Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 200 – Types and Status of Application; Benefit and Priority Claims (2)
Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.
For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.
For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.
It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.
Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.
Claiming foreign priority under 35 U.S.C. 119(a)-(d) and claiming benefit of a U.S. provisional application under 35 U.S.C. 119(e) are similar in some ways but have important differences:
1. Time limit:
– Foreign priority: Must be claimed within 12 months (6 months for design applications)
– Provisional: Must be claimed within 12 months
2. Effective filing date:
– Both can provide an earlier effective filing date for prior art purposes
3. Patent term:
– Foreign priority: Does not affect patent term
– Provisional: The 12-month period counts towards the 20-year patent term
4. Disclosure requirements:
– Both require the earlier application to provide adequate support for the claimed invention
5. Formalities:
– Foreign priority: Requires a certified copy of the foreign application
– Provisional: No certified copy required, but the provisional must be in English
6. Inventorship:
– Foreign priority: Requires at least one common inventor
– Provisional: Requires at least one common inventor
7. International effect:
– Foreign priority: Recognized in other Paris Convention countries
– Provisional: May not be recognized in some foreign jurisdictions
Both types of priority claims can be valuable for establishing an earlier effective filing date, but they have different requirements and effects that should be considered when developing a patent strategy.
MPEP 2100 – Patentability (3)
AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows:
- The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement).
- The foreign priority application must be entitled to a right of priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b).
- If these conditions are met, the effective filing date is the filing date of the foreign priority application.
As stated in MPEP 2154.01(b): “AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (‘U.S. patent document’) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the earliest filing date for which a benefit is sought (AIA 35 U.S.C. 102(d)(2)).”
To learn more:
Provisional applications can be used as prior art under pre-AIA 35 U.S.C. 102(e), but there are specific requirements. The MPEP states:
“Where a U.S. patent claims benefit to a provisional application, at least one claim of the patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for the patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of the relied upon provisional application’s filing date.”
This means that for a provisional application’s filing date to be used as the effective date for prior art purposes:
- The later-filed patent must claim benefit to the provisional application
- At least one claim in the patent must be fully supported by the provisional application’s disclosure
- The support must meet the requirements of pre-AIA 35 U.S.C. 112, first paragraph
If these conditions are met, the provisional application’s filing date can be used as the effective date for prior art purposes under pre-AIA 35 U.S.C. 102(e).
To learn more:
What constitutes a valid joint research agreement under Pre-AIA 35 U.S.C. 103(c)?
A valid joint research agreement under Pre-AIA 35 U.S.C. 103(c) must meet specific criteria to qualify for the exception. According to MPEP 2146.02:
“The joint research agreement must be in writing and signed by all parties to the agreement. The agreement should specifically state the subject matter of the invention and the field of the invention. The agreement must be in effect as of the effective filing date of the claimed invention, but it does not have to be in writing until the date the amendment or reply relying upon the joint research agreement is submitted.”
To constitute a valid joint research agreement, the following elements must be present:
- Written agreement
- Signed by all parties
- Specification of the subject matter of the invention
- Indication of the field of the invention
- In effect as of the effective filing date of the claimed invention
It’s important to note that while the agreement must be in effect as of the effective filing date, it doesn’t need to be in writing until the date the amendment or reply relying on the agreement is submitted.
To learn more:
MPEP 213-Right of Priority of Foreign Application (2)
Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.
For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.
For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.
It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.
Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.
Claiming foreign priority under 35 U.S.C. 119(a)-(d) and claiming benefit of a U.S. provisional application under 35 U.S.C. 119(e) are similar in some ways but have important differences:
1. Time limit:
– Foreign priority: Must be claimed within 12 months (6 months for design applications)
– Provisional: Must be claimed within 12 months
2. Effective filing date:
– Both can provide an earlier effective filing date for prior art purposes
3. Patent term:
– Foreign priority: Does not affect patent term
– Provisional: The 12-month period counts towards the 20-year patent term
4. Disclosure requirements:
– Both require the earlier application to provide adequate support for the claimed invention
5. Formalities:
– Foreign priority: Requires a certified copy of the foreign application
– Provisional: No certified copy required, but the provisional must be in English
6. Inventorship:
– Foreign priority: Requires at least one common inventor
– Provisional: Requires at least one common inventor
7. International effect:
– Foreign priority: Recognized in other Paris Convention countries
– Provisional: May not be recognized in some foreign jurisdictions
Both types of priority claims can be valuable for establishing an earlier effective filing date, but they have different requirements and effects that should be considered when developing a patent strategy.
MPEP 2136.02 – Content Of The Prior Art Available Against The Claims (1)
Provisional applications can be used as prior art under pre-AIA 35 U.S.C. 102(e), but there are specific requirements. The MPEP states:
“Where a U.S. patent claims benefit to a provisional application, at least one claim of the patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for the patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of the relied upon provisional application’s filing date.”
This means that for a provisional application’s filing date to be used as the effective date for prior art purposes:
- The later-filed patent must claim benefit to the provisional application
- At least one claim in the patent must be fully supported by the provisional application’s disclosure
- The support must meet the requirements of pre-AIA 35 U.S.C. 112, first paragraph
If these conditions are met, the provisional application’s filing date can be used as the effective date for prior art purposes under pre-AIA 35 U.S.C. 102(e).
To learn more:
MPEP 2146.02 – Establishing Common Ownership Or Joint Research Agreement Under Pre – Aia 35 U.S.C. 103(C) (1)
What constitutes a valid joint research agreement under Pre-AIA 35 U.S.C. 103(c)?
A valid joint research agreement under Pre-AIA 35 U.S.C. 103(c) must meet specific criteria to qualify for the exception. According to MPEP 2146.02:
“The joint research agreement must be in writing and signed by all parties to the agreement. The agreement should specifically state the subject matter of the invention and the field of the invention. The agreement must be in effect as of the effective filing date of the claimed invention, but it does not have to be in writing until the date the amendment or reply relying upon the joint research agreement is submitted.”
To constitute a valid joint research agreement, the following elements must be present:
- Written agreement
- Signed by all parties
- Specification of the subject matter of the invention
- Indication of the field of the invention
- In effect as of the effective filing date of the claimed invention
It’s important to note that while the agreement must be in effect as of the effective filing date, it doesn’t need to be in writing until the date the amendment or reply relying on the agreement is submitted.
To learn more:
MPEP 2154.01(B) – Determining When Subject Matter Was Effectively Filed Under Aia 35 U.S.C. 102(D) (1)
AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows:
- The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement).
- The foreign priority application must be entitled to a right of priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b).
- If these conditions are met, the effective filing date is the filing date of the foreign priority application.
As stated in MPEP 2154.01(b): “AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (‘U.S. patent document’) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the earliest filing date for which a benefit is sought (AIA 35 U.S.C. 102(d)(2)).”
To learn more:
Patent Law (5)
Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.
For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.
For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.
It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.
Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.
AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows:
- The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement).
- The foreign priority application must be entitled to a right of priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b).
- If these conditions are met, the effective filing date is the filing date of the foreign priority application.
As stated in MPEP 2154.01(b): “AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (‘U.S. patent document’) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the earliest filing date for which a benefit is sought (AIA 35 U.S.C. 102(d)(2)).”
To learn more:
Provisional applications can be used as prior art under pre-AIA 35 U.S.C. 102(e), but there are specific requirements. The MPEP states:
“Where a U.S. patent claims benefit to a provisional application, at least one claim of the patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for the patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of the relied upon provisional application’s filing date.”
This means that for a provisional application’s filing date to be used as the effective date for prior art purposes:
- The later-filed patent must claim benefit to the provisional application
- At least one claim in the patent must be fully supported by the provisional application’s disclosure
- The support must meet the requirements of pre-AIA 35 U.S.C. 112, first paragraph
If these conditions are met, the provisional application’s filing date can be used as the effective date for prior art purposes under pre-AIA 35 U.S.C. 102(e).
To learn more:
Claiming foreign priority under 35 U.S.C. 119(a)-(d) and claiming benefit of a U.S. provisional application under 35 U.S.C. 119(e) are similar in some ways but have important differences:
1. Time limit:
– Foreign priority: Must be claimed within 12 months (6 months for design applications)
– Provisional: Must be claimed within 12 months
2. Effective filing date:
– Both can provide an earlier effective filing date for prior art purposes
3. Patent term:
– Foreign priority: Does not affect patent term
– Provisional: The 12-month period counts towards the 20-year patent term
4. Disclosure requirements:
– Both require the earlier application to provide adequate support for the claimed invention
5. Formalities:
– Foreign priority: Requires a certified copy of the foreign application
– Provisional: No certified copy required, but the provisional must be in English
6. Inventorship:
– Foreign priority: Requires at least one common inventor
– Provisional: Requires at least one common inventor
7. International effect:
– Foreign priority: Recognized in other Paris Convention countries
– Provisional: May not be recognized in some foreign jurisdictions
Both types of priority claims can be valuable for establishing an earlier effective filing date, but they have different requirements and effects that should be considered when developing a patent strategy.
What constitutes a valid joint research agreement under Pre-AIA 35 U.S.C. 103(c)?
A valid joint research agreement under Pre-AIA 35 U.S.C. 103(c) must meet specific criteria to qualify for the exception. According to MPEP 2146.02:
“The joint research agreement must be in writing and signed by all parties to the agreement. The agreement should specifically state the subject matter of the invention and the field of the invention. The agreement must be in effect as of the effective filing date of the claimed invention, but it does not have to be in writing until the date the amendment or reply relying upon the joint research agreement is submitted.”
To constitute a valid joint research agreement, the following elements must be present:
- Written agreement
- Signed by all parties
- Specification of the subject matter of the invention
- Indication of the field of the invention
- In effect as of the effective filing date of the claimed invention
It’s important to note that while the agreement must be in effect as of the effective filing date, it doesn’t need to be in writing until the date the amendment or reply relying on the agreement is submitted.
To learn more:
Patent Procedure (5)
Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.
For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.
For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.
It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.
Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.
AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows:
- The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement).
- The foreign priority application must be entitled to a right of priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b).
- If these conditions are met, the effective filing date is the filing date of the foreign priority application.
As stated in MPEP 2154.01(b): “AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (‘U.S. patent document’) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the earliest filing date for which a benefit is sought (AIA 35 U.S.C. 102(d)(2)).”
To learn more:
Provisional applications can be used as prior art under pre-AIA 35 U.S.C. 102(e), but there are specific requirements. The MPEP states:
“Where a U.S. patent claims benefit to a provisional application, at least one claim of the patent must be supported by the disclosure of the relied upon provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, in order for the patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of the relied upon provisional application’s filing date.”
This means that for a provisional application’s filing date to be used as the effective date for prior art purposes:
- The later-filed patent must claim benefit to the provisional application
- At least one claim in the patent must be fully supported by the provisional application’s disclosure
- The support must meet the requirements of pre-AIA 35 U.S.C. 112, first paragraph
If these conditions are met, the provisional application’s filing date can be used as the effective date for prior art purposes under pre-AIA 35 U.S.C. 102(e).
To learn more:
Claiming foreign priority under 35 U.S.C. 119(a)-(d) and claiming benefit of a U.S. provisional application under 35 U.S.C. 119(e) are similar in some ways but have important differences:
1. Time limit:
– Foreign priority: Must be claimed within 12 months (6 months for design applications)
– Provisional: Must be claimed within 12 months
2. Effective filing date:
– Both can provide an earlier effective filing date for prior art purposes
3. Patent term:
– Foreign priority: Does not affect patent term
– Provisional: The 12-month period counts towards the 20-year patent term
4. Disclosure requirements:
– Both require the earlier application to provide adequate support for the claimed invention
5. Formalities:
– Foreign priority: Requires a certified copy of the foreign application
– Provisional: No certified copy required, but the provisional must be in English
6. Inventorship:
– Foreign priority: Requires at least one common inventor
– Provisional: Requires at least one common inventor
7. International effect:
– Foreign priority: Recognized in other Paris Convention countries
– Provisional: May not be recognized in some foreign jurisdictions
Both types of priority claims can be valuable for establishing an earlier effective filing date, but they have different requirements and effects that should be considered when developing a patent strategy.
What constitutes a valid joint research agreement under Pre-AIA 35 U.S.C. 103(c)?
A valid joint research agreement under Pre-AIA 35 U.S.C. 103(c) must meet specific criteria to qualify for the exception. According to MPEP 2146.02:
“The joint research agreement must be in writing and signed by all parties to the agreement. The agreement should specifically state the subject matter of the invention and the field of the invention. The agreement must be in effect as of the effective filing date of the claimed invention, but it does not have to be in writing until the date the amendment or reply relying upon the joint research agreement is submitted.”
To constitute a valid joint research agreement, the following elements must be present:
- Written agreement
- Signed by all parties
- Specification of the subject matter of the invention
- Indication of the field of the invention
- In effect as of the effective filing date of the claimed invention
It’s important to note that while the agreement must be in effect as of the effective filing date, it doesn’t need to be in writing until the date the amendment or reply relying on the agreement is submitted.
To learn more: