Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 200 - Types and Status of Application; Benefit and Priority (14)
A reissue application is necessary to perfect a foreign priority claim in the following situations:
- When the requirements of 35 U.S.C. 119(a)-(d) or (f) were not satisfied in the patented application or its parent prior to issuance.
- When the requirements of 37 CFR 1.55 are not met.
- When the correction sought would require further examination.
The MPEP provides an example: Further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA. In such situations, the filing of a reissue application with a petition for an unintentionally delayed priority claim would be required.
To learn more:
When claiming foreign priority, the application data sheet (ADS) must include specific information to meet the requirements of 37 CFR 1.55(i)(2). The MPEP states that the claim for priority must be presented in an ADS:
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
This information is crucial for the USPTO to retrieve the priority document through the Priority Document Exchange program. Ensure that all details are accurate to avoid any issues with your priority claim.
To learn more:
If you miss the deadline for filing a foreign priority claim, you may still have options:
- Unintentional delay: You can file a petition to accept an unintentionally delayed priority claim under 37 CFR 1.55(e). This petition 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.
- Design applications: For design applications, you can file this petition up to the date of payment of the issue fee.
The MPEP states: The Director may accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), or 365(a) or (b) in an application for patent filed on or after November 29, 2000, upon petition pursuant to 37 CFR 1.55(e).
It’s important to note that the petition must include a statement that the entire delay was unintentional, and you may need to provide additional evidence to support this claim.
What are the time limits for perfecting a foreign priority claim in a patent?
The time limits for perfecting a foreign priority claim in a patent are as follows:
- The priority claim must be made within 16 months from the filing date of the prior foreign application or 4 months from the actual filing date of the U.S. application, whichever is later.
- A certified copy of the foreign application must be filed within the same time period, unless previously submitted in a parent application.
According to MPEP 216.01: “The patent owner’s failure to make a timely priority claim and file the certified copy prior to issuance of the patent cannot be cured by filing a reissue application.” This emphasizes the importance of meeting these deadlines during the initial patent application process.
To file a certificate of correction to perfect a foreign priority claim, you must meet the following requirements:
- The priority claim under 37 CFR 1.55 was timely filed in the application but was not included on the patent due to failure to provide a certified copy.
- A grantable petition under 37 CFR 1.55(f) or (g) must be filed, which includes:
- The fee set forth in 37 CFR 1.17(g)
- A showing of good and sufficient cause for the delay in filing the certified copy
- The correction must not require further examination.
As stated in the MPEP, Where the priority claim required under 37 CFR 1.55 was timely filed in the application but was not included on the patent because the requirement under 37 CFR 1.55 for a certified copy was not satisfied, the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a grantable petition under 37 CFR 1.55(f) or, in the case of a design application, a grantable petition under 37 CFR 1.55(g).
To learn more:
To learn more:
To claim foreign priority in a U.S. patent application, several requirements must be met as outlined in MPEP 213. These include:
- Timely filing: The U.S. application must be filed within 12 months of the foreign application’s filing date (6 months for design patents)
- Proper claim: The priority claim must be made in an application data sheet (ADS) or in the first sentence of the specification
- Certified copy: A certified copy of the foreign application must be filed within the later of 4 months from the U.S. filing date or 16 months from the foreign filing date
- English translation: If the foreign application is not in English, a translation may be required
As stated in MPEP 213, “The claim for priority must be presented in an application data sheet (37 CFR 1.76(b)(6)) or the specification must contain or be amended to contain a specific reference to the prior foreign application.” Failure to meet these requirements may result in the loss of the priority claim.
Improperly identifying a foreign priority application can have serious consequences for a patent applicant. According to MPEP 214.04:
‘Where the claim to priority in an application filed under 35 U.S.C. 111(a) is presented after the time period provided by 37 CFR 1.55(d) and without the required petition, or where the claim to priority is presented in a nonprovisional application filed under 35 U.S.C. 111(a) that was filed on or after March 16, 2013, and also claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a prior application that was filed prior to March 16, 2013, the examiner should reject under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, any claims which are directed to subject matter that is not supported by the foreign application.’
Consequences may include:
- Rejection of claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph
- Loss of priority date for unsupported subject matter
- Potential issues with patentability due to intervening prior art
It’s crucial to accurately identify and properly claim foreign priority to avoid these issues.
To learn more:
Foreign priority claims in patent applications should be formatted according to specific guidelines outlined in MPEP 214.04. The claim should include:
- The application number of the foreign application
- The country or intellectual property authority where the application was filed
- The day, month, and year of filing
The MPEP states: ‘When the claim to priority concerns an application filed in a foreign country, the claim must identify the foreign country or intellectual property authority where the application was filed.’ This ensures proper identification and processing of the priority claim.
To learn more:
To learn more:
How do I properly identify a foreign application when claiming priority in a U.S. patent application?
When claiming priority to a foreign application in a U.S. patent application, it’s crucial to provide accurate identification information. According to MPEP 214.01, you must include the following details:
- The application number of the foreign application
- The country or intellectual property authority where the foreign application was filed
- The day, month, and year of filing of the foreign application
The MPEP states: ‘The claim for priority must identify the foreign application for which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.’
Additionally, if you’re submitting a certified copy of the foreign application, ensure that it matches the identification information provided in your priority claim. Accurate identification is essential for establishing your priority rights and avoiding potential issues during examination or litigation.
How do I correct an error in my foreign priority claim?
If you need to correct an error in your foreign priority claim, the process depends on the nature of the error and when it’s discovered. According to MPEP 214.01, “Applicant may correct the failure to adequately claim priority to the prior foreign application by amending the specification or submitting a new application data sheet (ADS) identifying the foreign application by application number, country (or intellectual property authority), and filing date.” Here are some key points to remember:
- If the error is discovered within the time period for filing the priority claim, you can simply submit a corrected ADS or amend the specification.
- If the error is discovered after the time period has expired, you may need to file a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim.
- For minor typographical errors, a request for a corrected filing receipt may be sufficient.
Always consult with a patent attorney or agent to determine the best course of action for your specific situation.
A certificate of correction can be used to perfect a foreign priority claim in the following scenarios:
- When the priority claim was timely filed but not included on the patent due to failure to submit a certified copy.
- When the priority claim was not timely made, but the correction would not require further examination.
To use a certificate of correction, you must:
- File a request for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
- Include a grantable petition under 37 CFR 1.55(e), (f), or (g) as appropriate.
- Pay the required fee and provide a showing of good and sufficient cause for the delay, if applicable.
The MPEP states: Where the priority claim required under 37 CFR 1.55 was timely filed in the application but was not included on the patent because the requirement under 37 CFR 1.55 for a certified copy was not satisfied, the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a grantable petition under 37 CFR 1.55(f) or, in the case of a design application, a grantable petition under 37 CFR 1.55(g).
How can I request a corrected patent with a perfected foreign priority claim?
To request a corrected patent with a perfected foreign priority claim after issuance, you need to follow these steps:
- File a reissue application under 35 U.S.C. 251.
- Include a petition for an expedited examination of the reissue application.
- Pay the required fees for both the reissue application and the petition.
- Submit the necessary documents to perfect the priority claim, such as a certified copy of the foreign application.
As stated in MPEP 216.01: “A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent.” It’s important to note that this process is only available for perfecting priority claims that were timely filed during the pendency of the application.
Can I perfect a foreign priority claim after my patent has been issued?
No, you cannot perfect a foreign priority claim after your patent has been issued if the claim was not timely filed during the pendency of the application. As stated in MPEP 216.01:
“A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent. However, a reissue application cannot be used to perfect a claim for priority benefit under 35 U.S.C. 119(a)-(d) or (f) where the claim for priority benefit was not timely filed during the pendency of the application that issued as the patent for which reissue is sought.”
This means that if you missed the deadline to file the priority claim or the required certified copy of the foreign application during the original patent application process, you cannot use a reissue application to retroactively perfect the claim after the patent has been issued.
Yes, a foreign priority claim can be corrected after filing a patent application, but there are specific procedures and time limitations to follow. According to MPEP 214.04:
‘The time period for making a claim for priority under 37 CFR 1.55 is set forth in 37 CFR 1.55(d)… 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.’
To correct a foreign priority claim:
- If before the issue fee is paid: File a corrected Application Data Sheet (ADS) with the proper identification of the foreign application.
- If after the issue fee is paid: Request a Certificate of Correction under 35 U.S.C. 255 and 37 CFR 1.323.
It’s important to note that corrections must be made within the time period specified in 37 CFR 1.55(d), which is typically 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:
MPEP 200 - Types and Status of Application; Benefit and Priority Claims (2)
To claim priority to an earlier-filed foreign application, the applicant must:
1. File the U.S. application within 12 months of the foreign application’s filing date (6 months for design applications).
2. In the U.S. application, include a claim for priority that identifies the foreign application. For applications filed on/after 9/16/12, this must be in an ADS.
3. File a certified copy of the foreign application, unless it was previously filed or is available to the USPTO via a priority document exchange program.
See MPEP 213 – 216 for the detailed requirements. Some deadlines can be extended on petition if unintentionally delayed.
To claim foreign priority in a U.S. patent application, you must:
1. File the U.S. application within 12 months (6 months for design applications) of the foreign filing date.
2. Submit a claim for priority identifying the foreign application.
3. File a certified copy of the foreign application.
For applications filed on or after September 16, 2012, 37 CFR 1.55(d)(1) requires that the claim for priority be presented in an application data sheet. The claim must identify the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.
A certified copy of the foreign application must also be filed within a specified time period, usually within the later of 4 months from the actual U.S. filing date or 16 months from the foreign filing date.
MPEP 213-Right of Priority of Foreign Application (2)
To claim foreign priority in a U.S. patent application, several requirements must be met as outlined in MPEP 213. These include:
- Timely filing: The U.S. application must be filed within 12 months of the foreign application’s filing date (6 months for design patents)
- Proper claim: The priority claim must be made in an application data sheet (ADS) or in the first sentence of the specification
- Certified copy: A certified copy of the foreign application must be filed within the later of 4 months from the U.S. filing date or 16 months from the foreign filing date
- English translation: If the foreign application is not in English, a translation may be required
As stated in MPEP 213, “The claim for priority must be presented in an application data sheet (37 CFR 1.76(b)(6)) or the specification must contain or be amended to contain a specific reference to the prior foreign application.” Failure to meet these requirements may result in the loss of the priority claim.
To claim foreign priority in a U.S. patent application, you must:
1. File the U.S. application within 12 months (6 months for design applications) of the foreign filing date.
2. Submit a claim for priority identifying the foreign application.
3. File a certified copy of the foreign application.
For applications filed on or after September 16, 2012, 37 CFR 1.55(d)(1) requires that the claim for priority be presented in an application data sheet. The claim must identify the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.
A certified copy of the foreign application must also be filed within a specified time period, usually within the later of 4 months from the actual U.S. filing date or 16 months from the foreign filing date.
MPEP 214-Formal Requirements of Claim for Foreign Priority (3)
If you miss the deadline for filing a foreign priority claim, you may still have options:
- Unintentional delay: You can file a petition to accept an unintentionally delayed priority claim under 37 CFR 1.55(e). This petition 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.
- Design applications: For design applications, you can file this petition up to the date of payment of the issue fee.
The MPEP states: The Director may accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), or 365(a) or (b) in an application for patent filed on or after November 29, 2000, upon petition pursuant to 37 CFR 1.55(e).
It’s important to note that the petition must include a statement that the entire delay was unintentional, and you may need to provide additional evidence to support this claim.
How do I properly identify a foreign application when claiming priority in a U.S. patent application?
When claiming priority to a foreign application in a U.S. patent application, it’s crucial to provide accurate identification information. According to MPEP 214.01, you must include the following details:
- The application number of the foreign application
- The country or intellectual property authority where the foreign application was filed
- The day, month, and year of filing of the foreign application
The MPEP states: ‘The claim for priority must identify the foreign application for which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.’
Additionally, if you’re submitting a certified copy of the foreign application, ensure that it matches the identification information provided in your priority claim. Accurate identification is essential for establishing your priority rights and avoiding potential issues during examination or litigation.
How do I correct an error in my foreign priority claim?
If you need to correct an error in your foreign priority claim, the process depends on the nature of the error and when it’s discovered. According to MPEP 214.01, “Applicant may correct the failure to adequately claim priority to the prior foreign application by amending the specification or submitting a new application data sheet (ADS) identifying the foreign application by application number, country (or intellectual property authority), and filing date.” Here are some key points to remember:
- If the error is discovered within the time period for filing the priority claim, you can simply submit a corrected ADS or amend the specification.
- If the error is discovered after the time period has expired, you may need to file a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim.
- For minor typographical errors, a request for a corrected filing receipt may be sufficient.
Always consult with a patent attorney or agent to determine the best course of action for your specific situation.
MPEP 216 - Entitlement to Priority (4)
What are the time limits for perfecting a foreign priority claim in a patent?
The time limits for perfecting a foreign priority claim in a patent are as follows:
- The priority claim must be made within 16 months from the filing date of the prior foreign application or 4 months from the actual filing date of the U.S. application, whichever is later.
- A certified copy of the foreign application must be filed within the same time period, unless previously submitted in a parent application.
According to MPEP 216.01: “The patent owner’s failure to make a timely priority claim and file the certified copy prior to issuance of the patent cannot be cured by filing a reissue application.” This emphasizes the importance of meeting these deadlines during the initial patent application process.
A certificate of correction can be used to perfect a foreign priority claim in the following scenarios:
- When the priority claim was timely filed but not included on the patent due to failure to submit a certified copy.
- When the priority claim was not timely made, but the correction would not require further examination.
To use a certificate of correction, you must:
- File a request for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
- Include a grantable petition under 37 CFR 1.55(e), (f), or (g) as appropriate.
- Pay the required fee and provide a showing of good and sufficient cause for the delay, if applicable.
The MPEP states: Where the priority claim required under 37 CFR 1.55 was timely filed in the application but was not included on the patent because the requirement under 37 CFR 1.55 for a certified copy was not satisfied, the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a grantable petition under 37 CFR 1.55(f) or, in the case of a design application, a grantable petition under 37 CFR 1.55(g).
How can I request a corrected patent with a perfected foreign priority claim?
To request a corrected patent with a perfected foreign priority claim after issuance, you need to follow these steps:
- File a reissue application under 35 U.S.C. 251.
- Include a petition for an expedited examination of the reissue application.
- Pay the required fees for both the reissue application and the petition.
- Submit the necessary documents to perfect the priority claim, such as a certified copy of the foreign application.
As stated in MPEP 216.01: “A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent.” It’s important to note that this process is only available for perfecting priority claims that were timely filed during the pendency of the application.
Can I perfect a foreign priority claim after my patent has been issued?
No, you cannot perfect a foreign priority claim after your patent has been issued if the claim was not timely filed during the pendency of the application. As stated in MPEP 216.01:
“A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent. However, a reissue application cannot be used to perfect a claim for priority benefit under 35 U.S.C. 119(a)-(d) or (f) where the claim for priority benefit was not timely filed during the pendency of the application that issued as the patent for which reissue is sought.”
This means that if you missed the deadline to file the priority claim or the required certified copy of the foreign application during the original patent application process, you cannot use a reissue application to retroactively perfect the claim after the patent has been issued.
Patent Law (16)
A reissue application is necessary to perfect a foreign priority claim in the following situations:
- When the requirements of 35 U.S.C. 119(a)-(d) or (f) were not satisfied in the patented application or its parent prior to issuance.
- When the requirements of 37 CFR 1.55 are not met.
- When the correction sought would require further examination.
The MPEP provides an example: Further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA. In such situations, the filing of a reissue application with a petition for an unintentionally delayed priority claim would be required.
To learn more:
When claiming foreign priority, the application data sheet (ADS) must include specific information to meet the requirements of 37 CFR 1.55(i)(2). The MPEP states that the claim for priority must be presented in an ADS:
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
This information is crucial for the USPTO to retrieve the priority document through the Priority Document Exchange program. Ensure that all details are accurate to avoid any issues with your priority claim.
To learn more:
If you miss the deadline for filing a foreign priority claim, you may still have options:
- Unintentional delay: You can file a petition to accept an unintentionally delayed priority claim under 37 CFR 1.55(e). This petition 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.
- Design applications: For design applications, you can file this petition up to the date of payment of the issue fee.
The MPEP states: The Director may accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), or 365(a) or (b) in an application for patent filed on or after November 29, 2000, upon petition pursuant to 37 CFR 1.55(e).
It’s important to note that the petition must include a statement that the entire delay was unintentional, and you may need to provide additional evidence to support this claim.
What are the time limits for perfecting a foreign priority claim in a patent?
The time limits for perfecting a foreign priority claim in a patent are as follows:
- The priority claim must be made within 16 months from the filing date of the prior foreign application or 4 months from the actual filing date of the U.S. application, whichever is later.
- A certified copy of the foreign application must be filed within the same time period, unless previously submitted in a parent application.
According to MPEP 216.01: “The patent owner’s failure to make a timely priority claim and file the certified copy prior to issuance of the patent cannot be cured by filing a reissue application.” This emphasizes the importance of meeting these deadlines during the initial patent application process.
To file a certificate of correction to perfect a foreign priority claim, you must meet the following requirements:
- The priority claim under 37 CFR 1.55 was timely filed in the application but was not included on the patent due to failure to provide a certified copy.
- A grantable petition under 37 CFR 1.55(f) or (g) must be filed, which includes:
- The fee set forth in 37 CFR 1.17(g)
- A showing of good and sufficient cause for the delay in filing the certified copy
- The correction must not require further examination.
As stated in the MPEP, Where the priority claim required under 37 CFR 1.55 was timely filed in the application but was not included on the patent because the requirement under 37 CFR 1.55 for a certified copy was not satisfied, the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a grantable petition under 37 CFR 1.55(f) or, in the case of a design application, a grantable petition under 37 CFR 1.55(g).
To learn more:
To learn more:
To claim foreign priority in a U.S. patent application, several requirements must be met as outlined in MPEP 213. These include:
- Timely filing: The U.S. application must be filed within 12 months of the foreign application’s filing date (6 months for design patents)
- Proper claim: The priority claim must be made in an application data sheet (ADS) or in the first sentence of the specification
- Certified copy: A certified copy of the foreign application must be filed within the later of 4 months from the U.S. filing date or 16 months from the foreign filing date
- English translation: If the foreign application is not in English, a translation may be required
As stated in MPEP 213, “The claim for priority must be presented in an application data sheet (37 CFR 1.76(b)(6)) or the specification must contain or be amended to contain a specific reference to the prior foreign application.” Failure to meet these requirements may result in the loss of the priority claim.
Improperly identifying a foreign priority application can have serious consequences for a patent applicant. According to MPEP 214.04:
‘Where the claim to priority in an application filed under 35 U.S.C. 111(a) is presented after the time period provided by 37 CFR 1.55(d) and without the required petition, or where the claim to priority is presented in a nonprovisional application filed under 35 U.S.C. 111(a) that was filed on or after March 16, 2013, and also claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a prior application that was filed prior to March 16, 2013, the examiner should reject under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, any claims which are directed to subject matter that is not supported by the foreign application.’
Consequences may include:
- Rejection of claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph
- Loss of priority date for unsupported subject matter
- Potential issues with patentability due to intervening prior art
It’s crucial to accurately identify and properly claim foreign priority to avoid these issues.
To learn more:
Foreign priority claims in patent applications should be formatted according to specific guidelines outlined in MPEP 214.04. The claim should include:
- The application number of the foreign application
- The country or intellectual property authority where the application was filed
- The day, month, and year of filing
The MPEP states: ‘When the claim to priority concerns an application filed in a foreign country, the claim must identify the foreign country or intellectual property authority where the application was filed.’ This ensures proper identification and processing of the priority claim.
To learn more:
To learn more:
How do I properly identify a foreign application when claiming priority in a U.S. patent application?
When claiming priority to a foreign application in a U.S. patent application, it’s crucial to provide accurate identification information. According to MPEP 214.01, you must include the following details:
- The application number of the foreign application
- The country or intellectual property authority where the foreign application was filed
- The day, month, and year of filing of the foreign application
The MPEP states: ‘The claim for priority must identify the foreign application for which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.’
Additionally, if you’re submitting a certified copy of the foreign application, ensure that it matches the identification information provided in your priority claim. Accurate identification is essential for establishing your priority rights and avoiding potential issues during examination or litigation.
How do I correct an error in my foreign priority claim?
If you need to correct an error in your foreign priority claim, the process depends on the nature of the error and when it’s discovered. According to MPEP 214.01, “Applicant may correct the failure to adequately claim priority to the prior foreign application by amending the specification or submitting a new application data sheet (ADS) identifying the foreign application by application number, country (or intellectual property authority), and filing date.” Here are some key points to remember:
- If the error is discovered within the time period for filing the priority claim, you can simply submit a corrected ADS or amend the specification.
- If the error is discovered after the time period has expired, you may need to file a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim.
- For minor typographical errors, a request for a corrected filing receipt may be sufficient.
Always consult with a patent attorney or agent to determine the best course of action for your specific situation.
To claim priority to an earlier-filed foreign application, the applicant must:
1. File the U.S. application within 12 months of the foreign application’s filing date (6 months for design applications).
2. In the U.S. application, include a claim for priority that identifies the foreign application. For applications filed on/after 9/16/12, this must be in an ADS.
3. File a certified copy of the foreign application, unless it was previously filed or is available to the USPTO via a priority document exchange program.
See MPEP 213 – 216 for the detailed requirements. Some deadlines can be extended on petition if unintentionally delayed.
To claim foreign priority in a U.S. patent application, you must:
1. File the U.S. application within 12 months (6 months for design applications) of the foreign filing date.
2. Submit a claim for priority identifying the foreign application.
3. File a certified copy of the foreign application.
For applications filed on or after September 16, 2012, 37 CFR 1.55(d)(1) requires that the claim for priority be presented in an application data sheet. The claim must identify the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.
A certified copy of the foreign application must also be filed within a specified time period, usually within the later of 4 months from the actual U.S. filing date or 16 months from the foreign filing date.
A certificate of correction can be used to perfect a foreign priority claim in the following scenarios:
- When the priority claim was timely filed but not included on the patent due to failure to submit a certified copy.
- When the priority claim was not timely made, but the correction would not require further examination.
To use a certificate of correction, you must:
- File a request for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
- Include a grantable petition under 37 CFR 1.55(e), (f), or (g) as appropriate.
- Pay the required fee and provide a showing of good and sufficient cause for the delay, if applicable.
The MPEP states: Where the priority claim required under 37 CFR 1.55 was timely filed in the application but was not included on the patent because the requirement under 37 CFR 1.55 for a certified copy was not satisfied, the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a grantable petition under 37 CFR 1.55(f) or, in the case of a design application, a grantable petition under 37 CFR 1.55(g).
How can I request a corrected patent with a perfected foreign priority claim?
To request a corrected patent with a perfected foreign priority claim after issuance, you need to follow these steps:
- File a reissue application under 35 U.S.C. 251.
- Include a petition for an expedited examination of the reissue application.
- Pay the required fees for both the reissue application and the petition.
- Submit the necessary documents to perfect the priority claim, such as a certified copy of the foreign application.
As stated in MPEP 216.01: “A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent.” It’s important to note that this process is only available for perfecting priority claims that were timely filed during the pendency of the application.
Can I perfect a foreign priority claim after my patent has been issued?
No, you cannot perfect a foreign priority claim after your patent has been issued if the claim was not timely filed during the pendency of the application. As stated in MPEP 216.01:
“A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent. However, a reissue application cannot be used to perfect a claim for priority benefit under 35 U.S.C. 119(a)-(d) or (f) where the claim for priority benefit was not timely filed during the pendency of the application that issued as the patent for which reissue is sought.”
This means that if you missed the deadline to file the priority claim or the required certified copy of the foreign application during the original patent application process, you cannot use a reissue application to retroactively perfect the claim after the patent has been issued.
Yes, a foreign priority claim can be corrected after filing a patent application, but there are specific procedures and time limitations to follow. According to MPEP 214.04:
‘The time period for making a claim for priority under 37 CFR 1.55 is set forth in 37 CFR 1.55(d)… 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.’
To correct a foreign priority claim:
- If before the issue fee is paid: File a corrected Application Data Sheet (ADS) with the proper identification of the foreign application.
- If after the issue fee is paid: Request a Certificate of Correction under 35 U.S.C. 255 and 37 CFR 1.323.
It’s important to note that corrections must be made within the time period specified in 37 CFR 1.55(d), which is typically 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.
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Patent Procedure (16)
A reissue application is necessary to perfect a foreign priority claim in the following situations:
- When the requirements of 35 U.S.C. 119(a)-(d) or (f) were not satisfied in the patented application or its parent prior to issuance.
- When the requirements of 37 CFR 1.55 are not met.
- When the correction sought would require further examination.
The MPEP provides an example: Further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA. In such situations, the filing of a reissue application with a petition for an unintentionally delayed priority claim would be required.
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When claiming foreign priority, the application data sheet (ADS) must include specific information to meet the requirements of 37 CFR 1.55(i)(2). The MPEP states that the claim for priority must be presented in an ADS:
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
This information is crucial for the USPTO to retrieve the priority document through the Priority Document Exchange program. Ensure that all details are accurate to avoid any issues with your priority claim.
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If you miss the deadline for filing a foreign priority claim, you may still have options:
- Unintentional delay: You can file a petition to accept an unintentionally delayed priority claim under 37 CFR 1.55(e). This petition 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.
- Design applications: For design applications, you can file this petition up to the date of payment of the issue fee.
The MPEP states: The Director may accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), or 365(a) or (b) in an application for patent filed on or after November 29, 2000, upon petition pursuant to 37 CFR 1.55(e).
It’s important to note that the petition must include a statement that the entire delay was unintentional, and you may need to provide additional evidence to support this claim.
What are the time limits for perfecting a foreign priority claim in a patent?
The time limits for perfecting a foreign priority claim in a patent are as follows:
- The priority claim must be made within 16 months from the filing date of the prior foreign application or 4 months from the actual filing date of the U.S. application, whichever is later.
- A certified copy of the foreign application must be filed within the same time period, unless previously submitted in a parent application.
According to MPEP 216.01: “The patent owner’s failure to make a timely priority claim and file the certified copy prior to issuance of the patent cannot be cured by filing a reissue application.” This emphasizes the importance of meeting these deadlines during the initial patent application process.
To file a certificate of correction to perfect a foreign priority claim, you must meet the following requirements:
- The priority claim under 37 CFR 1.55 was timely filed in the application but was not included on the patent due to failure to provide a certified copy.
- A grantable petition under 37 CFR 1.55(f) or (g) must be filed, which includes:
- The fee set forth in 37 CFR 1.17(g)
- A showing of good and sufficient cause for the delay in filing the certified copy
- The correction must not require further examination.
As stated in the MPEP, Where the priority claim required under 37 CFR 1.55 was timely filed in the application but was not included on the patent because the requirement under 37 CFR 1.55 for a certified copy was not satisfied, the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a grantable petition under 37 CFR 1.55(f) or, in the case of a design application, a grantable petition under 37 CFR 1.55(g).
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To claim foreign priority in a U.S. patent application, several requirements must be met as outlined in MPEP 213. These include:
- Timely filing: The U.S. application must be filed within 12 months of the foreign application’s filing date (6 months for design patents)
- Proper claim: The priority claim must be made in an application data sheet (ADS) or in the first sentence of the specification
- Certified copy: A certified copy of the foreign application must be filed within the later of 4 months from the U.S. filing date or 16 months from the foreign filing date
- English translation: If the foreign application is not in English, a translation may be required
As stated in MPEP 213, “The claim for priority must be presented in an application data sheet (37 CFR 1.76(b)(6)) or the specification must contain or be amended to contain a specific reference to the prior foreign application.” Failure to meet these requirements may result in the loss of the priority claim.
Improperly identifying a foreign priority application can have serious consequences for a patent applicant. According to MPEP 214.04:
‘Where the claim to priority in an application filed under 35 U.S.C. 111(a) is presented after the time period provided by 37 CFR 1.55(d) and without the required petition, or where the claim to priority is presented in a nonprovisional application filed under 35 U.S.C. 111(a) that was filed on or after March 16, 2013, and also claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a prior application that was filed prior to March 16, 2013, the examiner should reject under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, any claims which are directed to subject matter that is not supported by the foreign application.’
Consequences may include:
- Rejection of claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph
- Loss of priority date for unsupported subject matter
- Potential issues with patentability due to intervening prior art
It’s crucial to accurately identify and properly claim foreign priority to avoid these issues.
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Foreign priority claims in patent applications should be formatted according to specific guidelines outlined in MPEP 214.04. The claim should include:
- The application number of the foreign application
- The country or intellectual property authority where the application was filed
- The day, month, and year of filing
The MPEP states: ‘When the claim to priority concerns an application filed in a foreign country, the claim must identify the foreign country or intellectual property authority where the application was filed.’ This ensures proper identification and processing of the priority claim.
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How do I properly identify a foreign application when claiming priority in a U.S. patent application?
When claiming priority to a foreign application in a U.S. patent application, it’s crucial to provide accurate identification information. According to MPEP 214.01, you must include the following details:
- The application number of the foreign application
- The country or intellectual property authority where the foreign application was filed
- The day, month, and year of filing of the foreign application
The MPEP states: ‘The claim for priority must identify the foreign application for which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.’
Additionally, if you’re submitting a certified copy of the foreign application, ensure that it matches the identification information provided in your priority claim. Accurate identification is essential for establishing your priority rights and avoiding potential issues during examination or litigation.
How do I correct an error in my foreign priority claim?
If you need to correct an error in your foreign priority claim, the process depends on the nature of the error and when it’s discovered. According to MPEP 214.01, “Applicant may correct the failure to adequately claim priority to the prior foreign application by amending the specification or submitting a new application data sheet (ADS) identifying the foreign application by application number, country (or intellectual property authority), and filing date.” Here are some key points to remember:
- If the error is discovered within the time period for filing the priority claim, you can simply submit a corrected ADS or amend the specification.
- If the error is discovered after the time period has expired, you may need to file a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim.
- For minor typographical errors, a request for a corrected filing receipt may be sufficient.
Always consult with a patent attorney or agent to determine the best course of action for your specific situation.
To claim priority to an earlier-filed foreign application, the applicant must:
1. File the U.S. application within 12 months of the foreign application’s filing date (6 months for design applications).
2. In the U.S. application, include a claim for priority that identifies the foreign application. For applications filed on/after 9/16/12, this must be in an ADS.
3. File a certified copy of the foreign application, unless it was previously filed or is available to the USPTO via a priority document exchange program.
See MPEP 213 – 216 for the detailed requirements. Some deadlines can be extended on petition if unintentionally delayed.
To claim foreign priority in a U.S. patent application, you must:
1. File the U.S. application within 12 months (6 months for design applications) of the foreign filing date.
2. Submit a claim for priority identifying the foreign application.
3. File a certified copy of the foreign application.
For applications filed on or after September 16, 2012, 37 CFR 1.55(d)(1) requires that the claim for priority be presented in an application data sheet. The claim must identify the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.
A certified copy of the foreign application must also be filed within a specified time period, usually within the later of 4 months from the actual U.S. filing date or 16 months from the foreign filing date.
A certificate of correction can be used to perfect a foreign priority claim in the following scenarios:
- When the priority claim was timely filed but not included on the patent due to failure to submit a certified copy.
- When the priority claim was not timely made, but the correction would not require further examination.
To use a certificate of correction, you must:
- File a request for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
- Include a grantable petition under 37 CFR 1.55(e), (f), or (g) as appropriate.
- Pay the required fee and provide a showing of good and sufficient cause for the delay, if applicable.
The MPEP states: Where the priority claim required under 37 CFR 1.55 was timely filed in the application but was not included on the patent because the requirement under 37 CFR 1.55 for a certified copy was not satisfied, the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a grantable petition under 37 CFR 1.55(f) or, in the case of a design application, a grantable petition under 37 CFR 1.55(g).
How can I request a corrected patent with a perfected foreign priority claim?
To request a corrected patent with a perfected foreign priority claim after issuance, you need to follow these steps:
- File a reissue application under 35 U.S.C. 251.
- Include a petition for an expedited examination of the reissue application.
- Pay the required fees for both the reissue application and the petition.
- Submit the necessary documents to perfect the priority claim, such as a certified copy of the foreign application.
As stated in MPEP 216.01: “A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent.” It’s important to note that this process is only available for perfecting priority claims that were timely filed during the pendency of the application.
Can I perfect a foreign priority claim after my patent has been issued?
No, you cannot perfect a foreign priority claim after your patent has been issued if the claim was not timely filed during the pendency of the application. As stated in MPEP 216.01:
“A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) in an issued patent. However, a reissue application cannot be used to perfect a claim for priority benefit under 35 U.S.C. 119(a)-(d) or (f) where the claim for priority benefit was not timely filed during the pendency of the application that issued as the patent for which reissue is sought.”
This means that if you missed the deadline to file the priority claim or the required certified copy of the foreign application during the original patent application process, you cannot use a reissue application to retroactively perfect the claim after the patent has been issued.
Yes, a foreign priority claim can be corrected after filing a patent application, but there are specific procedures and time limitations to follow. According to MPEP 214.04:
‘The time period for making a claim for priority under 37 CFR 1.55 is set forth in 37 CFR 1.55(d)… 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.’
To correct a foreign priority claim:
- If before the issue fee is paid: File a corrected Application Data Sheet (ADS) with the proper identification of the foreign application.
- If after the issue fee is paid: Request a Certificate of Correction under 35 U.S.C. 255 and 37 CFR 1.323.
It’s important to note that corrections must be made within the time period specified in 37 CFR 1.55(d), which is typically 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.
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