Patent Law FAQ

National security classified patent applications may be filed with the USPTO in the following ways:

• Hand-carried to Licensing and Review
• Mailed to the USPTO in compliance with 37 CFR 5.1(a) and Executive Order 13526
• Filed via the Department of Defense Secret Internet Protocol Router Network (SIPRNET) – these will be considered filed via the USPTO patent electronic filing system

The applicant must also either obtain a secrecy order or provide authority to cancel the security markings per 37 CFR 5.1(d).

National security classified patent applications require special handling by the USPTO. The MPEP states that:

National security classified documents filed in the USPTO must be either hand-carried to Licensing and Review or mailed to the Office in compliance with37 CFR 5.1(a)and Executive Order 13526 of December 29, 2009.

However, the USPTO has made provisions for secure electronic filing:

The Office will accept such applications filed with the USPTO via the Department of Defense Secret Internet Protocol Router Network (SIPRNET) and consider them as filed via the USPTO patent electronic filing system for purposes of37 CFR 1.16(t)and37 CFR 1.445(a)(ii).

Applicants filing national security classified applications must also obtain a secrecy order or provide authority to cancel the security markings, as per37 CFR 5.1(d). The USPTO’s Licensing and Review office can provide a list of contacts at the appropriate defense agencies for this purpose.

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

The Priority Document Exchange (PDX) program is an electronic system that allows participating intellectual property offices to exchange priority documents securely. According to MPEP 215.01, “Under the PDX program, the participating offices electronically transmit priority documents to each other as needed.” This program eliminates the need for applicants to submit paper certified copies of priority documents in participating offices.

In the context of foreign priority claims, there’s an important distinction between a ‘country’ and a ‘regional patent office’:

• Country: A sovereign nation that has its own patent system and can issue patents directly.
• Regional Patent Office: An intergovernmental organization that processes patent applications on behalf of multiple member countries.

The MPEP states: The right of priority may be based upon an application filed in a foreign country or in a regional patent office. (MPEP 213)

Regional patent offices, such as the European Patent Office (EPO) or the African Regional Intellectual Property Organization (ARIPO), allow applicants to file a single application that can potentially lead to patent protection in multiple member countries.

What is the ‘specific reference’ requirement for claiming benefit of a prior-filed application?

The ‘specific reference’ requirement is a crucial aspect of claiming the benefit of a prior-filed application. According to MPEP 211.01, To claim the benefit of a prior-filed application, the later-filed application must contain a specific reference to the prior-filed application. This means that:

• The specific reference must be made in the first sentence(s) of the specification or in an application data sheet (ADS).
• It should include the relationship between the applications (e.g., continuation, divisional, or continuation-in-part).
• The prior application’s serial number and filing date must be provided.

For example: ‘This application is a continuation of Application No. 12/345,678, filed January 1, 2020.’

Failure to provide this specific reference can result in the loss of the benefit claim. For more details, refer to MPEP 211 and 37 CFR 1.78.

What is the ‘same invention’ requirement for claiming benefit under 35 U.S.C. 120?

The ‘same invention’ requirement is a crucial aspect of claiming benefit under 35 U.S.C. 120. MPEP 211.01(b) explains: The second application must be an application for a patent for an invention which is also disclosed in the first application.

This means:

• The later application must disclose at least some part of the invention claimed in the prior application.
• The disclosure in the prior application must provide adequate support for the claims in the later application.
• New matter introduced in the later application cannot claim the benefit of the earlier filing date.

The ‘same invention’ does not require identical claims, but there must be a common disclosure that supports the claims in both applications. For more information, see MPEP 211.01(b) and 35 U.S.C. 120.

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.

How does the copendency requirement affect claiming benefit of a prior application?

The copendency requirement is a critical factor in claiming the benefit of a prior application. MPEP 211.01(b) states: To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be copending with the earlier application.

Copendency means:

• The later application must be filed before the patenting or abandonment of the prior application.
• There must be no gap in pendency between the applications in the chain.

If copendency is not maintained, the benefit claim to the earlier application will be lost. This can significantly impact the effective filing date of the later application, potentially affecting its patentability.

For detailed information on copendency, refer to MPEP 211.01(b) and 35 U.S.C. 120.

To request retrieval of a foreign priority document through the Priority Document Exchange (PDX) program, follow these steps:

1. Ensure that the foreign application is from a participating office in the PDX program.
2. File an application data sheet (ADS) including a proper priority claim to the foreign application.
3. Submit a request for retrieval of the foreign priority document.

The MPEP 215.01 states: “To authorize retrieval of a priority document via PDX, the applicant should submit the request electronically via EFS-Web using the Priority Document Exchange Request form (PTO/SB/38) or as a pre-grant (PGPub) request via Private PAIR.” It’s important to note that the request should be made 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.

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

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

This is specified in 37 CFR 1.55(d)(1): The claim for priority must be presented in an application data sheet (§1.76(b)(6)) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

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

What is the ‘specific reference’ requirement for claiming benefit of a prior-filed application?

The ‘specific reference’ requirement is a crucial aspect of claiming the benefit of a prior-filed application. According to MPEP 211.01, To claim the benefit of a prior-filed application, the later-filed application must contain a specific reference to the prior-filed application. This means that:

• The specific reference must be made in the first sentence(s) of the specification or in an application data sheet (ADS).
• It should include the relationship between the applications (e.g., continuation, divisional, or continuation-in-part).
• The prior application’s serial number and filing date must be provided.

For example: ‘This application is a continuation of Application No. 12/345,678, filed January 1, 2020.’

Failure to provide this specific reference can result in the loss of the benefit claim. For more details, refer to MPEP 211 and 37 CFR 1.78.

What is the ‘same invention’ requirement for claiming benefit under 35 U.S.C. 120?

The ‘same invention’ requirement is a crucial aspect of claiming benefit under 35 U.S.C. 120. MPEP 211.01(b) explains: The second application must be an application for a patent for an invention which is also disclosed in the first application.

This means:

• The later application must disclose at least some part of the invention claimed in the prior application.
• The disclosure in the prior application must provide adequate support for the claims in the later application.
• New matter introduced in the later application cannot claim the benefit of the earlier filing date.

The ‘same invention’ does not require identical claims, but there must be a common disclosure that supports the claims in both applications. For more information, see MPEP 211.01(b) and 35 U.S.C. 120.

How does the copendency requirement affect claiming benefit of a prior application?

The copendency requirement is a critical factor in claiming the benefit of a prior application. MPEP 211.01(b) states: To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be copending with the earlier application.

Copendency means:

• The later application must be filed before the patenting or abandonment of the prior application.
• There must be no gap in pendency between the applications in the chain.

If copendency is not maintained, the benefit claim to the earlier application will be lost. This can significantly impact the effective filing date of the later application, potentially affecting its patentability.

For detailed information on copendency, refer to MPEP 211.01(b) and 35 U.S.C. 120.

In the context of foreign priority claims, there’s an important distinction between a ‘country’ and a ‘regional patent office’:

• Country: A sovereign nation that has its own patent system and can issue patents directly.
• Regional Patent Office: An intergovernmental organization that processes patent applications on behalf of multiple member countries.

The MPEP states: The right of priority may be based upon an application filed in a foreign country or in a regional patent office. (MPEP 213)

Regional patent offices, such as the European Patent Office (EPO) or the African Regional Intellectual Property Organization (ARIPO), allow applicants to file a single application that can potentially lead to patent protection in multiple member countries.

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

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

This is specified in 37 CFR 1.55(d)(1): The claim for priority must be presented in an application data sheet (§1.76(b)(6)) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

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

The Priority Document Exchange (PDX) program is an electronic system that allows participating intellectual property offices to exchange priority documents securely. According to MPEP 215.01, “Under the PDX program, the participating offices electronically transmit priority documents to each other as needed.” This program eliminates the need for applicants to submit paper certified copies of priority documents in participating offices.

To request retrieval of a foreign priority document through the Priority Document Exchange (PDX) program, follow these steps:

1. Ensure that the foreign application is from a participating office in the PDX program.
2. File an application data sheet (ADS) including a proper priority claim to the foreign application.
3. Submit a request for retrieval of the foreign priority document.

The MPEP 215.01 states: “To authorize retrieval of a priority document via PDX, the applicant should submit the request electronically via EFS-Web using the Priority Document Exchange Request form (PTO/SB/38) or as a pre-grant (PGPub) request via Private PAIR.” It’s important to note that the request should be made 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.

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 Priority Document Exchange (PDX) program is an electronic system that allows participating intellectual property offices to exchange priority documents securely. According to MPEP 215.01, “Under the PDX program, the participating offices electronically transmit priority documents to each other as needed.” This program eliminates the need for applicants to submit paper certified copies of priority documents in participating offices.

In the context of foreign priority claims, there’s an important distinction between a ‘country’ and a ‘regional patent office’:

• Country: A sovereign nation that has its own patent system and can issue patents directly.
• Regional Patent Office: An intergovernmental organization that processes patent applications on behalf of multiple member countries.

The MPEP states: The right of priority may be based upon an application filed in a foreign country or in a regional patent office. (MPEP 213)

Regional patent offices, such as the European Patent Office (EPO) or the African Regional Intellectual Property Organization (ARIPO), allow applicants to file a single application that can potentially lead to patent protection in multiple member countries.

What is the ‘specific reference’ requirement for claiming benefit of a prior-filed application?

The ‘specific reference’ requirement is a crucial aspect of claiming the benefit of a prior-filed application. According to MPEP 211.01, To claim the benefit of a prior-filed application, the later-filed application must contain a specific reference to the prior-filed application. This means that:

• The specific reference must be made in the first sentence(s) of the specification or in an application data sheet (ADS).
• It should include the relationship between the applications (e.g., continuation, divisional, or continuation-in-part).
• The prior application’s serial number and filing date must be provided.

For example: ‘This application is a continuation of Application No. 12/345,678, filed January 1, 2020.’

Failure to provide this specific reference can result in the loss of the benefit claim. For more details, refer to MPEP 211 and 37 CFR 1.78.

What is the ‘same invention’ requirement for claiming benefit under 35 U.S.C. 120?

The ‘same invention’ requirement is a crucial aspect of claiming benefit under 35 U.S.C. 120. MPEP 211.01(b) explains: The second application must be an application for a patent for an invention which is also disclosed in the first application.

This means:

• The later application must disclose at least some part of the invention claimed in the prior application.
• The disclosure in the prior application must provide adequate support for the claims in the later application.
• New matter introduced in the later application cannot claim the benefit of the earlier filing date.

The ‘same invention’ does not require identical claims, but there must be a common disclosure that supports the claims in both applications. For more information, see MPEP 211.01(b) and 35 U.S.C. 120.

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.

National security classified patent applications may be filed with the USPTO in the following ways:

• Hand-carried to Licensing and Review
• Mailed to the USPTO in compliance with 37 CFR 5.1(a) and Executive Order 13526
• Filed via the Department of Defense Secret Internet Protocol Router Network (SIPRNET) – these will be considered filed via the USPTO patent electronic filing system

The applicant must also either obtain a secrecy order or provide authority to cancel the security markings per 37 CFR 5.1(d).

How does the copendency requirement affect claiming benefit of a prior application?

The copendency requirement is a critical factor in claiming the benefit of a prior application. MPEP 211.01(b) states: To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be copending with the earlier application.

Copendency means:

• The later application must be filed before the patenting or abandonment of the prior application.
• There must be no gap in pendency between the applications in the chain.

If copendency is not maintained, the benefit claim to the earlier application will be lost. This can significantly impact the effective filing date of the later application, potentially affecting its patentability.

For detailed information on copendency, refer to MPEP 211.01(b) and 35 U.S.C. 120.

To request retrieval of a foreign priority document through the Priority Document Exchange (PDX) program, follow these steps:

1. Ensure that the foreign application is from a participating office in the PDX program.
2. File an application data sheet (ADS) including a proper priority claim to the foreign application.
3. Submit a request for retrieval of the foreign priority document.

The MPEP 215.01 states: “To authorize retrieval of a priority document via PDX, the applicant should submit the request electronically via EFS-Web using the Priority Document Exchange Request form (PTO/SB/38) or as a pre-grant (PGPub) request via Private PAIR.” It’s important to note that the request should be made 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.

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

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

This is specified in 37 CFR 1.55(d)(1): The claim for priority must be presented in an application data sheet (§1.76(b)(6)) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

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

National security classified patent applications require special handling by the USPTO. The MPEP states that:

National security classified documents filed in the USPTO must be either hand-carried to Licensing and Review or mailed to the Office in compliance with37 CFR 5.1(a)and Executive Order 13526 of December 29, 2009.

However, the USPTO has made provisions for secure electronic filing:

The Office will accept such applications filed with the USPTO via the Department of Defense Secret Internet Protocol Router Network (SIPRNET) and consider them as filed via the USPTO patent electronic filing system for purposes of37 CFR 1.16(t)and37 CFR 1.445(a)(ii).

Applicants filing national security classified applications must also obtain a secrecy order or provide authority to cancel the security markings, as per37 CFR 5.1(d). The USPTO’s Licensing and Review office can provide a list of contacts at the appropriate defense agencies for this purpose.

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

The Priority Document Exchange (PDX) program is an electronic system that allows participating intellectual property offices to exchange priority documents securely. According to MPEP 215.01, “Under the PDX program, the participating offices electronically transmit priority documents to each other as needed.” This program eliminates the need for applicants to submit paper certified copies of priority documents in participating offices.

In the context of foreign priority claims, there’s an important distinction between a ‘country’ and a ‘regional patent office’:

• Country: A sovereign nation that has its own patent system and can issue patents directly.
• Regional Patent Office: An intergovernmental organization that processes patent applications on behalf of multiple member countries.

The MPEP states: The right of priority may be based upon an application filed in a foreign country or in a regional patent office. (MPEP 213)

Regional patent offices, such as the European Patent Office (EPO) or the African Regional Intellectual Property Organization (ARIPO), allow applicants to file a single application that can potentially lead to patent protection in multiple member countries.

What is the ‘specific reference’ requirement for claiming benefit of a prior-filed application?

The ‘specific reference’ requirement is a crucial aspect of claiming the benefit of a prior-filed application. According to MPEP 211.01, To claim the benefit of a prior-filed application, the later-filed application must contain a specific reference to the prior-filed application. This means that:

• The specific reference must be made in the first sentence(s) of the specification or in an application data sheet (ADS).
• It should include the relationship between the applications (e.g., continuation, divisional, or continuation-in-part).
• The prior application’s serial number and filing date must be provided.

For example: ‘This application is a continuation of Application No. 12/345,678, filed January 1, 2020.’

Failure to provide this specific reference can result in the loss of the benefit claim. For more details, refer to MPEP 211 and 37 CFR 1.78.

What is the ‘same invention’ requirement for claiming benefit under 35 U.S.C. 120?

The ‘same invention’ requirement is a crucial aspect of claiming benefit under 35 U.S.C. 120. MPEP 211.01(b) explains: The second application must be an application for a patent for an invention which is also disclosed in the first application.

This means:

• The later application must disclose at least some part of the invention claimed in the prior application.
• The disclosure in the prior application must provide adequate support for the claims in the later application.
• New matter introduced in the later application cannot claim the benefit of the earlier filing date.

The ‘same invention’ does not require identical claims, but there must be a common disclosure that supports the claims in both applications. For more information, see MPEP 211.01(b) and 35 U.S.C. 120.

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.

How does the copendency requirement affect claiming benefit of a prior application?

The copendency requirement is a critical factor in claiming the benefit of a prior application. MPEP 211.01(b) states: To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be copending with the earlier application.

Copendency means:

• The later application must be filed before the patenting or abandonment of the prior application.
• There must be no gap in pendency between the applications in the chain.

If copendency is not maintained, the benefit claim to the earlier application will be lost. This can significantly impact the effective filing date of the later application, potentially affecting its patentability.

For detailed information on copendency, refer to MPEP 211.01(b) and 35 U.S.C. 120.

To request retrieval of a foreign priority document through the Priority Document Exchange (PDX) program, follow these steps:

1. Ensure that the foreign application is from a participating office in the PDX program.
2. File an application data sheet (ADS) including a proper priority claim to the foreign application.
3. Submit a request for retrieval of the foreign priority document.

The MPEP 215.01 states: “To authorize retrieval of a priority document via PDX, the applicant should submit the request electronically via EFS-Web using the Priority Document Exchange Request form (PTO/SB/38) or as a pre-grant (PGPub) request via Private PAIR.” It’s important to note that the request should be made 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.

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

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

This is specified in 37 CFR 1.55(d)(1): The claim for priority must be presented in an application data sheet (§1.76(b)(6)) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

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

National security classified patent applications require special handling by the USPTO. The MPEP states that:

National security classified documents filed in the USPTO must be either hand-carried to Licensing and Review or mailed to the Office in compliance with37 CFR 5.1(a)and Executive Order 13526 of December 29, 2009.

However, the USPTO has made provisions for secure electronic filing:

The Office will accept such applications filed with the USPTO via the Department of Defense Secret Internet Protocol Router Network (SIPRNET) and consider them as filed via the USPTO patent electronic filing system for purposes of37 CFR 1.16(t)and37 CFR 1.445(a)(ii).

Applicants filing national security classified applications must also obtain a secrecy order or provide authority to cancel the security markings, as per37 CFR 5.1(d). The USPTO’s Licensing and Review office can provide a list of contacts at the appropriate defense agencies for this purpose.

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