Patent Law FAQ

A separate written request for PDX retrieval is needed in two specific situations:

1. When the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating office after the foreign priority has been claimed, as long as the time period set in 37 CFR 1.55 has not expired.
2. When the foreign application was not originally filed in a participating office, but a certified copy was filed in an application subsequently filed in a participating foreign intellectual property office.

The MPEP provides Form PTO/SB/38 for such requests:

Applicants can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.

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:

1. File a certified copy of the foreign application directly with the USPTO.
2. Ensure this is done during the pendency of your application and before the patent is granted.
3. 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.

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

For more information on late submission, visit: late submission.

For more information on PDX, visit: PDX.

For more information on priority document exchange, visit: priority document exchange.

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.

To learn more:

• certified copy
• foreign application
• priority claim
• time limit
• issue fee

The time limit for filing a U.S. nonprovisional application claiming priority to a foreign application is generally 12 months from the filing date of the foreign application. For design applications, the time limit is 6 months.

As stated in the MPEP, The United States nonprovisional application must be filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, unless the right of priority has been restored. (MPEP 213.03)

It’s important to note that this period is subject to certain provisions, such as the extension to the next business day if the deadline falls on a weekend or federal holiday.

To learn more:

• Priority claim
• Foreign application
• Nonprovisional application
• Filing deadline

The time limit for filing a certified copy of a foreign application depends on the type of application:

1. 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).
2. 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 § 1.17(g) must accompany the certified copy.

To learn more:

• certified copy
• foreign application
• time limit
• 37 CFR 1.55

To learn more:

• 37 CFR 1.55

What is the significance of the four-month and sixteen-month time periods for filing a priority claim?

The four-month and sixteen-month time periods are crucial deadlines for filing a priority claim in a U.S. patent application. According to MPEP 214.01:

“The claim for priority 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 filed under 35 U.S.C. 111(a).”

These time periods are significant because:

• They provide applicants with a window to properly claim priority to a foreign application.
• The four-month period starts from the U.S. filing date, giving applicants time to prepare and submit the priority claim after filing their U.S. application.
• The sixteen-month period from the foreign filing date ensures that priority claims are made within a reasonable time frame relative to the original foreign filing.
• Filing within these periods allows for the priority claim to be considered timely without requiring additional petitions or fees.

It’s important to note that failing to meet these deadlines may result in the need for a petition to accept an unintentionally delayed priority claim under 37 CFR 1.55(e), which involves additional requirements and fees.

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.

The right of priority in international patent law refers to the right to rely on a foreign application when filing a patent application in another country. This concept originated in the Paris Convention for the Protection of Industrial Property, which the United States adhered to in 1887.

As stated in the MPEP: The right to rely on a foreign application is known as the right of priority in international patent law and this phrase has been adopted in the U.S. statute. This right allows applicants to claim the filing date of an earlier foreign application, providing certain conditions are met.

To learn more:

• right of priority
• international patent law
• Paris Convention
• foreign application

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.

For more information on filing requirements, visit: filing requirements.

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

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.

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

For more information on priority document exchange, visit: priority document exchange.

What is the deadline for submitting certified copies in a national stage application?

The deadline for submitting certified copies in a national stage application (35 U.S.C. 371) is as follows:

• Certified copies must be filed within the time limit set in 37 CFR 1.55(f).
• This is typically within the later of 4 months from the actual filing date of the application or 16 months from the filing date of the prior foreign application.

The MPEP 213.06 states: ‘A certified copy of the foreign application must be filed within the time limit set forth in 37 CFR 1.55(f).’ It’s important to note that this requirement applies unless the certified copy was previously filed in the international application and the requirements of PCT Rule 17.1(a), (b), or (b-bis) have been met.

To learn more:

• certified copies
• national stage application
• deadline
• foreign application

The ‘Minimum Significant Part of the Number’ refers to the essential portion of a foreign application number that should be used in United States Patent and Trademark Office (USPTO) records. According to the MPEP:

The ‘Minimum Significant Part of the Number’ identified in the tables should be used in United States Patent and Trademark Office records.

This concept is important because:

• It standardizes the citation of foreign applications across different numbering systems
• It ensures that the most crucial identifying information is captured
• It facilitates accurate cross-referencing and searching of patent documents

Applicants and examiners should refer to the WIPO tables to determine the correct ‘Minimum Significant Part of the Number’ for each foreign intellectual property office.

To learn more:

• foreign application
• citation
• minimum significant part
• USPTO records

To make a proper priority claim in a U.S. patent application, the applicant must provide specific information about the foreign application and file the claim within the required time period. The requirements differ slightly depending on the type of application.

For applications filed on or after September 16, 2012, under 35 U.S.C. 111(a), MPEP 213.02 states: “the claim for priority must be presented in an application data sheet.” The claim must include:

• The application number of the foreign application
• The country or intellectual property authority
• The day, month, and year of filing

For international applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set forth in the PCT and the Regulations under the PCT.

The MPEP further notes: “For applications filed prior to September 16, 2012, the claim to priority need be in no special form, and may be made by a person authorized to sign correspondence under 37 CFR 1.33(b). No special language is required in making the claim for priority, and any expression which can be reasonably interpreted as claiming the benefit of the foreign application is accepted as the claim for priority.”

It’s important to file the priority claim within the specified time limits to ensure it is considered valid and effective.

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

For more information on foreign application, visit: 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).

To learn more:

• interim copy
• foreign application
• patent filing
• certified copy
• timeliness requirement

An ‘interim copy’ is a copy of the original foreign application from the applicant’s own records that can be submitted to satisfy the timeliness requirement for certified copies. According to 37 CFR 1.55(j):

• The copy must be clearly labeled as ‘Interim Copy’
• It must be filed with a cover sheet identifying the foreign application
• It must be filed within the same time period as required for certified copies
• A certified copy must still be filed during the pendency of the application

This provision allows applicants to meet the deadline even if they cannot obtain a certified copy in time, although there is no requirement to show inability to obtain a certified copy to use this option.

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

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

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).

To learn more:

• interim copy
• foreign application
• certified copy
• patent application

What happens if the foreign application is not in English?

If the foreign application is not in English, the applicant must provide an English translation of the non-English language application and a statement that the translation is accurate. According to MPEP 213.02:

‘If the foreign application is not in the English language, the applicant must provide an English translation of the non-English language application and a statement that the translation is accurate.’

This requirement ensures that the USPTO can properly examine the application and determine its priority date. The translation and statement 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.

To learn more:

• foreign application
• English translation
• priority claim

What happens if I miss the 12-month deadline for filing a U.S. nonprovisional application claiming priority to a foreign application?

If you miss the 12-month deadline for filing a U.S. nonprovisional application claiming priority to a foreign application, you may still be able to file the application, but you’ll lose the right to claim priority to the foreign application. The MPEP states:

“An applicant who files a nonprovisional application after the 12-month priority period (or 6-month priority period in the case of a design application) will not be able to claim priority to the foreign-filed application in the later-filed nonprovisional application.” (MPEP 213.03)

In such cases, your U.S. application will be treated as a new application without the benefit of the earlier filing date. This can have significant implications, especially if any public disclosures or other prior art have been published in the intervening time.

To learn more:

• priority claim
• foreign application
• nonprovisional application
• filing deadline

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.

To learn more:

• priority claim
• application pendency
• certified copy
• foreign application
• processing fee

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.

The time limits for filing an interim copy of a foreign application are specified in 37 CFR 1.55(j). According to the MPEP:

37 CFR 1.55(j) also provides that the interim copy of the foreign application and cover sheet must be filed within the later of sixteen months from the filing date of the prior foreign application or four months from the actual filing date of an application under 35 U.S.C. 111(a), within four months from the later of the date of commencement (37 CFR 1.491(a)) or the date of the initial submission under 35 U.S.C. 371 in an application entering the national stage under 35 U.S.C. 371, or with a petition under 37 CFR 1.55(e) or (f).

In summary, the interim copy must be filed within:

• 16 months from the filing date of the foreign application, or
• 4 months from the U.S. application filing date under 35 U.S.C. 111(a), or
• 4 months from the national stage commencement or initial submission date under 35 U.S.C. 371, or
• With a petition under 37 CFR 1.55(e) or (f)

To learn more:

• interim copy
• foreign application
• time limits
• filing deadlines
• patent procedure

To use the Priority Document Exchange (PDX) program, several requirements must be met as outlined in MPEP 215.02(a):

1. The foreign application must be filed in a participating foreign intellectual property office.
2. The claim for priority must be presented in an application data sheet (ADS) with specific details about the foreign application.
3. 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 (§1.76(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.

For more information on PDX, visit: PDX.

For more information on priority document exchange, visit: priority document exchange.

For more information on requirements, visit: requirements.

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

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

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

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.

To learn more:

• certified copy
• foreign application
• national stage application
• PCT

To be entitled to priority under the PDX program, the following requirements must be met:

1. 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
2. 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.

The filing requirements for an interim copy of a foreign application are specified in 37 CFR 1.55(j). They include:

• Filing a copy of the original foreign application clearly labeled as ‘Interim Copy’
• Including a separate cover sheet identifying the foreign application details
• Filing within specified time limits

The MPEP states:

’37 CFR 1.55(j) also provides that the interim copy of the foreign application must be filed together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority).’

It’s crucial to adhere to these requirements to ensure proper processing of the interim copy.

For more information on filing requirements, visit: filing requirements.

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

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

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

No, an English translation of a non-English language foreign application is not always required. According to 37 CFR 1.55(g)(3), an English language translation is only required in specific circumstances:

An English language translation of a non-English language foreign application is not required except: (i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding; (ii) When necessary to overcome the date of a reference relied upon by the examiner; or (iii) When specifically required by the examiner.

If a translation is required, it must be filed together with a statement that the translation of the certified copy is accurate.

To learn more:

• English translation
• foreign application
• patent examination
• language requirements

Submitting an interim copy of a foreign application electronically involves specific procedures. The MPEP provides guidance:

‘If not provided as a single paper document, the main parts of the interim copy of the foreign priority application, i.e., Abstract, Drawings, Specification, Claims, and where applicable, the foreign patent office’s equivalent to a “Sequence Listing” (see MPEP § 2421.01), a “Sequence Listing XML” (see MPEP § 2412), “Large Tables” (see MPEP § 608.05(b)), or a “Computer Program Listing Appendix” (see MPEP § 608.05(a)), along with the separate cover sheet required by 37 CFR 1.55(j), may be filed as a single PDF image file via the USPTO patent electronic filing system.’

Key points for electronic submission:

• File as a single PDF image file when possible
• Use the document description ‘Interim Copy of the Foreign Priority Application’ when indexing
• For plain text files, use the description ‘Interim Copy of the Foreign Priority (text file)’
• XML files, like Standard ST.26 Sequence Listings, should be filed on a read-only optical disc

Proper indexing and file format selection are crucial for successful electronic submission.

For more information on electronic submission, visit: electronic submission.

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

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

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

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.

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

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

How does the Paris Convention affect the filing deadline for U.S. nonprovisional applications?

The Paris Convention plays a crucial role in determining the filing deadline for U.S. nonprovisional applications claiming priority to foreign applications. The MPEP explains:

“Under the Paris Convention, the right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design, filed in a country signatory to the Convention.” (MPEP 213.03)

Key points about the Paris Convention’s impact on filing deadlines:

• It establishes a 12-month priority period for utility patents and plant patents.
• For design patents, it provides a 6-month priority period.
• The priority period starts from the filing date of the earliest foreign application.
• It applies to applications filed in any country that is a member of the Paris Convention.

This international agreement ensures that inventors have a reasonable timeframe to file patent applications in multiple countries while maintaining the priority date of their original filing. It’s crucial for applicants to be aware of these deadlines when planning their international patent strategy.

To learn more:

• Paris Convention
• priority period
• foreign application
• international patent

37 CFR 1.55(i) provides that the requirement for a timely filed certified copy can be satisfied if:

1. The foreign application was filed in a participating foreign intellectual property office;
2. The claim for priority is presented in an application data sheet, identifying the foreign application;
3. 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.

To learn more:

• priority document exchange
• foreign application
• certified copy
• patent application

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.

To learn more:

• certified copy
• foreign application
• continuing application
• 37 CFR 1.55

To learn more:

• 37 CFR 1.55

How can I request participation in the priority document exchange program?

To request participation in the priority document exchange (PDX) program, you need to follow specific procedures outlined in MPEP 213.04. Here’s what you need to do:

Applicants may participate in the priority document exchange (PDX) program by requesting that the USPTO retrieve a copy of the foreign application from a participating foreign intellectual property office. Participation in the PDX program is not automatic; a request must be made.

To make a request:

• Include an authorization to access the priority document in the foreign office’s system
• Provide sufficient information to identify the foreign application
• Submit this request within the later of:
  • 16 months from the filing date of the prior foreign application, or
  • 4 months from the actual filing date of the application in which priority is claimed

It’s important to note that the PDX program is only available with participating foreign offices. Always check the current list of participating offices before making a request.

To learn more:

• priority document exchange
• PDX program
• foreign application
• priority claim

Filing an interim copy of a foreign application electronically can be done through the USPTO patent electronic filing system. The MPEP provides guidance on how to file different parts of the application:

• Main parts (Abstract, Drawings, Specification, Claims) and the cover sheet can be filed as a single PDF file.
• Text-only files (e.g., Sequence Listings, Large Tables) can be filed as .txt files.
• XML files (e.g., Standard ST.26 Sequence Listing) should be filed on a read-only optical disc.

The MPEP states: If not provided as a single paper document, the main parts of the interim copy of the foreign priority application, i.e., Abstract, Drawings, Specification, Claims, and where applicable, the foreign patent office’s equivalent to a ‘Sequence Listing’ (see MPEP § 2421.01 a ‘Sequence Listing XML’ (see MPEP § 2412), ‘Large Tables’ (see MPEP § 608.05(b)), or a ‘Computer Program Listing Appendix’ (see MPEP § 608.05(a)), along with the separate cover sheet required by 37 CFR 1.55(j), may be filed as a single PDF image file via the USPTO patent electronic filing system.

For more information on electronic filing, refer to MPEP § 502.05.

To learn more:

• interim copy
• foreign application
• electronic filing
• USPTO
• patent procedure

To check if the United States Patent and Trademark Office (USPTO) has received your priority document through the Priority Document Exchange (PDX) program, you should monitor your application status. As stated in MPEP 215.02(a):

Applicants continue to bear the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued. Accordingly, applicants are encouraged to check as necessary to confirm receipt by the Office of appropriate documents.

You can check the status of your priority document in several ways:

1. Check the Patent Application Information Retrieval (PAIR) system for your application.
2. Look for the document description: “Priority documents electronically retrieved by USPTO from a participating IP Office.”
3. Contact the USPTO directly if you’re unsure about the status.

It’s important to verify receipt of the priority document to ensure compliance with the requirements for claiming priority to a foreign application.

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

For more information on PAIR system, visit: PAIR system.

For more information on PDX, visit: PDX.

For more information on priority document exchange, visit: priority document exchange.

For more information on USPTO, visit: USPTO.

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.

To learn more:

• interim copy
• certified copy
• foreign application
• patent procedure
• timeliness requirement

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.

To learn more:

• priority claim
• issue fee
• certified copy
• foreign application
• processing fee

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.

To learn more:

• certified copy
• foreign application
• issue fee
• certificate of correction

Can a priority claim be made in a continuation or divisional application?

Yes, a priority claim can be made in a continuation or divisional application. However, there are specific requirements and time limits to consider. According to MPEP 214.01:

“In the case of a continuation or divisional application, the claim for priority must be made during the pendency of the application.”

This means:

• The priority claim must be filed within the later of four months from the actual filing date of the continuation or divisional application or sixteen months from the filing date of the prior foreign application.
• If the claim is filed outside this period, it will be considered untimely and require a petition under 37 CFR 1.55(e).
• The priority claim should reference the parent application if it properly claimed the benefit of the foreign application.

It’s important to note that the continuation or divisional application must be filed within 12 months of the foreign application’s filing date (or 6 months for design applications) to be eligible for priority.

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.

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

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

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

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.

The front page of a patent includes the following information regarding foreign priority claims:

• The country of the foreign application
• The filing date of the foreign application
• The number of the foreign application

This information is included for applications where the bib-data sheet has been properly endorsed. As stated in the MPEP: “The front page of the patent when it is issued, and the listing in the Official Gazette, will refer to the claim of priority, giving the country, the filing date, and the number of the foreign application in those applications in which the bib-data sheet has been endorsed.” (MPEP 202)

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 § 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 § 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 § 215.02(b).

Foreign priority application information is handled as follows on the bib-data sheet:

• If a proper foreign priority claim is not listed on the bib-data sheet, the examiner should add the information and forward it for correction in the Office computer systems.
• Applications listed on the bib-data sheet but filed in countries not qualifying for benefits under 35 U.S.C. 119(a)-(d) should be lined through.
• The bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application claiming priority.
• Examiners should check this information for accuracy and make corrections if necessary.

The MPEP states: “If a foreign application listed on the oath or declaration (for applications filed prior to September 16, 2012) or application data sheet is not listed on the bib-data sheet and the foreign priority claim is proper (e.g., the foreign priority claim was timely made ), the examiner should provide the information regarding the foreign application number, the country, and the filing date on the bib-data sheet and forward the marked-up bib-data sheet to the Legal Instrument Examiner for correction in the Office computer systems.” (MPEP 202)

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

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

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

Yes, 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:

1. 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
2. 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).

The front page of a patent includes the following information regarding foreign priority claims:

• The country of the foreign application
• The filing date of the foreign application
• The number of the foreign application

This information is included for applications where the bib-data sheet has been properly endorsed. As stated in the MPEP: “The front page of the patent when it is issued, and the listing in the Official Gazette, will refer to the claim of priority, giving the country, the filing date, and the number of the foreign application in those applications in which the bib-data sheet has been endorsed.” (MPEP 202)

Foreign priority application information is handled as follows on the bib-data sheet:

• If a proper foreign priority claim is not listed on the bib-data sheet, the examiner should add the information and forward it for correction in the Office computer systems.
• Applications listed on the bib-data sheet but filed in countries not qualifying for benefits under 35 U.S.C. 119(a)-(d) should be lined through.
• The bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application claiming priority.
• Examiners should check this information for accuracy and make corrections if necessary.

The MPEP states: “If a foreign application listed on the oath or declaration (for applications filed prior to September 16, 2012) or application data sheet is not listed on the bib-data sheet and the foreign priority claim is proper (e.g., the foreign priority claim was timely made ), the examiner should provide the information regarding the foreign application number, the country, and the filing date on the bib-data sheet and forward the marked-up bib-data sheet to the Legal Instrument Examiner for correction in the Office computer systems.” (MPEP 202)

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.

For more information on filing requirements, visit: filing requirements.

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

To make a proper priority claim in a U.S. patent application, the applicant must provide specific information about the foreign application and file the claim within the required time period. The requirements differ slightly depending on the type of application.

For applications filed on or after September 16, 2012, under 35 U.S.C. 111(a), MPEP 213.02 states: “the claim for priority must be presented in an application data sheet.” The claim must include:

• The application number of the foreign application
• The country or intellectual property authority
• The day, month, and year of filing

For international applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set forth in the PCT and the Regulations under the PCT.

The MPEP further notes: “For applications filed prior to September 16, 2012, the claim to priority need be in no special form, and may be made by a person authorized to sign correspondence under 37 CFR 1.33(b). No special language is required in making the claim for priority, and any expression which can be reasonably interpreted as claiming the benefit of the foreign application is accepted as the claim for priority.”

It’s important to file the priority claim within the specified time limits to ensure it is considered valid and effective.

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

For more information on foreign application, visit: 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.

What is the significance of the four-month and sixteen-month time periods for filing a priority claim?

The four-month and sixteen-month time periods are crucial deadlines for filing a priority claim in a U.S. patent application. According to MPEP 214.01:

“The claim for priority 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 filed under 35 U.S.C. 111(a).”

These time periods are significant because:

• They provide applicants with a window to properly claim priority to a foreign application.
• The four-month period starts from the U.S. filing date, giving applicants time to prepare and submit the priority claim after filing their U.S. application.
• The sixteen-month period from the foreign filing date ensures that priority claims are made within a reasonable time frame relative to the original foreign filing.
• Filing within these periods allows for the priority claim to be considered timely without requiring additional petitions or fees.

It’s important to note that failing to meet these deadlines may result in the need for a petition to accept an unintentionally delayed priority claim under 37 CFR 1.55(e), which involves additional requirements and fees.

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 § 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 § 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 § 215.02(b).

Can a priority claim be made in a continuation or divisional application?

Yes, a priority claim can be made in a continuation or divisional application. However, there are specific requirements and time limits to consider. According to MPEP 214.01:

“In the case of a continuation or divisional application, the claim for priority must be made during the pendency of the application.”

This means:

• The priority claim must be filed within the later of four months from the actual filing date of the continuation or divisional application or sixteen months from the filing date of the prior foreign application.
• If the claim is filed outside this period, it will be considered untimely and require a petition under 37 CFR 1.55(e).
• The priority claim should reference the parent application if it properly claimed the benefit of the foreign application.

It’s important to note that the continuation or divisional application must be filed within 12 months of the foreign application’s filing date (or 6 months for design applications) to be eligible for priority.

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.

A separate written request for PDX retrieval is needed in two specific situations:

1. When the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating office after the foreign priority has been claimed, as long as the time period set in 37 CFR 1.55 has not expired.
2. When the foreign application was not originally filed in a participating office, but a certified copy was filed in an application subsequently filed in a participating foreign intellectual property office.

The MPEP provides Form PTO/SB/38 for such requests:

Applicants can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.

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:

1. File a certified copy of the foreign application directly with the USPTO.
2. Ensure this is done during the pendency of your application and before the patent is granted.
3. 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.

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

For more information on late submission, visit: late submission.

For more information on PDX, visit: PDX.

For more information on priority document exchange, visit: priority document exchange.

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.

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.

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

For more information on priority document exchange, visit: priority document exchange.

An ‘interim copy’ is a copy of the original foreign application from the applicant’s own records that can be submitted to satisfy the timeliness requirement for certified copies. According to 37 CFR 1.55(j):

• The copy must be clearly labeled as ‘Interim Copy’
• It must be filed with a cover sheet identifying the foreign application
• It must be filed within the same time period as required for certified copies
• A certified copy must still be filed during the pendency of the application

This provision allows applicants to meet the deadline even if they cannot obtain a certified copy in time, although there is no requirement to show inability to obtain a certified copy to use this option.

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

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

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):

1. The foreign application must be filed in a participating foreign intellectual property office.
2. The claim for priority must be presented in an application data sheet (ADS) with specific details about the foreign application.
3. 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 (§1.76(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.

For more information on PDX, visit: PDX.

For more information on priority document exchange, visit: priority document exchange.

For more information on requirements, visit: requirements.

To be entitled to priority under the PDX program, the following requirements must be met:

1. 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
2. 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.

The filing requirements for an interim copy of a foreign application are specified in 37 CFR 1.55(j). They include:

• Filing a copy of the original foreign application clearly labeled as ‘Interim Copy’
• Including a separate cover sheet identifying the foreign application details
• Filing within specified time limits

The MPEP states:

’37 CFR 1.55(j) also provides that the interim copy of the foreign application must be filed together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority).’

It’s crucial to adhere to these requirements to ensure proper processing of the interim copy.

For more information on filing requirements, visit: filing requirements.

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

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

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

Submitting an interim copy of a foreign application electronically involves specific procedures. The MPEP provides guidance:

‘If not provided as a single paper document, the main parts of the interim copy of the foreign priority application, i.e., Abstract, Drawings, Specification, Claims, and where applicable, the foreign patent office’s equivalent to a “Sequence Listing” (see MPEP § 2421.01), a “Sequence Listing XML” (see MPEP § 2412), “Large Tables” (see MPEP § 608.05(b)), or a “Computer Program Listing Appendix” (see MPEP § 608.05(a)), along with the separate cover sheet required by 37 CFR 1.55(j), may be filed as a single PDF image file via the USPTO patent electronic filing system.’

Key points for electronic submission:

• File as a single PDF image file when possible
• Use the document description ‘Interim Copy of the Foreign Priority Application’ when indexing
• For plain text files, use the description ‘Interim Copy of the Foreign Priority (text file)’
• XML files, like Standard ST.26 Sequence Listings, should be filed on a read-only optical disc

Proper indexing and file format selection are crucial for successful electronic submission.

For more information on electronic submission, visit: electronic submission.

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

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

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

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.

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

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

To check if the United States Patent and Trademark Office (USPTO) has received your priority document through the Priority Document Exchange (PDX) program, you should monitor your application status. As stated in MPEP 215.02(a):

Applicants continue to bear the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued. Accordingly, applicants are encouraged to check as necessary to confirm receipt by the Office of appropriate documents.

You can check the status of your priority document in several ways:

1. Check the Patent Application Information Retrieval (PAIR) system for your application.
2. Look for the document description: “Priority documents electronically retrieved by USPTO from a participating IP Office.”
3. Contact the USPTO directly if you’re unsure about the status.

It’s important to verify receipt of the priority document to ensure compliance with the requirements for claiming priority to a foreign application.

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

For more information on PAIR system, visit: PAIR system.

For more information on PDX, visit: PDX.

For more information on priority document exchange, visit: priority document exchange.

For more information on USPTO, visit: USPTO.

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:

1. 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
2. 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).

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.

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

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

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

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

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

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

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

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

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

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.

A separate written request for PDX retrieval is needed in two specific situations:

1. When the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating office after the foreign priority has been claimed, as long as the time period set in 37 CFR 1.55 has not expired.
2. When the foreign application was not originally filed in a participating office, but a certified copy was filed in an application subsequently filed in a participating foreign intellectual property office.

The MPEP provides Form PTO/SB/38 for such requests:

Applicants can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.

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:

1. File a certified copy of the foreign application directly with the USPTO.
2. Ensure this is done during the pendency of your application and before the patent is granted.
3. 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.

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

For more information on late submission, visit: late submission.

For more information on PDX, visit: PDX.

For more information on priority document exchange, visit: priority document exchange.

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.

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.

To learn more:

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The time limit for filing a U.S. nonprovisional application claiming priority to a foreign application is generally 12 months from the filing date of the foreign application. For design applications, the time limit is 6 months.

As stated in the MPEP, The United States nonprovisional application must be filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, unless the right of priority has been restored. (MPEP 213.03)

It’s important to note that this period is subject to certain provisions, such as the extension to the next business day if the deadline falls on a weekend or federal holiday.

To learn more:

• Priority claim
• Foreign application
• Nonprovisional application
• Filing deadline

The time limit for filing a certified copy of a foreign application depends on the type of application:

1. 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).
2. 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 § 1.17(g) must accompany the certified copy.

To learn more:

• certified copy
• foreign application
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• 37 CFR 1.55

To learn more:

• 37 CFR 1.55

What is the significance of the four-month and sixteen-month time periods for filing a priority claim?

The four-month and sixteen-month time periods are crucial deadlines for filing a priority claim in a U.S. patent application. According to MPEP 214.01:

“The claim for priority 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 filed under 35 U.S.C. 111(a).”

These time periods are significant because:

• They provide applicants with a window to properly claim priority to a foreign application.
• The four-month period starts from the U.S. filing date, giving applicants time to prepare and submit the priority claim after filing their U.S. application.
• The sixteen-month period from the foreign filing date ensures that priority claims are made within a reasonable time frame relative to the original foreign filing.
• Filing within these periods allows for the priority claim to be considered timely without requiring additional petitions or fees.

It’s important to note that failing to meet these deadlines may result in the need for a petition to accept an unintentionally delayed priority claim under 37 CFR 1.55(e), which involves additional requirements and fees.

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.

The right of priority in international patent law refers to the right to rely on a foreign application when filing a patent application in another country. This concept originated in the Paris Convention for the Protection of Industrial Property, which the United States adhered to in 1887.

As stated in the MPEP: The right to rely on a foreign application is known as the right of priority in international patent law and this phrase has been adopted in the U.S. statute. This right allows applicants to claim the filing date of an earlier foreign application, providing certain conditions are met.

To learn more:

• right of priority
• international patent law
• Paris Convention
• foreign application

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.

For more information on filing requirements, visit: filing requirements.

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

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.

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

For more information on priority document exchange, visit: priority document exchange.

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

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

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

What is the deadline for submitting certified copies in a national stage application?

The deadline for submitting certified copies in a national stage application (35 U.S.C. 371) is as follows:

• Certified copies must be filed within the time limit set in 37 CFR 1.55(f).
• This is typically within the later of 4 months from the actual filing date of the application or 16 months from the filing date of the prior foreign application.

The MPEP 213.06 states: ‘A certified copy of the foreign application must be filed within the time limit set forth in 37 CFR 1.55(f).’ It’s important to note that this requirement applies unless the certified copy was previously filed in the international application and the requirements of PCT Rule 17.1(a), (b), or (b-bis) have been met.

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• certified copies
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• foreign application

The ‘Minimum Significant Part of the Number’ refers to the essential portion of a foreign application number that should be used in United States Patent and Trademark Office (USPTO) records. According to the MPEP:

The ‘Minimum Significant Part of the Number’ identified in the tables should be used in United States Patent and Trademark Office records.

This concept is important because:

• It standardizes the citation of foreign applications across different numbering systems
• It ensures that the most crucial identifying information is captured
• It facilitates accurate cross-referencing and searching of patent documents

Applicants and examiners should refer to the WIPO tables to determine the correct ‘Minimum Significant Part of the Number’ for each foreign intellectual property office.

To learn more:

• foreign application
• citation
• minimum significant part
• USPTO records

To make a proper priority claim in a U.S. patent application, the applicant must provide specific information about the foreign application and file the claim within the required time period. The requirements differ slightly depending on the type of application.

For applications filed on or after September 16, 2012, under 35 U.S.C. 111(a), MPEP 213.02 states: “the claim for priority must be presented in an application data sheet.” The claim must include:

• The application number of the foreign application
• The country or intellectual property authority
• The day, month, and year of filing

For international applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set forth in the PCT and the Regulations under the PCT.

The MPEP further notes: “For applications filed prior to September 16, 2012, the claim to priority need be in no special form, and may be made by a person authorized to sign correspondence under 37 CFR 1.33(b). No special language is required in making the claim for priority, and any expression which can be reasonably interpreted as claiming the benefit of the foreign application is accepted as the claim for priority.”

It’s important to file the priority claim within the specified time limits to ensure it is considered valid and effective.

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

For more information on foreign application, visit: 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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• interim copy
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• patent filing
• certified copy
• timeliness requirement

An ‘interim copy’ is a copy of the original foreign application from the applicant’s own records that can be submitted to satisfy the timeliness requirement for certified copies. According to 37 CFR 1.55(j):

• The copy must be clearly labeled as ‘Interim Copy’
• It must be filed with a cover sheet identifying the foreign application
• It must be filed within the same time period as required for certified copies
• A certified copy must still be filed during the pendency of the application

This provision allows applicants to meet the deadline even if they cannot obtain a certified copy in time, although there is no requirement to show inability to obtain a certified copy to use this option.

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

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

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).

To learn more:

• interim copy
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• certified copy
• patent 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.

The front page of a patent includes the following information regarding foreign priority claims:

• The country of the foreign application
• The filing date of the foreign application
• The number of the foreign application

This information is included for applications where the bib-data sheet has been properly endorsed. As stated in the MPEP: “The front page of the patent when it is issued, and the listing in the Official Gazette, will refer to the claim of priority, giving the country, the filing date, and the number of the foreign application in those applications in which the bib-data sheet has been endorsed.” (MPEP 202)

What happens if the foreign application is not in English?

If the foreign application is not in English, the applicant must provide an English translation of the non-English language application and a statement that the translation is accurate. According to MPEP 213.02:

‘If the foreign application is not in the English language, the applicant must provide an English translation of the non-English language application and a statement that the translation is accurate.’

This requirement ensures that the USPTO can properly examine the application and determine its priority date. The translation and statement 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.

To learn more:

• foreign application
• English translation
• priority claim

What happens if I miss the 12-month deadline for filing a U.S. nonprovisional application claiming priority to a foreign application?

If you miss the 12-month deadline for filing a U.S. nonprovisional application claiming priority to a foreign application, you may still be able to file the application, but you’ll lose the right to claim priority to the foreign application. The MPEP states:

“An applicant who files a nonprovisional application after the 12-month priority period (or 6-month priority period in the case of a design application) will not be able to claim priority to the foreign-filed application in the later-filed nonprovisional application.” (MPEP 213.03)

In such cases, your U.S. application will be treated as a new application without the benefit of the earlier filing date. This can have significant implications, especially if any public disclosures or other prior art have been published in the intervening time.

To learn more:

• priority claim
• foreign application
• nonprovisional application
• filing deadline

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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• priority claim
• application pendency
• certified copy
• foreign application
• processing fee

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.

The time limits for filing an interim copy of a foreign application are specified in 37 CFR 1.55(j). According to the MPEP:

37 CFR 1.55(j) also provides that the interim copy of the foreign application and cover sheet must be filed within the later of sixteen months from the filing date of the prior foreign application or four months from the actual filing date of an application under 35 U.S.C. 111(a), within four months from the later of the date of commencement (37 CFR 1.491(a)) or the date of the initial submission under 35 U.S.C. 371 in an application entering the national stage under 35 U.S.C. 371, or with a petition under 37 CFR 1.55(e) or (f).

In summary, the interim copy must be filed within:

• 16 months from the filing date of the foreign application, or
• 4 months from the U.S. application filing date under 35 U.S.C. 111(a), or
• 4 months from the national stage commencement or initial submission date under 35 U.S.C. 371, or
• With a petition under 37 CFR 1.55(e) or (f)

To learn more:

• interim copy
• foreign application
• time limits
• filing deadlines
• patent procedure

To use the Priority Document Exchange (PDX) program, several requirements must be met as outlined in MPEP 215.02(a):

1. The foreign application must be filed in a participating foreign intellectual property office.
2. The claim for priority must be presented in an application data sheet (ADS) with specific details about the foreign application.
3. 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 (§1.76(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.

For more information on PDX, visit: PDX.

For more information on priority document exchange, visit: priority document exchange.

For more information on requirements, visit: requirements.

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 § 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 § 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 § 215.02(b).

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

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

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

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.

To learn more:

• certified copy
• foreign application
• national stage application
• PCT

To be entitled to priority under the PDX program, the following requirements must be met:

1. 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
2. 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.

The filing requirements for an interim copy of a foreign application are specified in 37 CFR 1.55(j). They include:

• Filing a copy of the original foreign application clearly labeled as ‘Interim Copy’
• Including a separate cover sheet identifying the foreign application details
• Filing within specified time limits

The MPEP states:

’37 CFR 1.55(j) also provides that the interim copy of the foreign application must be filed together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority).’

It’s crucial to adhere to these requirements to ensure proper processing of the interim copy.

For more information on filing requirements, visit: filing requirements.

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

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

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

No, an English translation of a non-English language foreign application is not always required. According to 37 CFR 1.55(g)(3), an English language translation is only required in specific circumstances:

An English language translation of a non-English language foreign application is not required except: (i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding; (ii) When necessary to overcome the date of a reference relied upon by the examiner; or (iii) When specifically required by the examiner.

If a translation is required, it must be filed together with a statement that the translation of the certified copy is accurate.

To learn more:

• English translation
• foreign application
• patent examination
• language requirements

Submitting an interim copy of a foreign application electronically involves specific procedures. The MPEP provides guidance:

‘If not provided as a single paper document, the main parts of the interim copy of the foreign priority application, i.e., Abstract, Drawings, Specification, Claims, and where applicable, the foreign patent office’s equivalent to a “Sequence Listing” (see MPEP § 2421.01), a “Sequence Listing XML” (see MPEP § 2412), “Large Tables” (see MPEP § 608.05(b)), or a “Computer Program Listing Appendix” (see MPEP § 608.05(a)), along with the separate cover sheet required by 37 CFR 1.55(j), may be filed as a single PDF image file via the USPTO patent electronic filing system.’

Key points for electronic submission:

• File as a single PDF image file when possible
• Use the document description ‘Interim Copy of the Foreign Priority Application’ when indexing
• For plain text files, use the description ‘Interim Copy of the Foreign Priority (text file)’
• XML files, like Standard ST.26 Sequence Listings, should be filed on a read-only optical disc

Proper indexing and file format selection are crucial for successful electronic submission.

For more information on electronic submission, visit: electronic submission.

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

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

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

Foreign priority application information is handled as follows on the bib-data sheet:

• If a proper foreign priority claim is not listed on the bib-data sheet, the examiner should add the information and forward it for correction in the Office computer systems.
• Applications listed on the bib-data sheet but filed in countries not qualifying for benefits under 35 U.S.C. 119(a)-(d) should be lined through.
• The bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application claiming priority.
• Examiners should check this information for accuracy and make corrections if necessary.

The MPEP states: “If a foreign application listed on the oath or declaration (for applications filed prior to September 16, 2012) or application data sheet is not listed on the bib-data sheet and the foreign priority claim is proper (e.g., the foreign priority claim was timely made ), the examiner should provide the information regarding the foreign application number, the country, and the filing date on the bib-data sheet and forward the marked-up bib-data sheet to the Legal Instrument Examiner for correction in the Office computer systems.” (MPEP 202)

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.

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

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

How does the Paris Convention affect the filing deadline for U.S. nonprovisional applications?

The Paris Convention plays a crucial role in determining the filing deadline for U.S. nonprovisional applications claiming priority to foreign applications. The MPEP explains:

“Under the Paris Convention, the right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design, filed in a country signatory to the Convention.” (MPEP 213.03)

Key points about the Paris Convention’s impact on filing deadlines:

• It establishes a 12-month priority period for utility patents and plant patents.
• For design patents, it provides a 6-month priority period.
• The priority period starts from the filing date of the earliest foreign application.
• It applies to applications filed in any country that is a member of the Paris Convention.

This international agreement ensures that inventors have a reasonable timeframe to file patent applications in multiple countries while maintaining the priority date of their original filing. It’s crucial for applicants to be aware of these deadlines when planning their international patent strategy.

To learn more:

• Paris Convention
• priority period
• foreign application
• international patent

37 CFR 1.55(i) provides that the requirement for a timely filed certified copy can be satisfied if:

1. The foreign application was filed in a participating foreign intellectual property office;
2. The claim for priority is presented in an application data sheet, identifying the foreign application;
3. 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.

To learn more:

• priority document exchange
• foreign application
• certified copy
• patent application

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.

To learn more:

• certified copy
• foreign application
• continuing application
• 37 CFR 1.55

To learn more:

• 37 CFR 1.55

How can I request participation in the priority document exchange program?

To request participation in the priority document exchange (PDX) program, you need to follow specific procedures outlined in MPEP 213.04. Here’s what you need to do:

Applicants may participate in the priority document exchange (PDX) program by requesting that the USPTO retrieve a copy of the foreign application from a participating foreign intellectual property office. Participation in the PDX program is not automatic; a request must be made.

To make a request:

• Include an authorization to access the priority document in the foreign office’s system
• Provide sufficient information to identify the foreign application
• Submit this request within the later of:
  • 16 months from the filing date of the prior foreign application, or
  • 4 months from the actual filing date of the application in which priority is claimed

It’s important to note that the PDX program is only available with participating foreign offices. Always check the current list of participating offices before making a request.

To learn more:

• priority document exchange
• PDX program
• foreign application
• priority claim

Filing an interim copy of a foreign application electronically can be done through the USPTO patent electronic filing system. The MPEP provides guidance on how to file different parts of the application:

• Main parts (Abstract, Drawings, Specification, Claims) and the cover sheet can be filed as a single PDF file.
• Text-only files (e.g., Sequence Listings, Large Tables) can be filed as .txt files.
• XML files (e.g., Standard ST.26 Sequence Listing) should be filed on a read-only optical disc.

The MPEP states: If not provided as a single paper document, the main parts of the interim copy of the foreign priority application, i.e., Abstract, Drawings, Specification, Claims, and where applicable, the foreign patent office’s equivalent to a ‘Sequence Listing’ (see MPEP § 2421.01 a ‘Sequence Listing XML’ (see MPEP § 2412), ‘Large Tables’ (see MPEP § 608.05(b)), or a ‘Computer Program Listing Appendix’ (see MPEP § 608.05(a)), along with the separate cover sheet required by 37 CFR 1.55(j), may be filed as a single PDF image file via the USPTO patent electronic filing system.

For more information on electronic filing, refer to MPEP § 502.05.

To learn more:

• interim copy
• foreign application
• electronic filing
• USPTO
• patent procedure

To check if the United States Patent and Trademark Office (USPTO) has received your priority document through the Priority Document Exchange (PDX) program, you should monitor your application status. As stated in MPEP 215.02(a):

Applicants continue to bear the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued. Accordingly, applicants are encouraged to check as necessary to confirm receipt by the Office of appropriate documents.

You can check the status of your priority document in several ways:

1. Check the Patent Application Information Retrieval (PAIR) system for your application.
2. Look for the document description: “Priority documents electronically retrieved by USPTO from a participating IP Office.”
3. Contact the USPTO directly if you’re unsure about the status.

It’s important to verify receipt of the priority document to ensure compliance with the requirements for claiming priority to a foreign application.

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

For more information on PAIR system, visit: PAIR system.

For more information on PDX, visit: PDX.

For more information on priority document exchange, visit: priority document exchange.

For more information on USPTO, visit: USPTO.

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.

To learn more:

• interim copy
• certified copy
• foreign application
• patent procedure
• timeliness requirement

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

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

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

Can I 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.

To learn more:

• priority claim
• issue fee
• certified copy
• foreign application
• processing fee

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.

To learn more:

• certified copy
• foreign application
• issue fee
• certificate of correction

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:

1. 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
2. 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).

Can a priority claim be made in a continuation or divisional application?

Yes, a priority claim can be made in a continuation or divisional application. However, there are specific requirements and time limits to consider. According to MPEP 214.01:

“In the case of a continuation or divisional application, the claim for priority must be made during the pendency of the application.”

This means:

• The priority claim must be filed within the later of four months from the actual filing date of the continuation or divisional application or sixteen months from the filing date of the prior foreign application.
• If the claim is filed outside this period, it will be considered untimely and require a petition under 37 CFR 1.55(e).
• The priority claim should reference the parent application if it properly claimed the benefit of the foreign application.

It’s important to note that the continuation or divisional application must be filed within 12 months of the foreign application’s filing date (or 6 months for design applications) to be eligible for priority.

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.

A separate written request for PDX retrieval is needed in two specific situations:

1. When the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating office after the foreign priority has been claimed, as long as the time period set in 37 CFR 1.55 has not expired.
2. When the foreign application was not originally filed in a participating office, but a certified copy was filed in an application subsequently filed in a participating foreign intellectual property office.

The MPEP provides Form PTO/SB/38 for such requests:

Applicants can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.

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:

1. File a certified copy of the foreign application directly with the USPTO.
2. Ensure this is done during the pendency of your application and before the patent is granted.
3. 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.

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

For more information on late submission, visit: late submission.

For more information on PDX, visit: PDX.

For more information on priority document exchange, visit: priority document exchange.

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.

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.

To learn more:

• certified copy
• foreign application
• priority claim
• time limit
• issue fee

The time limit for filing a U.S. nonprovisional application claiming priority to a foreign application is generally 12 months from the filing date of the foreign application. For design applications, the time limit is 6 months.

As stated in the MPEP, The United States nonprovisional application must be filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, unless the right of priority has been restored. (MPEP 213.03)

It’s important to note that this period is subject to certain provisions, such as the extension to the next business day if the deadline falls on a weekend or federal holiday.

To learn more:

• Priority claim
• Foreign application
• Nonprovisional application
• Filing deadline

The time limit for filing a certified copy of a foreign application depends on the type of application:

1. 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).
2. 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 § 1.17(g) must accompany the certified copy.

To learn more:

• certified copy
• foreign application
• time limit
• 37 CFR 1.55

To learn more:

• 37 CFR 1.55

What is the significance of the four-month and sixteen-month time periods for filing a priority claim?

The four-month and sixteen-month time periods are crucial deadlines for filing a priority claim in a U.S. patent application. According to MPEP 214.01:

“The claim for priority 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 filed under 35 U.S.C. 111(a).”

These time periods are significant because:

• They provide applicants with a window to properly claim priority to a foreign application.
• The four-month period starts from the U.S. filing date, giving applicants time to prepare and submit the priority claim after filing their U.S. application.
• The sixteen-month period from the foreign filing date ensures that priority claims are made within a reasonable time frame relative to the original foreign filing.
• Filing within these periods allows for the priority claim to be considered timely without requiring additional petitions or fees.

It’s important to note that failing to meet these deadlines may result in the need for a petition to accept an unintentionally delayed priority claim under 37 CFR 1.55(e), which involves additional requirements and fees.

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.

The right of priority in international patent law refers to the right to rely on a foreign application when filing a patent application in another country. This concept originated in the Paris Convention for the Protection of Industrial Property, which the United States adhered to in 1887.

As stated in the MPEP: The right to rely on a foreign application is known as the right of priority in international patent law and this phrase has been adopted in the U.S. statute. This right allows applicants to claim the filing date of an earlier foreign application, providing certain conditions are met.

To learn more:

• right of priority
• international patent law
• Paris Convention
• foreign application

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.

For more information on filing requirements, visit: filing requirements.

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

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.

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

For more information on priority document exchange, visit: priority document exchange.

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

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

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

What is the deadline for submitting certified copies in a national stage application?

The deadline for submitting certified copies in a national stage application (35 U.S.C. 371) is as follows:

• Certified copies must be filed within the time limit set in 37 CFR 1.55(f).
• This is typically within the later of 4 months from the actual filing date of the application or 16 months from the filing date of the prior foreign application.

The MPEP 213.06 states: ‘A certified copy of the foreign application must be filed within the time limit set forth in 37 CFR 1.55(f).’ It’s important to note that this requirement applies unless the certified copy was previously filed in the international application and the requirements of PCT Rule 17.1(a), (b), or (b-bis) have been met.

To learn more:

• certified copies
• national stage application
• deadline
• foreign application

The ‘Minimum Significant Part of the Number’ refers to the essential portion of a foreign application number that should be used in United States Patent and Trademark Office (USPTO) records. According to the MPEP:

The ‘Minimum Significant Part of the Number’ identified in the tables should be used in United States Patent and Trademark Office records.

This concept is important because:

• It standardizes the citation of foreign applications across different numbering systems
• It ensures that the most crucial identifying information is captured
• It facilitates accurate cross-referencing and searching of patent documents

Applicants and examiners should refer to the WIPO tables to determine the correct ‘Minimum Significant Part of the Number’ for each foreign intellectual property office.

To learn more:

• foreign application
• citation
• minimum significant part
• USPTO records

To make a proper priority claim in a U.S. patent application, the applicant must provide specific information about the foreign application and file the claim within the required time period. The requirements differ slightly depending on the type of application.

For applications filed on or after September 16, 2012, under 35 U.S.C. 111(a), MPEP 213.02 states: “the claim for priority must be presented in an application data sheet.” The claim must include:

• The application number of the foreign application
• The country or intellectual property authority
• The day, month, and year of filing

For international applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set forth in the PCT and the Regulations under the PCT.

The MPEP further notes: “For applications filed prior to September 16, 2012, the claim to priority need be in no special form, and may be made by a person authorized to sign correspondence under 37 CFR 1.33(b). No special language is required in making the claim for priority, and any expression which can be reasonably interpreted as claiming the benefit of the foreign application is accepted as the claim for priority.”

It’s important to file the priority claim within the specified time limits to ensure it is considered valid and effective.

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

For more information on foreign application, visit: 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).

To learn more:

• interim copy
• foreign application
• patent filing
• certified copy
• timeliness requirement

An ‘interim copy’ is a copy of the original foreign application from the applicant’s own records that can be submitted to satisfy the timeliness requirement for certified copies. According to 37 CFR 1.55(j):

• The copy must be clearly labeled as ‘Interim Copy’
• It must be filed with a cover sheet identifying the foreign application
• It must be filed within the same time period as required for certified copies
• A certified copy must still be filed during the pendency of the application

This provision allows applicants to meet the deadline even if they cannot obtain a certified copy in time, although there is no requirement to show inability to obtain a certified copy to use this option.

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

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

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).

To learn more:

• interim copy
• foreign application
• certified copy
• patent 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.

The front page of a patent includes the following information regarding foreign priority claims:

• The country of the foreign application
• The filing date of the foreign application
• The number of the foreign application

This information is included for applications where the bib-data sheet has been properly endorsed. As stated in the MPEP: “The front page of the patent when it is issued, and the listing in the Official Gazette, will refer to the claim of priority, giving the country, the filing date, and the number of the foreign application in those applications in which the bib-data sheet has been endorsed.” (MPEP 202)

What happens if the foreign application is not in English?

If the foreign application is not in English, the applicant must provide an English translation of the non-English language application and a statement that the translation is accurate. According to MPEP 213.02:

‘If the foreign application is not in the English language, the applicant must provide an English translation of the non-English language application and a statement that the translation is accurate.’

This requirement ensures that the USPTO can properly examine the application and determine its priority date. The translation and statement 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.

To learn more:

• foreign application
• English translation
• priority claim

What happens if I miss the 12-month deadline for filing a U.S. nonprovisional application claiming priority to a foreign application?

If you miss the 12-month deadline for filing a U.S. nonprovisional application claiming priority to a foreign application, you may still be able to file the application, but you’ll lose the right to claim priority to the foreign application. The MPEP states:

“An applicant who files a nonprovisional application after the 12-month priority period (or 6-month priority period in the case of a design application) will not be able to claim priority to the foreign-filed application in the later-filed nonprovisional application.” (MPEP 213.03)

In such cases, your U.S. application will be treated as a new application without the benefit of the earlier filing date. This can have significant implications, especially if any public disclosures or other prior art have been published in the intervening time.

To learn more:

• priority claim
• foreign application
• nonprovisional application
• filing deadline

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.

To learn more:

• priority claim
• application pendency
• certified copy
• foreign application
• processing fee

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.

The time limits for filing an interim copy of a foreign application are specified in 37 CFR 1.55(j). According to the MPEP:

37 CFR 1.55(j) also provides that the interim copy of the foreign application and cover sheet must be filed within the later of sixteen months from the filing date of the prior foreign application or four months from the actual filing date of an application under 35 U.S.C. 111(a), within four months from the later of the date of commencement (37 CFR 1.491(a)) or the date of the initial submission under 35 U.S.C. 371 in an application entering the national stage under 35 U.S.C. 371, or with a petition under 37 CFR 1.55(e) or (f).

In summary, the interim copy must be filed within:

• 16 months from the filing date of the foreign application, or
• 4 months from the U.S. application filing date under 35 U.S.C. 111(a), or
• 4 months from the national stage commencement or initial submission date under 35 U.S.C. 371, or
• With a petition under 37 CFR 1.55(e) or (f)

To learn more:

• interim copy
• foreign application
• time limits
• filing deadlines
• patent procedure

To use the Priority Document Exchange (PDX) program, several requirements must be met as outlined in MPEP 215.02(a):

1. The foreign application must be filed in a participating foreign intellectual property office.
2. The claim for priority must be presented in an application data sheet (ADS) with specific details about the foreign application.
3. 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 (§1.76(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.

For more information on PDX, visit: PDX.

For more information on priority document exchange, visit: priority document exchange.

For more information on requirements, visit: requirements.

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 § 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 § 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 § 215.02(b).

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

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

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

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.

To learn more:

• certified copy
• foreign application
• national stage application
• PCT

To be entitled to priority under the PDX program, the following requirements must be met:

1. 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
2. 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.

The filing requirements for an interim copy of a foreign application are specified in 37 CFR 1.55(j). They include:

• Filing a copy of the original foreign application clearly labeled as ‘Interim Copy’
• Including a separate cover sheet identifying the foreign application details
• Filing within specified time limits

The MPEP states:

’37 CFR 1.55(j) also provides that the interim copy of the foreign application must be filed together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority).’

It’s crucial to adhere to these requirements to ensure proper processing of the interim copy.

For more information on filing requirements, visit: filing requirements.

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

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

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

No, an English translation of a non-English language foreign application is not always required. According to 37 CFR 1.55(g)(3), an English language translation is only required in specific circumstances:

An English language translation of a non-English language foreign application is not required except: (i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding; (ii) When necessary to overcome the date of a reference relied upon by the examiner; or (iii) When specifically required by the examiner.

If a translation is required, it must be filed together with a statement that the translation of the certified copy is accurate.

To learn more:

• English translation
• foreign application
• patent examination
• language requirements

Submitting an interim copy of a foreign application electronically involves specific procedures. The MPEP provides guidance:

‘If not provided as a single paper document, the main parts of the interim copy of the foreign priority application, i.e., Abstract, Drawings, Specification, Claims, and where applicable, the foreign patent office’s equivalent to a “Sequence Listing” (see MPEP § 2421.01), a “Sequence Listing XML” (see MPEP § 2412), “Large Tables” (see MPEP § 608.05(b)), or a “Computer Program Listing Appendix” (see MPEP § 608.05(a)), along with the separate cover sheet required by 37 CFR 1.55(j), may be filed as a single PDF image file via the USPTO patent electronic filing system.’

Key points for electronic submission:

• File as a single PDF image file when possible
• Use the document description ‘Interim Copy of the Foreign Priority Application’ when indexing
• For plain text files, use the description ‘Interim Copy of the Foreign Priority (text file)’
• XML files, like Standard ST.26 Sequence Listings, should be filed on a read-only optical disc

Proper indexing and file format selection are crucial for successful electronic submission.

For more information on electronic submission, visit: electronic submission.

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

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

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

Foreign priority application information is handled as follows on the bib-data sheet:

• If a proper foreign priority claim is not listed on the bib-data sheet, the examiner should add the information and forward it for correction in the Office computer systems.
• Applications listed on the bib-data sheet but filed in countries not qualifying for benefits under 35 U.S.C. 119(a)-(d) should be lined through.
• The bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application claiming priority.
• Examiners should check this information for accuracy and make corrections if necessary.

The MPEP states: “If a foreign application listed on the oath or declaration (for applications filed prior to September 16, 2012) or application data sheet is not listed on the bib-data sheet and the foreign priority claim is proper (e.g., the foreign priority claim was timely made ), the examiner should provide the information regarding the foreign application number, the country, and the filing date on the bib-data sheet and forward the marked-up bib-data sheet to the Legal Instrument Examiner for correction in the Office computer systems.” (MPEP 202)

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.

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

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

How does the Paris Convention affect the filing deadline for U.S. nonprovisional applications?

The Paris Convention plays a crucial role in determining the filing deadline for U.S. nonprovisional applications claiming priority to foreign applications. The MPEP explains:

“Under the Paris Convention, the right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design, filed in a country signatory to the Convention.” (MPEP 213.03)

Key points about the Paris Convention’s impact on filing deadlines:

• It establishes a 12-month priority period for utility patents and plant patents.
• For design patents, it provides a 6-month priority period.
• The priority period starts from the filing date of the earliest foreign application.
• It applies to applications filed in any country that is a member of the Paris Convention.

This international agreement ensures that inventors have a reasonable timeframe to file patent applications in multiple countries while maintaining the priority date of their original filing. It’s crucial for applicants to be aware of these deadlines when planning their international patent strategy.

To learn more:

• Paris Convention
• priority period
• foreign application
• international patent

37 CFR 1.55(i) provides that the requirement for a timely filed certified copy can be satisfied if:

1. The foreign application was filed in a participating foreign intellectual property office;
2. The claim for priority is presented in an application data sheet, identifying the foreign application;
3. 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.

To learn more:

• priority document exchange
• foreign application
• certified copy
• patent application

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.

To learn more:

• certified copy
• foreign application
• continuing application
• 37 CFR 1.55

To learn more:

• 37 CFR 1.55

How can I request participation in the priority document exchange program?

To request participation in the priority document exchange (PDX) program, you need to follow specific procedures outlined in MPEP 213.04. Here’s what you need to do:

Applicants may participate in the priority document exchange (PDX) program by requesting that the USPTO retrieve a copy of the foreign application from a participating foreign intellectual property office. Participation in the PDX program is not automatic; a request must be made.

To make a request:

• Include an authorization to access the priority document in the foreign office’s system
• Provide sufficient information to identify the foreign application
• Submit this request within the later of:
  • 16 months from the filing date of the prior foreign application, or
  • 4 months from the actual filing date of the application in which priority is claimed

It’s important to note that the PDX program is only available with participating foreign offices. Always check the current list of participating offices before making a request.

To learn more:

• priority document exchange
• PDX program
• foreign application
• priority claim

Filing an interim copy of a foreign application electronically can be done through the USPTO patent electronic filing system. The MPEP provides guidance on how to file different parts of the application:

• Main parts (Abstract, Drawings, Specification, Claims) and the cover sheet can be filed as a single PDF file.
• Text-only files (e.g., Sequence Listings, Large Tables) can be filed as .txt files.
• XML files (e.g., Standard ST.26 Sequence Listing) should be filed on a read-only optical disc.

The MPEP states: If not provided as a single paper document, the main parts of the interim copy of the foreign priority application, i.e., Abstract, Drawings, Specification, Claims, and where applicable, the foreign patent office’s equivalent to a ‘Sequence Listing’ (see MPEP § 2421.01 a ‘Sequence Listing XML’ (see MPEP § 2412), ‘Large Tables’ (see MPEP § 608.05(b)), or a ‘Computer Program Listing Appendix’ (see MPEP § 608.05(a)), along with the separate cover sheet required by 37 CFR 1.55(j), may be filed as a single PDF image file via the USPTO patent electronic filing system.

For more information on electronic filing, refer to MPEP § 502.05.

To learn more:

• interim copy
• foreign application
• electronic filing
• USPTO
• patent procedure

To check if the United States Patent and Trademark Office (USPTO) has received your priority document through the Priority Document Exchange (PDX) program, you should monitor your application status. As stated in MPEP 215.02(a):

Applicants continue to bear the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued. Accordingly, applicants are encouraged to check as necessary to confirm receipt by the Office of appropriate documents.

You can check the status of your priority document in several ways:

1. Check the Patent Application Information Retrieval (PAIR) system for your application.
2. Look for the document description: “Priority documents electronically retrieved by USPTO from a participating IP Office.”
3. Contact the USPTO directly if you’re unsure about the status.

It’s important to verify receipt of the priority document to ensure compliance with the requirements for claiming priority to a foreign application.

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

For more information on PAIR system, visit: PAIR system.

For more information on PDX, visit: PDX.

For more information on priority document exchange, visit: priority document exchange.

For more information on USPTO, visit: USPTO.

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.

To learn more:

• interim copy
• certified copy
• foreign application
• patent procedure
• timeliness requirement

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

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

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

Can I 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.

To learn more:

• priority claim
• issue fee
• certified copy
• foreign application
• processing fee

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.

To learn more:

• certified copy
• foreign application
• issue fee
• certificate of correction

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:

1. 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
2. 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).

Can a priority claim be made in a continuation or divisional application?

Yes, a priority claim can be made in a continuation or divisional application. However, there are specific requirements and time limits to consider. According to MPEP 214.01:

“In the case of a continuation or divisional application, the claim for priority must be made during the pendency of the application.”

This means:

• The priority claim must be filed within the later of four months from the actual filing date of the continuation or divisional application or sixteen months from the filing date of the prior foreign application.
• If the claim is filed outside this period, it will be considered untimely and require a petition under 37 CFR 1.55(e).
• The priority claim should reference the parent application if it properly claimed the benefit of the foreign application.

It’s important to note that the continuation or divisional application must be filed within 12 months of the foreign application’s filing date (or 6 months for design applications) to be eligible for priority.