, providing an interim copy of a foreign application under 37 CFR 1.55(j) satisfies the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f), but a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate.’
In essence, the interim copy is a temporary measure to meet deadlines, while the certified copy remains a formal requirement.
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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 right of priority for international applications filed under the Patent Cooperation Treaty (PCT) operates similarly to national applications, but with some specific provisions and requirements set by the PCT system.
According to MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”
Key points about priority in PCT applications include:
- The priority claim must be made in the PCT Request form or through a later correction.
- The applicant must file a certified copy of the priority document with the International Bureau within 16 months from the priority date, unless it was previously filed with the receiving Office.
- If the priority document is issued by the receiving Office, the applicant can request that Office to prepare and transmit the document to the International Bureau.
- The International Bureau will make the priority document available to designated Offices.
- For U.S. national stage entry, if the certified copy was submitted during the international phase, it generally satisfies the requirement for the U.S. application.
The MPEP further notes: “If, however, the International Bureau is unable to forward a copy of the certified priority document because the applicant failed to submit a certified copy of the foreign priority document during the international phase, the applicant will need to provide a certified copy of the priority document or have the Office retrieve the priority application in accordance with the priority document exchange program during the national stage to fulfill the requirements of 37 CFR 1.55.”
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How do I properly identify a foreign application when claiming priority in a U.S. patent application?
When claiming priority to a foreign application in a U.S. patent application, it’s crucial to provide accurate identification information. According to MPEP 214.01, you must include the following details:
- The application number of the foreign application
- The country or intellectual property authority where the foreign application was filed
- The day, month, and year of filing of the foreign application
The MPEP states: ‘The claim for priority must identify the foreign application for which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.’
Additionally, if you’re submitting a certified copy of the foreign application, ensure that it matches the identification information provided in your priority claim. Accurate identification is essential for establishing your priority rights and avoiding potential issues during examination or litigation.
To claim foreign priority in a U.S. patent application, you must:
1. File the U.S. application within 12 months (6 months for design applications) of the foreign filing date.
2. Submit a claim for priority identifying the foreign application.
3. File a certified copy of the foreign application.
For applications filed on or after September 16, 2012, 37 CFR 1.55(d)(1) requires that the claim for priority be presented in an application data sheet. The claim must identify the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.
A certified copy of the foreign application must also be filed within a specified time period, usually within the later of 4 months from the actual U.S. filing date or 16 months from the foreign filing date.
37 CFR 1.55(i) provides that the requirement for a timely filed certified copy can be satisfied if:
- The foreign application was filed in a participating foreign intellectual property office;
- The claim for priority is presented in an application data sheet, identifying the foreign application;
- The copy of the foreign application is received by the USPTO from the participating foreign intellectual property office, or a certified copy is filed, within the period specified in 37 CFR 1.55(g)(1).
The USPTO website provides information about the priority document exchange program, including participating offices and necessary information for access to foreign applications.
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In a continuing application, you can satisfy the requirement for a certified copy of a foreign application without actually filing the certified copy again. According to 37 CFR 1.55(h):
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 means that if you have already filed a certified copy in a parent application, you can simply identify that application as containing the certified copy when filing your continuing application. This approach can save time and reduce the paperwork required for perfecting priority claims in continuing applications.
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No, filing an interim copy does not replace the need for a certified copy of the foreign application. While an interim copy satisfies the timeliness requirement, a certified copy is still required. The MPEP clarifies this point:
Thus, providing an interim copy of a foreign application under 37 CFR 1.55(j) satisfies the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f), but a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate.
In essence, the interim copy allows applicants to meet initial deadlines, but they must still provide a certified copy of the foreign application during the pendency of the U.S. application, unless they file a specific petition.
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Can I file a priority claim after paying the issue fee for my patent application?
Yes, you can file a priority claim after paying the issue fee for your patent application, but it comes with additional requirements and costs. According to MPEP 213.04:
If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, it must also be accompanied by the processing fee set forth in 37 CFR 1.17(i).
This means that if you file your priority claim after paying the issue fee, you must:
- Include the priority claim or certified copy of the foreign application
- Pay the additional processing fee specified in 37 CFR 1.17(i)
- Ensure the application hasn’t been patented yet
It’s important to note that once the patent is granted, you cannot file a priority claim retroactively. Therefore, it’s always best to file your priority claim as early as possible during the application process to avoid additional fees and potential complications.
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Can I file a certified copy of a foreign application after paying the issue fee?
Yes, you can file a certified copy of a foreign application after paying the issue fee, but there are important considerations. According to MPEP 213.04, “If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.” This means that while you can still file the certified copy, it won’t automatically be included in your patent. You would need to request a certificate of correction after the patent issues to have the priority claim recognized. It’s always best to file the certified copy before paying the issue fee to avoid this additional step and potential complications.
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Yes, under 37 CFR 1.55(j), the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f) will be considered satisfied if:
- A copy of the original foreign application clearly labeled as “Interim Copy,” including the specification, and any drawings or claims upon which it is based, is filed in the Office together with a separate cover sheet identifying the foreign application and stating that the copy is a true copy of the original application as filed; and
- The copy of the foreign application and cover sheet are filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), or four months from the date the national stage commenced under 35 U.S.C. 371(b) or (f) of an international application.
However, a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. See MPEP 215.02(b).
No, a copy of the foreign patent as issued does not comply with the certified copy requirement. The MPEP states: “A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the certification indicates that it corresponds to the application as filed.” The key is that the certified copy must represent the application as originally filed, not the patent as eventually issued.
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The certified copy of the foreign application must be filed before the patent is granted. If the certified copy is filed after payment of the issue fee but prior to the date of grant, the priority claim will be placed in the file record but the patent will not include the priority claim unless corrected after the patent is granted using a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
For applications filed under 35 U.S.C. 111(a) (other than design applications), a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim must also be filed with the certificate of correction. For all applications, a grantable petition under 37 CFR 1.55(f) or (g) must also be filed with the certificate of correction unless the priority claim was timely made but a certified copy was not yet in the file. See MPEP 215.03.
If the United States Patent and Trademark Office (USPTO) doesn’t receive your priority document through the Priority Document Exchange (PDX) program within the specified time frame, you have options. According to MPEP 215.02(a):
The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.
If you find yourself in this situation:
- File a certified copy of the foreign application directly with the USPTO.
- Ensure this is done during the pendency of your application and before the patent is granted.
- Consider filing a petition under 37 CFR 1.55(e) or (f) if necessary.
Remember, it’s ultimately the applicant’s responsibility to ensure the priority document is properly filed, even when using the PDX program.
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For an original application filed under 35 U.S.C. 111(a) on or after March 16, 2013, a certified copy of the foreign application must be filed within 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, except as provided in 37 CFR 1.55(h), (i), and (j). See MPEP 215.02.
For an international application entering the national stage under 35 U.S.C. 371 in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior foreign application, except as provided in 37 CFR 1.55(h), (i), and (j). See MPEP 215.02.
For international design applications designating the United States, there is generally no specific time limit for submitting a certified copy of the priority document. The MPEP 213.07 explains:
‘In accordance with Hague Agreement Rule 7(5)(f), a copy of the priority document may be submitted to the International Bureau within three months from the date of filing of the international design application. The copy of the priority document so submitted will be considered to satisfy the requirement for a certified copy of the priority document in accordance with 37 CFR 1.55(m).’
However, it’s important to note that if the USPTO requires a certified copy for specific reasons (e.g., to overcome a reference), you may need to submit it within a specified timeframe as requested by the Office.
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What is the time limit for submitting a certified copy of a foreign application for priority claim?
The time limit for submitting a certified copy of a foreign application for a priority claim depends on the specific circumstances of your application. According to MPEP 213.04:
The time period for filing a certified copy of the foreign application in the United States application (or written statement) is no later than the date the issue fee is paid.
However, there are some exceptions and additional considerations:
- If you file the priority claim within 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, you may not need to file a certified copy immediately.
- If the foreign application was filed in a foreign intellectual property office participating in a priority document exchange agreement with the USPTO, the exchange may satisfy the certified copy requirement.
- In some cases, an interim copy of the foreign application or a statement that the copy was previously filed may be sufficient.
Note: While it’s possible to file the certified copy after paying the issue fee, it requires an additional processing fee and must be done before the patent is granted. To avoid complications and extra fees, it’s best to submit the certified copy as early as possible during the application process.
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The time limit for filing a certified copy of a foreign application depends on the type of application:
- For applications under 35 U.S.C. 111(a):
A certified copy of the foreign application must be filed within 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,
as stated in 37 CFR 1.55(f)(1). - For applications under 35 U.S.C. 371 (national stage applications):
A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT,
as per 37 CFR 1.55(f)(2).
If these time limits are not met, a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in ยง 1.17(g) must accompany the certified copy.
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For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) sets the time limit for filing a certified copy of the foreign application. The certified copy must be filed within 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
This time limit does not apply to design applications. For international applications entering the national stage under 35 U.S.C. 371, the time limit is set forth in 37 CFR 1.55(f)(2).
It’s important to note that there are exceptions to these time limits, as provided in 37 CFR 1.55(h), (i), and (j).
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For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) requires that a certified copy of the foreign application be filed within 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
This time period does not apply to design applications. There are three exceptions to this requirement, as outlined in 37 CFR 1.55(h), (i), and (j).
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What is the significance of the four-month time period in filing a certified copy?
The four-month time period is significant in filing a certified copy of a foreign application for priority claims. According to MPEP 213.04, “If the certified copy is not filed within the four-month period, the certified copy must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee.” This means that if you file the certified copy within four months of the actual filing date of the application (or entry into the national stage for PCT applications), you don’t need to provide any explanation or pay additional fees. However, if you miss this four-month window, you’ll need to file a petition explaining the delay and pay an additional fee. This rule encourages prompt filing of priority documents and helps streamline the examination process.
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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.
When claiming foreign priority, applicants are generally required to file a certified copy of the foreign application within a specified time period. The requirements and deadlines for filing the certified copy depend on the type of application and the circumstances of the filing.
According to MPEP 213.04: “37 CFR 1.55(g) sets forth the requirements for filing a priority claim, certified copy of foreign application, and translation that are applicable in all applications.”
Key points about the certified copy requirement include:
- The certified copy must be filed within the pendency of the application, unless filed with a petition.
- For applications filed under 35 U.S.C. 111(a), the certified copy must typically be filed within the later of four months from the actual filing date or sixteen months from the filing date of the prior foreign application.
- For national stage applications under 35 U.S.C. 371, the certified copy must be filed within the time limit set forth in the PCT and the Regulations under the PCT.
- If the certified copy is not filed within the required time period, it must be accompanied by a petition and fee, along with a showing of good and sufficient cause for the delay.
- In some cases, the requirement may be satisfied through the priority document exchange program or by identifying a previously filed application containing the certified copy.
The MPEP also notes: “If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.”
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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.
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The priority document exchange program is a bilateral or multilateral agreement between the USPTO and participating foreign intellectual property offices that allows for the electronic exchange of priority documents. This program can satisfy the requirement for filing a certified copy of a foreign application under certain conditions.
According to 37 CFR 1.55(i), the certified copy requirement will be considered satisfied if:
- The foreign application was filed in a participating foreign intellectual property office
- The claim for priority is presented in an application data sheet (ADS)
- The applicant provides the necessary information for the participating office to provide the USPTO with access to the foreign application
- The USPTO receives a copy of the foreign application from the participating office during the pendency of the application and before the patent is granted
This provision can significantly simplify the process of meeting the certified copy requirement for applicants whose priority applications are from participating countries.
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The deadline for submitting a certified copy of a foreign priority application depends on the filing date of the U.S. application. According to MPEP 213.02:
In the case of a U.S. application filed on or after March 16, 2013, the certified copy must be filed within 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.
If the certified copy is not filed within this timeframe, the applicant must file a petition to accept a delayed submission and pay the associated fee.
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For applications filed before March 16, 2013, the certified copy of the foreign application must be filed within the pendency of the application. According to 37 CFR 1.55(g)(1):
The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in ยง 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application.
However, it’s important to note that if the claim for priority or the certified copy is filed after the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction.
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A certified copy of a foreign application is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. According to the MPEP, “Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information.” It’s important to note that a copy of the certified copy filed by the applicant will not satisfy the requirement for a certified copy.
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.
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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)
An interim copy of a foreign priority document is a copy that is submitted before the certified copy is available. The MPEP 213.02 provides guidance on when an interim copy is acceptable:
The Office may require that an ‘interim copy’ of the foreign application be furnished in the event that the certified copy of the foreign application is not filed within the time period set forth in 37 CFR 1.55(f) and an exception in 37 CFR 1.55(h), (i), or (j) is not applicable.
An interim copy must:
- Be filed within the later of 4 months from the filing date of the application or 16 months from the filing date of the prior foreign application
- Be a copy of the original foreign application
- Be accompanied by a statement that the copy is a true copy
Note: An interim copy does not substitute the requirement for a certified copy, which must still be filed during the pendency of the application.
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An ‘interim copy’ is a true copy of the original foreign application that an applicant can file to meet the timeliness requirement when they cannot obtain a certified copy within the time limit. According to 37 CFR 1.55(j), the interim copy must be clearly labeled as ‘Interim Copy’ and filed with a cover sheet stating it is a true copy of the original foreign application.
An ‘interim copy’ is a mechanism provided by 37 CFR 1.55(j) that allows applicants to meet the timeliness requirement for submitting a certified copy of a foreign application. It’s a copy of the original foreign application that the applicant can provide from their own records when they cannot obtain a certified copy within the time limit set by 37 CFR 1.55(f).
The MPEP states: 37 CFR 1.55(j) permits an applicant to provide an ‘interim copy’ of the original foreign application from the applicant’s own records to provide for the situation in which the applicant cannot obtain a certified copy of the foreign application within the time limit set forth in 37 CFR 1.55(f), although there is no requirement that an applicant be unable to obtain a certified copy of the foreign application within the time limit set forth in 37 CFR 1.55(f) to use 37 CFR 1.55(j).
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37 CFR 1.55(j) allows an applicant to provide an ‘interim copy’ of the original foreign application to satisfy the requirement for a certified copy to be filed within the time limit set in 37 CFR 1.55(f). An interim copy must:
- Be clearly labeled as ‘Interim Copy’
- Include the specification, drawings, and claims of the foreign application
- Be filed with a separate cover sheet identifying the foreign application
- Be filed within the later of 16 months from the foreign filing date or 4 months from the actual U.S. filing date
A certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g).
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A certified copy of a foreign application is an official copy of the foreign patent application, certified by the patent office where it was filed. It is required to perfect a claim of foreign priority in a U.S. patent application.
According to 37 CFR 1.55(f), for applications filed on or after March 16, 2013:
“A certified copy of the foreign application must be filed within 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, in an original application under 35 U.S.C. 111(a) filed on or after March 16, 2013, except as provided in paragraphs (h), (i), and (j) of this section.”
There are exceptions to this requirement, such as when the foreign application was filed in a foreign intellectual property office participating in a priority document exchange agreement with the USPTO. In such cases, the applicant can request that the USPTO retrieve the certified copy electronically.
If priority papers are found to be deficient in material respects, such as failure to include the correct certified copy, applicants should ensure that there is sufficient time to remedy any defects. The MPEP advises: “Frequently, priority papers are found to be deficient in material respects, such as for example, the failure to include the correct certified copy, and applicants should ensure that there is sufficient time to remedy any defects.” It’s recommended to file priority papers as early as possible to allow time for correction if needed.
If the certified copy of the foreign application is filed after the issue fee is paid but before the patent is granted, the following occurs:
- The priority claim or certified copy will be placed in the file record
- There will be no review of the papers
- The published patent will not include the priority claim
To have the priority claim considered after publication, a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 must be filed. For original applications filed under 35 U.S.C. 111(a), additional requirements may apply, such as a petition to accept an unintentionally delayed priority claim.
This is outlined in MPEP 215.03.
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If the certified copy of the foreign application is filed after the date the issue fee is paid but prior to the date of grant of the patent, it will be placed in the file record but there will be no review of the papers. The patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the priority claim considered after publication of the patent.
What happens if I fail to file a priority claim during the pendency of my application?
If you fail to file a priority claim during the pendency of your application, you may lose the right to claim priority. According to MPEP 213.04:
If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, it must also be accompanied by the processing fee set forth in 37 CFR 1.17(i).
This means that if you miss the deadline to file your priority claim before the issue fee is paid, you’ll need to pay an additional processing fee. Moreover, if the application has already been patented, you cannot file a priority claim retroactively.
It’s crucial to file your priority claim as early as possible during the pendency of your application to avoid potential complications or additional fees.
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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.
If a priority document is not timely retrieved through the PDX program, there can be significant consequences for the patent application. According to MPEP 215.02(a):
“If the priority document is not retrieved within the time period set in 37 CFR 1.55(g)(1), the applicant is notified and given a time period within which to file the certified copy in accordance with 37 CFR 1.55(g)(1).”
Consequences of untimely retrieval:
- Applicant receives a notification of non-retrieval
- A time limit is set for manual submission of the certified copy
- Failure to submit within the time limit may result in loss of priority claim
- Additional fees may be required for late submission
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If a certified copy of the priority document is not filed within the time limit in a U.S. national stage application, the following consequences may occur:
- The right to priority may be lost if the certified copy is not filed within the time period set in 37 CFR 1.55.
- However, if the certified copy is filed after the time period set in 37 CFR 1.55 but during the pendency of the application, the right to priority may be restored under certain conditions.
- According to MPEP 213.06, ‘If the certified copy is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.’
It’s crucial to file the certified copy within the specified time limit to avoid potential complications in claiming priority.
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What happens if a certified copy is not received within the time period set in 37 CFR 1.55(f)?
If a certified copy is not received within the time period set in 37 CFR 1.55(f), the USPTO will send a Notice of Allowance and Issue Fee Due (Notice of Allowance) with a requirement for the certified copy. As stated in the MPEP:
‘If a certified copy of the foreign application is not filed within the time period specified in 37 CFR 1.55(f) and the exceptions in 37 CFR 1.55(h), (i), and (j) are not applicable, the certified copy of the foreign application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in 37 CFR 1.17(g).’
This means that if you miss the deadline, you’ll need to file a petition explaining the delay and pay an additional fee. It’s crucial to submit the certified copy or ensure it’s retrievable through the priority document exchange program to avoid complications in the patent application process.
To claim foreign priority in a U.S. application, you must file a claim for priority and submit a certified copy of the foreign application. MPEP 213.04 states: ‘The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application.’
For applications filed on or after September 16, 2012, the priority claim must be presented in an Application Data Sheet (ADS). The certified copy must be filed within the later of 4 months from the actual filing date or 16 months from the foreign filing date, with some exceptions.
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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.
The time limits for filing a certified copy in an international design application are:
- General rule: Within the later of four months from the filing date of the international design application, or sixteen months from the filing date of the prior foreign application.
- Exception: These time limits do not apply if the priority document is available to the Office from a participating digital library.
MPEP 213.07 specifies: The time period requirement in 37 CFR 1.55(f) for filing a certified copy of the foreign application in a nonprovisional international design application is the later of four months from the filing date of the international design application, or sixteen months from the filing date of the prior foreign application, except as provided in paragraphs (h), (i), and (j) of this section.
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To use the Priority Document Exchange (PDX) program, several requirements must be met as outlined in MPEP 215.02(a):
- The foreign application must be filed in a participating foreign intellectual property office.
- The claim for priority must be presented in an application data sheet (ADS) with specific details about the foreign application.
- The copy of the foreign application must be received by the USPTO from the participating foreign office, or a certified copy must be filed, within the specified time period.
The MPEP states:
37 CFR 1.55(i) specifically provides that this requirement for a timely filed certified copy of the foreign application will be considered satisfied if: (1) The foreign application was filed in a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office); (2) the claim for priority is presented in an application data sheet (ยง1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and including the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application; and (3) the copy of the foreign application is received by the Office from the participating foreign intellectual property office, or a certified copy of the foreign application is filed, within the time period set forth in 37 CFR 1.55(g)(1)).
Meeting these requirements allows applicants to potentially avoid manually filing certified copies of foreign priority documents.
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A certified copy of the foreign application must be filed within the time period set in 37 CFR 1.55, which is the later of four months from the filing date of the US application or sixteen months from the foreign application filing date.
The certified copy requirement will be considered satisfied in a national stage application under 35 U.S.C. 371 if a certified copy was filed in the international application and the copy is present in the national stage application. See MPEP ยง 215.
A certified copy is also not required if the foreign priority application was filed in a participating foreign intellectual property office and the USPTO retrieves a copy via the priority document exchange program. See MPEP ยง 215.01.
An interim copy of the foreign application may also be filed to meet the timeliness requirement. See 37 CFR 1.55(j) and MPEP ยง 215.02(b).
What are the requirements for submitting an interim copy of a foreign priority application?
Submitting an interim copy of a foreign priority application can be useful when there are delays in obtaining a certified copy. According to MPEP 213.04, here are the requirements:
37 CFR 1.55(j) provides that an applicant who has not filed a certified copy of the foreign application may file an interim copy of the foreign application during the pendency of the application.
To submit an interim copy:
- It must be filed during the pendency of the application
- The copy must be clearly labeled as ‘Interim Copy’
- Include a cover sheet identifying:
- The application number
- The foreign application number
- The country or intellectual property office
- The filing date
- The interim copy must be a legible copy of the foreign application
Note: An interim copy does not satisfy the requirement for a certified copy. You must still submit a certified copy of the foreign application before the patent is granted.
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What are the requirements for filing a priority claim and certified copy of a foreign application?
According to 37 CFR 1.55(g)(1), the claim for priority and the certified copy of the foreign application must be filed within the pendency of the application. The MPEP states:
“The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in ยง 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application.”
This requirement applies to all applications and ensures that priority claims are properly documented before the application is granted.
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For national stage applications under 35 U.S.C. 371, the requirements for filing a certified copy of a foreign application are outlined in 37 CFR 1.55(f)(2). The MPEP states:
A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371.
If the certified copy was not filed during the international stage, it must be filed within the later of:
- Four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f)
- Four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage
- Sixteen months from the filing date of the prior foreign application
Exceptions to these time limits are provided in paragraphs (h), (i), and (j) of 37 CFR 1.55.
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To be entitled to priority under the PDX program, the following requirements must be met:
- The Office must receive a copy of the foreign application from the participating foreign intellectual property office within the pendency of the application and before the patent is granted, or
- The Office must receive a paper certified copy of the foreign application during that time period.
The MPEP states:
To be entitled to priority, the Office must receive a copy of the foreign application from the participating foreign intellectual property office within the pendency of the application and before the patent is granted, or receive a paper certified copy of the foreign application during that time period.
It’s crucial to note that if a certified copy is filed after the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
What are the requirements for claiming priority to a foreign application?
To claim priority to a foreign application, several requirements must be met:
- The U.S. application must be filed within 12 months of the foreign application (or 6 months for design patents).
- The foreign application must be from a country that grants similar privileges to U.S. applicants (Paris Convention member or WTO member).
- The applicant must file a claim for priority and a certified copy of the foreign application.
- As stated in MPEP 213: “The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed before the patent is granted.”
It’s important to note that the subject matter claimed in the U.S. application must be adequately supported by the foreign application to receive the benefit of the earlier filing date.
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An interim copy of a foreign application serves as a temporary substitute for a certified copy but does not replace the requirement for a certified copy. The key differences are:
- An interim copy can be from the applicant’s own records, while a certified copy must be from the foreign patent office.
- An interim copy satisfies the initial time requirement in 37 CFR 1.55(f), but a certified copy is still required.
- An interim copy is labeled as ‘Interim Copy,’ while a certified copy has official certification from the foreign patent office.
The MPEP clarifies:
‘Thus, providing an interim copy of a foreign application under 37 CFR 1.55(j) satisfies the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f), but a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate.’
In essence, the interim copy is a temporary measure to meet deadlines, while the certified copy remains a formal requirement.
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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 right of priority for international applications filed under the Patent Cooperation Treaty (PCT) operates similarly to national applications, but with some specific provisions and requirements set by the PCT system.
According to MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”
Key points about priority in PCT applications include:
- The priority claim must be made in the PCT Request form or through a later correction.
- The applicant must file a certified copy of the priority document with the International Bureau within 16 months from the priority date, unless it was previously filed with the receiving Office.
- If the priority document is issued by the receiving Office, the applicant can request that Office to prepare and transmit the document to the International Bureau.
- The International Bureau will make the priority document available to designated Offices.
- For U.S. national stage entry, if the certified copy was submitted during the international phase, it generally satisfies the requirement for the U.S. application.
The MPEP further notes: “If, however, the International Bureau is unable to forward a copy of the certified priority document because the applicant failed to submit a certified copy of the foreign priority document during the international phase, the applicant will need to provide a certified copy of the priority document or have the Office retrieve the priority application in accordance with the priority document exchange program during the national stage to fulfill the requirements of 37 CFR 1.55.”
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How do I properly identify a foreign application when claiming priority in a U.S. patent application?
When claiming priority to a foreign application in a U.S. patent application, it’s crucial to provide accurate identification information. According to MPEP 214.01, you must include the following details:
- The application number of the foreign application
- The country or intellectual property authority where the foreign application was filed
- The day, month, and year of filing of the foreign application
The MPEP states: ‘The claim for priority must identify the foreign application for which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.’
Additionally, if you’re submitting a certified copy of the foreign application, ensure that it matches the identification information provided in your priority claim. Accurate identification is essential for establishing your priority rights and avoiding potential issues during examination or litigation.
To claim foreign priority in a U.S. patent application, you must:
1. File the U.S. application within 12 months (6 months for design applications) of the foreign filing date.
2. Submit a claim for priority identifying the foreign application.
3. File a certified copy of the foreign application.
For applications filed on or after September 16, 2012, 37 CFR 1.55(d)(1) requires that the claim for priority be presented in an application data sheet. The claim must identify the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.
A certified copy of the foreign application must also be filed within a specified time period, usually within the later of 4 months from the actual U.S. filing date or 16 months from the foreign filing date.
37 CFR 1.55(i) provides that the requirement for a timely filed certified copy can be satisfied if:
- The foreign application was filed in a participating foreign intellectual property office;
- The claim for priority is presented in an application data sheet, identifying the foreign application;
- The copy of the foreign application is received by the USPTO from the participating foreign intellectual property office, or a certified copy is filed, within the period specified in 37 CFR 1.55(g)(1).
The USPTO website provides information about the priority document exchange program, including participating offices and necessary information for access to foreign applications.
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In a continuing application, you can satisfy the requirement for a certified copy of a foreign application without actually filing the certified copy again. According to 37 CFR 1.55(h):
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 means that if you have already filed a certified copy in a parent application, you can simply identify that application as containing the certified copy when filing your continuing application. This approach can save time and reduce the paperwork required for perfecting priority claims in continuing applications.
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No, filing an interim copy does not replace the need for a certified copy of the foreign application. While an interim copy satisfies the timeliness requirement, a certified copy is still required. The MPEP clarifies this point:
Thus, providing an interim copy of a foreign application under 37 CFR 1.55(j) satisfies the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f), but a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate.
In essence, the interim copy allows applicants to meet initial deadlines, but they must still provide a certified copy of the foreign application during the pendency of the U.S. application, unless they file a specific petition.
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Can I file a priority claim after paying the issue fee for my patent application?
Yes, you can file a priority claim after paying the issue fee for your patent application, but it comes with additional requirements and costs. According to MPEP 213.04:
If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, it must also be accompanied by the processing fee set forth in 37 CFR 1.17(i).
This means that if you file your priority claim after paying the issue fee, you must:
- Include the priority claim or certified copy of the foreign application
- Pay the additional processing fee specified in 37 CFR 1.17(i)
- Ensure the application hasn’t been patented yet
It’s important to note that once the patent is granted, you cannot file a priority claim retroactively. Therefore, it’s always best to file your priority claim as early as possible during the application process to avoid additional fees and potential complications.
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Can I file a certified copy of a foreign application after paying the issue fee?
Yes, you can file a certified copy of a foreign application after paying the issue fee, but there are important considerations. According to MPEP 213.04, “If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.” This means that while you can still file the certified copy, it won’t automatically be included in your patent. You would need to request a certificate of correction after the patent issues to have the priority claim recognized. It’s always best to file the certified copy before paying the issue fee to avoid this additional step and potential complications.
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Yes, under 37 CFR 1.55(j), the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f) will be considered satisfied if:
- A copy of the original foreign application clearly labeled as “Interim Copy,” including the specification, and any drawings or claims upon which it is based, is filed in the Office together with a separate cover sheet identifying the foreign application and stating that the copy is a true copy of the original application as filed; and
- The copy of the foreign application and cover sheet are filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), or four months from the date the national stage commenced under 35 U.S.C. 371(b) or (f) of an international application.
However, a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. See MPEP 215.02(b).
No, a copy of the foreign patent as issued does not comply with the certified copy requirement. The MPEP states: “A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the certification indicates that it corresponds to the application as filed.” The key is that the certified copy must represent the application as originally filed, not the patent as eventually issued.