Patent Law FAQ

The USPTO provides additional information about the Priority Document Exchange (PDX) program on its official website. According to the MPEP:

The Office website provides additional information concerning the priority document exchange program (www.uspto.gov/patents/basics/international-protection/electronic-priority-document-exchange-pdx).

This website includes important details such as:

• A list of intellectual property offices participating in the PDX program
• Information necessary for each participating foreign intellectual property office to provide the USPTO with access to foreign applications

Applicants and practitioners are encouraged to visit this resource for the most up-to-date information on the PDX program and its participants.

A separate written request is required in specific situations, as outlined in MPEP 215.01:

A separate written request may be used when the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating foreign intellectual property office after the foreign priority has been claimed, so long as the time period set in 37 CFR 1.55 has not expired.

Additionally, a separate request is needed 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 office.
• The applicant wants to use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.

To learn more:

• PDX
• Written Requests
• Foreign Applications
• Patent Procedure

The USPTO’s timing for retrieving foreign applications under PDX is described in MPEP 215.01:

In general, an attempt to retrieve an eligible foreign application to which priority is claimed in a U.S. application will be made by the USPTO when the application is docketed to an examiner. In any case the USPTO will not attempt electronic retrieval until the Office of Patent Application Processing has completed its review of the application.

Key points about the retrieval timing:

• The first attempt is typically made when the application is assigned to an examiner.
• Retrieval occurs after the Office of Patent Application Processing completes its review.
• Applicants should check the Private PAIR system to confirm successful retrieval.
• A successful retrieval usually takes about one week to complete.

To learn more:

• PDX
• USPTO Procedures
• Foreign Applications
• Retrieval Timing

The PDX (Priority Document Exchange) program serves to facilitate the exchange of priority documents between participating intellectual property offices. According to MPEP 215.01, ‘The PDX program eliminates the need for applicants to submit paper certified copies of foreign applications in participating intellectual property offices.’ This streamlines the process, reducing both the burden on applicants and the workload for patent offices.

The priority document exchange program is a system that allows participating patent offices to exchange priority documents electronically. According to MPEP 215.02(a):

“Applicants may use the priority document exchange program to obtain a copy of a foreign application filed in a participating foreign intellectual property office.”

This program simplifies the process of obtaining priority documents for patent applications filed in multiple countries.

To learn more:

• priority document exchange
• patent applications
• foreign applications

The Electronic Priority Document Exchange (PDX) program is a system that allows for the electronic transmission of priority documents between participating foreign intellectual property offices. As stated in the MPEP:

Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices.

This program simplifies the process of obtaining certified copies of foreign priority applications, which is crucial for establishing priority claims in patent applications.

Electronic Priority Document Exchange (PDX) is a system that allows for the electronic transmission of priority documents between participating foreign intellectual property offices. As stated in MPEP 215.01:

Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices.

This system streamlines the process of obtaining certified copies of foreign priority applications, which is crucial for claiming priority in patent applications.

To learn more:

• PDX
• Priority Documents
• Foreign Applications
• Patent Examination

If your foreign application was not filed in a participating Priority Document Exchange (PDX) office, you may still be able to use the PDX program under certain conditions. According to 37 CFR 1.55(i)(4):

If the foreign application was not filed in a participating foreign intellectual property office, but a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy, the applicant must also file a request in a separate document that the Office obtain a copy of the foreign application from the participating intellectual property office.

To make this request, you can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)). The request must identify the participating office and the subsequent application by application number, country, and filing date.

To learn more:

• Priority Document Exchange
• Non-participating Offices
• Foreign Applications
• Form PTO/SB/38

When foreign applications are properly claimed and verified in a patent application, this information is reflected in the issued patent and the Official Gazette listing. This helps establish the priority date and international scope of the invention.

The MPEP states: 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)

This means that for each properly claimed foreign application, the following information will be publicly available:

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

It’s important to note that this information is only included for foreign applications that have been verified and endorsed on the bib-data sheet by the examiner. For more information on foreign priority claims, see MPEP § 213.

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

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

For more information on Official Gazette, visit: Official Gazette.

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

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

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

The USPTO treats a proper priority claim to an application filed in a participating foreign intellectual property office as a request to obtain a copy of the foreign application. According to MPEP 215.01:

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

This means that applicants generally do not need to file a separate request for the USPTO to retrieve the priority document if it’s from a participating office.

To learn more:

• Priority Claims
• USPTO Procedures
• Foreign Applications
• PDX

The timeliness requirement for submitting certified copies of foreign applications can be satisfied through the Priority Document Exchange program. According to 37 CFR 1.55(i), the 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 with the required information
• The copy of the foreign application is received by the USPTO from the participating foreign office within the specified time period

The MPEP states, 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. Therefore, it’s crucial to verify that the USPTO has received the priority document.

To learn more:

• Timeliness Requirement
• Certified Copies
• Foreign Applications
• Priority Document Exchange

To ensure successful retrieval of priority documents under PDX, applicants should follow these guidelines from MPEP 215.01:

Applicants are strongly encouraged to cite the foreign application using an acceptable format (see MPEP § 214.04) and use proper and consistent citation format throughout the U.S. application.

Key points for successful retrieval include:

• Provide proper, complete, and consistent citations of foreign priority applications and filing dates.
• Use an acceptable format for citing foreign applications (refer to MPEP § 214.04).
• Ensure the foreign priority claim is complete to prevent retrieval issues.
• Check the Private Patent Application and Information Retrieval (PAIR) system to confirm successful retrieval.

Remember, a successful retrieval typically takes about one week to complete.

To learn more:

• PDX
• Priority Documents
• Foreign Applications
• Citation Format

To ensure successful retrieval of foreign applications through PDX, applicants should:

• Provide proper and consistent citation of the foreign priority application and its filing date
• Use an acceptable format for citing the foreign application (see MPEP § 214.04)
• Ensure the foreign priority claim is complete

The MPEP emphasizes the importance of correct citations:

An improper, incomplete, or inconsistent citation of a foreign priority application and/or its filing date will result in a delay or prevent retrieval under the Priority Document Exchange program.

Applicants are encouraged to check the Private PAIR system to confirm successful retrieval of their foreign priority application.

Foreign priority claims are an important aspect of patent applications and are reflected on the bib-data sheet. The examiner should verify that foreign applications listed on the oath, declaration, or application data sheet are correctly listed on the bib-data sheet.

According to the MPEP: A bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application that the U.S. application is claiming the priority of. The examiner should check this information for accuracy. (MPEP 202)

If there are errors:

• On the oath, declaration, or application data sheet: The examiner should require a new document.
• On the bib-data sheet itself: The examiner should make corrections directly on the sheet and have the information updated in the Office computer systems.

It’s important to note that only countries qualifying for benefits under 35 U.S.C. 119(a)-(d) should be listed. A list of qualifying countries can be found in MPEP § 213.01.

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

For more information on foreign priority claims, visit: foreign priority claims.

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

Yes, it is possible to claim priority to multiple foreign applications in a U.S. patent application, provided certain conditions are met:

• Each foreign application must independently meet the requirements for a priority claim
• The U.S. application must be filed within 12 months of the earliest filed foreign application
• The claimed subject matter must be supported by each application for which priority is claimed

When claiming multiple priorities, the U.S. application gets the benefit of each prior application only for the subject matter that it supports. This allows applicants to combine priority claims to protect inventions that were developed and disclosed progressively over time in different countries.

When foreign applications are properly claimed and verified in a patent application, this information is reflected in the issued patent and the Official Gazette listing. This helps establish the priority date and international scope of the invention.

The MPEP states: 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)

This means that for each properly claimed foreign application, the following information will be publicly available:

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

It’s important to note that this information is only included for foreign applications that have been verified and endorsed on the bib-data sheet by the examiner. For more information on foreign priority claims, see MPEP § 213.

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

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

For more information on Official Gazette, visit: Official Gazette.

Foreign priority claims are an important aspect of patent applications and are reflected on the bib-data sheet. The examiner should verify that foreign applications listed on the oath, declaration, or application data sheet are correctly listed on the bib-data sheet.

According to the MPEP: A bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application that the U.S. application is claiming the priority of. The examiner should check this information for accuracy. (MPEP 202)

If there are errors:

• On the oath, declaration, or application data sheet: The examiner should require a new document.
• On the bib-data sheet itself: The examiner should make corrections directly on the sheet and have the information updated in the Office computer systems.

It’s important to note that only countries qualifying for benefits under 35 U.S.C. 119(a)-(d) should be listed. A list of qualifying countries can be found in MPEP § 213.01.

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

For more information on foreign priority claims, visit: foreign priority claims.

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

Yes, it is possible to claim priority to multiple foreign applications in a U.S. patent application, provided certain conditions are met:

• Each foreign application must independently meet the requirements for a priority claim
• The U.S. application must be filed within 12 months of the earliest filed foreign application
• The claimed subject matter must be supported by each application for which priority is claimed

When claiming multiple priorities, the U.S. application gets the benefit of each prior application only for the subject matter that it supports. This allows applicants to combine priority claims to protect inventions that were developed and disclosed progressively over time in different countries.

The USPTO provides additional information about the Priority Document Exchange (PDX) program on its official website. According to the MPEP:

The Office website provides additional information concerning the priority document exchange program (www.uspto.gov/patents/basics/international-protection/electronic-priority-document-exchange-pdx).

This website includes important details such as:

• A list of intellectual property offices participating in the PDX program
• Information necessary for each participating foreign intellectual property office to provide the USPTO with access to foreign applications

Applicants and practitioners are encouraged to visit this resource for the most up-to-date information on the PDX program and its participants.

The PDX (Priority Document Exchange) program serves to facilitate the exchange of priority documents between participating intellectual property offices. According to MPEP 215.01, ‘The PDX program eliminates the need for applicants to submit paper certified copies of foreign applications in participating intellectual property offices.’ This streamlines the process, reducing both the burden on applicants and the workload for patent offices.

The Electronic Priority Document Exchange (PDX) program is a system that allows for the electronic transmission of priority documents between participating foreign intellectual property offices. As stated in the MPEP:

Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices.

This program simplifies the process of obtaining certified copies of foreign priority applications, which is crucial for establishing priority claims in patent applications.

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

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

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

To ensure successful retrieval of foreign applications through PDX, applicants should:

• Provide proper and consistent citation of the foreign priority application and its filing date
• Use an acceptable format for citing the foreign application (see MPEP § 214.04)
• Ensure the foreign priority claim is complete

The MPEP emphasizes the importance of correct citations:

An improper, incomplete, or inconsistent citation of a foreign priority application and/or its filing date will result in a delay or prevent retrieval under the Priority Document Exchange program.

Applicants are encouraged to check the Private PAIR system to confirm successful retrieval of their foreign priority application.

The USPTO provides additional information about the Priority Document Exchange (PDX) program on its official website. According to the MPEP:

The Office website provides additional information concerning the priority document exchange program (www.uspto.gov/patents/basics/international-protection/electronic-priority-document-exchange-pdx).

This website includes important details such as:

• A list of intellectual property offices participating in the PDX program
• Information necessary for each participating foreign intellectual property office to provide the USPTO with access to foreign applications

Applicants and practitioners are encouraged to visit this resource for the most up-to-date information on the PDX program and its participants.

A separate written request is required in specific situations, as outlined in MPEP 215.01:

A separate written request may be used when the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating foreign intellectual property office after the foreign priority has been claimed, so long as the time period set in 37 CFR 1.55 has not expired.

Additionally, a separate request is needed 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 office.
• The applicant wants to use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.

To learn more:

• PDX
• Written Requests
• Foreign Applications
• Patent Procedure

The USPTO’s timing for retrieving foreign applications under PDX is described in MPEP 215.01:

In general, an attempt to retrieve an eligible foreign application to which priority is claimed in a U.S. application will be made by the USPTO when the application is docketed to an examiner. In any case the USPTO will not attempt electronic retrieval until the Office of Patent Application Processing has completed its review of the application.

Key points about the retrieval timing:

• The first attempt is typically made when the application is assigned to an examiner.
• Retrieval occurs after the Office of Patent Application Processing completes its review.
• Applicants should check the Private PAIR system to confirm successful retrieval.
• A successful retrieval usually takes about one week to complete.

To learn more:

• PDX
• USPTO Procedures
• Foreign Applications
• Retrieval Timing

The PDX (Priority Document Exchange) program serves to facilitate the exchange of priority documents between participating intellectual property offices. According to MPEP 215.01, ‘The PDX program eliminates the need for applicants to submit paper certified copies of foreign applications in participating intellectual property offices.’ This streamlines the process, reducing both the burden on applicants and the workload for patent offices.

The priority document exchange program is a system that allows participating patent offices to exchange priority documents electronically. According to MPEP 215.02(a):

“Applicants may use the priority document exchange program to obtain a copy of a foreign application filed in a participating foreign intellectual property office.”

This program simplifies the process of obtaining priority documents for patent applications filed in multiple countries.

To learn more:

• priority document exchange
• patent applications
• foreign applications

The Electronic Priority Document Exchange (PDX) program is a system that allows for the electronic transmission of priority documents between participating foreign intellectual property offices. As stated in the MPEP:

Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices.

This program simplifies the process of obtaining certified copies of foreign priority applications, which is crucial for establishing priority claims in patent applications.

Electronic Priority Document Exchange (PDX) is a system that allows for the electronic transmission of priority documents between participating foreign intellectual property offices. As stated in MPEP 215.01:

Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices.

This system streamlines the process of obtaining certified copies of foreign priority applications, which is crucial for claiming priority in patent applications.

To learn more:

• PDX
• Priority Documents
• Foreign Applications
• Patent Examination

For patent applications filed before September 16, 2012, the oath or declaration must include specific information about foreign applications if not provided in an application data sheet. According to pre-AIA 37 CFR 1.63(c)(2), the oath or declaration must identify:

• Any foreign application for patent (or inventor’s certificate) for which a claim for priority is made
• Any foreign application having a filing date before that of the application on which priority is claimed

The MPEP elaborates: The applicant is required to recite all foreign applications filed prior to the application on which priority is claimed. It is required to give the foreign application number and name of the country or office in which filed, as well as the filing date of each foreign application to which priority is claimed.

This information is crucial for establishing priority claims and ensuring compliance with patent law requirements regarding prior foreign filings.

To learn more:

• foreign applications
• oath
• declaration
• priority claim
• pre-AIA

If your foreign application was not filed in a participating Priority Document Exchange (PDX) office, you may still be able to use the PDX program under certain conditions. According to 37 CFR 1.55(i)(4):

If the foreign application was not filed in a participating foreign intellectual property office, but a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy, the applicant must also file a request in a separate document that the Office obtain a copy of the foreign application from the participating intellectual property office.

To make this request, you can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)). The request must identify the participating office and the subsequent application by application number, country, and filing date.

To learn more:

• Priority Document Exchange
• Non-participating Offices
• Foreign Applications
• Form PTO/SB/38

When foreign applications are properly claimed and verified in a patent application, this information is reflected in the issued patent and the Official Gazette listing. This helps establish the priority date and international scope of the invention.

The MPEP states: 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)

This means that for each properly claimed foreign application, the following information will be publicly available:

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

It’s important to note that this information is only included for foreign applications that have been verified and endorsed on the bib-data sheet by the examiner. For more information on foreign priority claims, see MPEP § 213.

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

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

For more information on Official Gazette, visit: Official Gazette.

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

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

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

The USPTO treats a proper priority claim to an application filed in a participating foreign intellectual property office as a request to obtain a copy of the foreign application. According to MPEP 215.01:

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

This means that applicants generally do not need to file a separate request for the USPTO to retrieve the priority document if it’s from a participating office.

To learn more:

• Priority Claims
• USPTO Procedures
• Foreign Applications
• PDX

The timeliness requirement for submitting certified copies of foreign applications can be satisfied through the Priority Document Exchange program. According to 37 CFR 1.55(i), the 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 with the required information
• The copy of the foreign application is received by the USPTO from the participating foreign office within the specified time period

The MPEP states, 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. Therefore, it’s crucial to verify that the USPTO has received the priority document.

To learn more:

• Timeliness Requirement
• Certified Copies
• Foreign Applications
• Priority Document Exchange

To ensure successful retrieval of priority documents under PDX, applicants should follow these guidelines from MPEP 215.01:

Applicants are strongly encouraged to cite the foreign application using an acceptable format (see MPEP § 214.04) and use proper and consistent citation format throughout the U.S. application.

Key points for successful retrieval include:

• Provide proper, complete, and consistent citations of foreign priority applications and filing dates.
• Use an acceptable format for citing foreign applications (refer to MPEP § 214.04).
• Ensure the foreign priority claim is complete to prevent retrieval issues.
• Check the Private Patent Application and Information Retrieval (PAIR) system to confirm successful retrieval.

Remember, a successful retrieval typically takes about one week to complete.

To learn more:

• PDX
• Priority Documents
• Foreign Applications
• Citation Format

To ensure successful retrieval of foreign applications through PDX, applicants should:

• Provide proper and consistent citation of the foreign priority application and its filing date
• Use an acceptable format for citing the foreign application (see MPEP § 214.04)
• Ensure the foreign priority claim is complete

The MPEP emphasizes the importance of correct citations:

An improper, incomplete, or inconsistent citation of a foreign priority application and/or its filing date will result in a delay or prevent retrieval under the Priority Document Exchange program.

Applicants are encouraged to check the Private PAIR system to confirm successful retrieval of their foreign priority application.

Foreign priority claims are an important aspect of patent applications and are reflected on the bib-data sheet. The examiner should verify that foreign applications listed on the oath, declaration, or application data sheet are correctly listed on the bib-data sheet.

According to the MPEP: A bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application that the U.S. application is claiming the priority of. The examiner should check this information for accuracy. (MPEP 202)

If there are errors:

• On the oath, declaration, or application data sheet: The examiner should require a new document.
• On the bib-data sheet itself: The examiner should make corrections directly on the sheet and have the information updated in the Office computer systems.

It’s important to note that only countries qualifying for benefits under 35 U.S.C. 119(a)-(d) should be listed. A list of qualifying countries can be found in MPEP § 213.01.

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

For more information on foreign priority claims, visit: foreign priority claims.

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

Yes, it is possible to claim priority to multiple foreign applications in a U.S. patent application, provided certain conditions are met:

• Each foreign application must independently meet the requirements for a priority claim
• The U.S. application must be filed within 12 months of the earliest filed foreign application
• The claimed subject matter must be supported by each application for which priority is claimed

When claiming multiple priorities, the U.S. application gets the benefit of each prior application only for the subject matter that it supports. This allows applicants to combine priority claims to protect inventions that were developed and disclosed progressively over time in different countries.

The USPTO provides additional information about the Priority Document Exchange (PDX) program on its official website. According to the MPEP:

The Office website provides additional information concerning the priority document exchange program (www.uspto.gov/patents/basics/international-protection/electronic-priority-document-exchange-pdx).

This website includes important details such as:

• A list of intellectual property offices participating in the PDX program
• Information necessary for each participating foreign intellectual property office to provide the USPTO with access to foreign applications

Applicants and practitioners are encouraged to visit this resource for the most up-to-date information on the PDX program and its participants.

A separate written request is required in specific situations, as outlined in MPEP 215.01:

A separate written request may be used when the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating foreign intellectual property office after the foreign priority has been claimed, so long as the time period set in 37 CFR 1.55 has not expired.

Additionally, a separate request is needed 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 office.
• The applicant wants to use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.

To learn more:

• PDX
• Written Requests
• Foreign Applications
• Patent Procedure

The USPTO’s timing for retrieving foreign applications under PDX is described in MPEP 215.01:

In general, an attempt to retrieve an eligible foreign application to which priority is claimed in a U.S. application will be made by the USPTO when the application is docketed to an examiner. In any case the USPTO will not attempt electronic retrieval until the Office of Patent Application Processing has completed its review of the application.

Key points about the retrieval timing:

• The first attempt is typically made when the application is assigned to an examiner.
• Retrieval occurs after the Office of Patent Application Processing completes its review.
• Applicants should check the Private PAIR system to confirm successful retrieval.
• A successful retrieval usually takes about one week to complete.

To learn more:

• PDX
• USPTO Procedures
• Foreign Applications
• Retrieval Timing

The PDX (Priority Document Exchange) program serves to facilitate the exchange of priority documents between participating intellectual property offices. According to MPEP 215.01, ‘The PDX program eliminates the need for applicants to submit paper certified copies of foreign applications in participating intellectual property offices.’ This streamlines the process, reducing both the burden on applicants and the workload for patent offices.

The priority document exchange program is a system that allows participating patent offices to exchange priority documents electronically. According to MPEP 215.02(a):

“Applicants may use the priority document exchange program to obtain a copy of a foreign application filed in a participating foreign intellectual property office.”

This program simplifies the process of obtaining priority documents for patent applications filed in multiple countries.

To learn more:

• priority document exchange
• patent applications
• foreign applications

The Electronic Priority Document Exchange (PDX) program is a system that allows for the electronic transmission of priority documents between participating foreign intellectual property offices. As stated in the MPEP:

Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices.

This program simplifies the process of obtaining certified copies of foreign priority applications, which is crucial for establishing priority claims in patent applications.

Electronic Priority Document Exchange (PDX) is a system that allows for the electronic transmission of priority documents between participating foreign intellectual property offices. As stated in MPEP 215.01:

Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices.

This system streamlines the process of obtaining certified copies of foreign priority applications, which is crucial for claiming priority in patent applications.

To learn more:

• PDX
• Priority Documents
• Foreign Applications
• Patent Examination

For patent applications filed before September 16, 2012, the oath or declaration must include specific information about foreign applications if not provided in an application data sheet. According to pre-AIA 37 CFR 1.63(c)(2), the oath or declaration must identify:

• Any foreign application for patent (or inventor’s certificate) for which a claim for priority is made
• Any foreign application having a filing date before that of the application on which priority is claimed

The MPEP elaborates: The applicant is required to recite all foreign applications filed prior to the application on which priority is claimed. It is required to give the foreign application number and name of the country or office in which filed, as well as the filing date of each foreign application to which priority is claimed.

This information is crucial for establishing priority claims and ensuring compliance with patent law requirements regarding prior foreign filings.

To learn more:

• foreign applications
• oath
• declaration
• priority claim
• pre-AIA

If your foreign application was not filed in a participating Priority Document Exchange (PDX) office, you may still be able to use the PDX program under certain conditions. According to 37 CFR 1.55(i)(4):

If the foreign application was not filed in a participating foreign intellectual property office, but a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy, the applicant must also file a request in a separate document that the Office obtain a copy of the foreign application from the participating intellectual property office.

To make this request, you can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)). The request must identify the participating office and the subsequent application by application number, country, and filing date.

To learn more:

• Priority Document Exchange
• Non-participating Offices
• Foreign Applications
• Form PTO/SB/38

When foreign applications are properly claimed and verified in a patent application, this information is reflected in the issued patent and the Official Gazette listing. This helps establish the priority date and international scope of the invention.

The MPEP states: 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)

This means that for each properly claimed foreign application, the following information will be publicly available:

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

It’s important to note that this information is only included for foreign applications that have been verified and endorsed on the bib-data sheet by the examiner. For more information on foreign priority claims, see MPEP § 213.

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

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

For more information on Official Gazette, visit: Official Gazette.

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

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

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

The USPTO treats a proper priority claim to an application filed in a participating foreign intellectual property office as a request to obtain a copy of the foreign application. According to MPEP 215.01:

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

This means that applicants generally do not need to file a separate request for the USPTO to retrieve the priority document if it’s from a participating office.

To learn more:

• Priority Claims
• USPTO Procedures
• Foreign Applications
• PDX

The timeliness requirement for submitting certified copies of foreign applications can be satisfied through the Priority Document Exchange program. According to 37 CFR 1.55(i), the 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 with the required information
• The copy of the foreign application is received by the USPTO from the participating foreign office within the specified time period

The MPEP states, 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. Therefore, it’s crucial to verify that the USPTO has received the priority document.

To learn more:

• Timeliness Requirement
• Certified Copies
• Foreign Applications
• Priority Document Exchange

To ensure successful retrieval of priority documents under PDX, applicants should follow these guidelines from MPEP 215.01:

Applicants are strongly encouraged to cite the foreign application using an acceptable format (see MPEP § 214.04) and use proper and consistent citation format throughout the U.S. application.

Key points for successful retrieval include:

• Provide proper, complete, and consistent citations of foreign priority applications and filing dates.
• Use an acceptable format for citing foreign applications (refer to MPEP § 214.04).
• Ensure the foreign priority claim is complete to prevent retrieval issues.
• Check the Private Patent Application and Information Retrieval (PAIR) system to confirm successful retrieval.

Remember, a successful retrieval typically takes about one week to complete.

To learn more:

• PDX
• Priority Documents
• Foreign Applications
• Citation Format

To ensure successful retrieval of foreign applications through PDX, applicants should:

• Provide proper and consistent citation of the foreign priority application and its filing date
• Use an acceptable format for citing the foreign application (see MPEP § 214.04)
• Ensure the foreign priority claim is complete

The MPEP emphasizes the importance of correct citations:

An improper, incomplete, or inconsistent citation of a foreign priority application and/or its filing date will result in a delay or prevent retrieval under the Priority Document Exchange program.

Applicants are encouraged to check the Private PAIR system to confirm successful retrieval of their foreign priority application.

Foreign priority claims are an important aspect of patent applications and are reflected on the bib-data sheet. The examiner should verify that foreign applications listed on the oath, declaration, or application data sheet are correctly listed on the bib-data sheet.

According to the MPEP: A bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application that the U.S. application is claiming the priority of. The examiner should check this information for accuracy. (MPEP 202)

If there are errors:

• On the oath, declaration, or application data sheet: The examiner should require a new document.
• On the bib-data sheet itself: The examiner should make corrections directly on the sheet and have the information updated in the Office computer systems.

It’s important to note that only countries qualifying for benefits under 35 U.S.C. 119(a)-(d) should be listed. A list of qualifying countries can be found in MPEP § 213.01.

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

For more information on foreign priority claims, visit: foreign priority claims.

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

Yes, it is possible to claim priority to multiple foreign applications in a U.S. patent application, provided certain conditions are met:

• Each foreign application must independently meet the requirements for a priority claim
• The U.S. application must be filed within 12 months of the earliest filed foreign application
• The claimed subject matter must be supported by each application for which priority is claimed

When claiming multiple priorities, the U.S. application gets the benefit of each prior application only for the subject matter that it supports. This allows applicants to combine priority claims to protect inventions that were developed and disclosed progressively over time in different countries.