Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
(B) (1)
The “pre-AIPA” version of 35 U.S.C. 102(e) refers to the law as it was in force on November 28, 2000, before the changes made by the American Inventors Protection Act (AIPA). This version applies to patents issued from international applications filed before November 29, 2000.
According to the MPEP, Patents issued directly, or indirectly, from international applications filed before November 29, 2000 may only be used as prior art based on the provisions of pre-AIPA 35 U.S.C. 102(e) as in force on November 28, 2000.
For these patents, the pre-AIPA 35 U.S.C. 102(e) date is the earliest of:
- The date of compliance with 35 U.S.C. 371(c)(1), (2) and (4)
- The filing date of a later-filed U.S. continuing application that claimed the benefit of the international application
It’s important to note that publications of international applications filed before November 29, 2000, do not have a pre-AIPA 35 U.S.C. 102(e) date at all, but they may still be prior art under pre-AIA 35 U.S.C. 102(a) or (b) as of their publication date.
To learn more:
Adjustments (1)
Foreign priority does not affect the calculation of patent term in the United States. As stated in the MPEP, Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), 365(b), 386(a), or 386(b) is not considered in determining the term of a patent
. This means that the 20-year term is calculated from the U.S. filing date, not the foreign priority date.
To learn more:
And Extensions (1)
Foreign priority does not affect the calculation of patent term in the United States. As stated in the MPEP, Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), 365(b), 386(a), or 386(b) is not considered in determining the term of a patent
. This means that the 20-year term is calculated from the U.S. filing date, not the foreign priority date.
To learn more:
MPEP 200 – Types and Status of Application; Benefit and Priority (1)
35 U.S.C. 365 addresses the right of priority for international applications in two key aspects:
- National applications based on international applications
- International applications based on foreign applications
The MPEP states:
“35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States.”
“35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application.”
These provisions ensure that applicants can claim priority based on international applications, enhancing the flexibility of the international patent system.
MPEP 200 – Types and Status of Application; Benefit and Priority Claims (2)
Claiming priority to a PCT international application can be done in two ways:
- In a U.S. national stage application under 35 U.S.C. 371:
- The priority claim is made in the PCT application
- No further action is needed when entering the national stage
- In a U.S. nonprovisional application under 35 U.S.C. 111(a):
- File within 12 months of the PCT filing date
- Make the priority claim in an application data sheet
- Provide a certified copy of the PCT application (unless already filed with the PCT)
In both cases, the PCT application must designate the United States. The specific requirements are detailed in 37 CFR 1.55(d)(2) and (f)(2) for national stage applications, and 37 CFR 1.55(d)(1) and (f)(1) for applications under 35 U.S.C. 111(a).
According to 37 CFR 1.9(a)(1), a national application is defined as:
- A U.S. application for patent filed in the USPTO under 35 U.S.C. 111
- An international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid
- An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10
This definition encompasses various types of patent applications that are treated as national applications by the USPTO.
MPEP 201 – Types of Applications (1)
According to 37 CFR 1.9(a)(1), a national application is defined as:
- A U.S. application for patent filed in the USPTO under 35 U.S.C. 111
- An international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid
- An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10
This definition encompasses various types of patent applications that are treated as national applications by the USPTO.
MPEP 2100 – Patentability (1)
The “pre-AIPA” version of 35 U.S.C. 102(e) refers to the law as it was in force on November 28, 2000, before the changes made by the American Inventors Protection Act (AIPA). This version applies to patents issued from international applications filed before November 29, 2000.
According to the MPEP, Patents issued directly, or indirectly, from international applications filed before November 29, 2000 may only be used as prior art based on the provisions of pre-AIPA 35 U.S.C. 102(e) as in force on November 28, 2000.
For these patents, the pre-AIPA 35 U.S.C. 102(e) date is the earliest of:
- The date of compliance with 35 U.S.C. 371(c)(1), (2) and (4)
- The filing date of a later-filed U.S. continuing application that claimed the benefit of the international application
It’s important to note that publications of international applications filed before November 29, 2000, do not have a pre-AIPA 35 U.S.C. 102(e) date at all, but they may still be prior art under pre-AIA 35 U.S.C. 102(a) or (b) as of their publication date.
To learn more:
MPEP 213-Right of Priority of Foreign Application (2)
Claiming priority to a PCT international application can be done in two ways:
- In a U.S. national stage application under 35 U.S.C. 371:
- The priority claim is made in the PCT application
- No further action is needed when entering the national stage
- In a U.S. nonprovisional application under 35 U.S.C. 111(a):
- File within 12 months of the PCT filing date
- Make the priority claim in an application data sheet
- Provide a certified copy of the PCT application (unless already filed with the PCT)
In both cases, the PCT application must designate the United States. The specific requirements are detailed in 37 CFR 1.55(d)(2) and (f)(2) for national stage applications, and 37 CFR 1.55(d)(1) and (f)(1) for applications under 35 U.S.C. 111(a).
35 U.S.C. 365 addresses the right of priority for international applications in two key aspects:
- National applications based on international applications
- International applications based on foreign applications
The MPEP states:
“35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States.”
“35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application.”
These provisions ensure that applicants can claim priority based on international applications, enhancing the flexibility of the international patent system.
MPEP 2139.02 – Determining Whether To Apply Pre – Aia 35 U.S.C. 102(A) (1)
The “pre-AIPA” version of 35 U.S.C. 102(e) refers to the law as it was in force on November 28, 2000, before the changes made by the American Inventors Protection Act (AIPA). This version applies to patents issued from international applications filed before November 29, 2000.
According to the MPEP, Patents issued directly, or indirectly, from international applications filed before November 29, 2000 may only be used as prior art based on the provisions of pre-AIPA 35 U.S.C. 102(e) as in force on November 28, 2000.
For these patents, the pre-AIPA 35 U.S.C. 102(e) date is the earliest of:
- The date of compliance with 35 U.S.C. 371(c)(1), (2) and (4)
- The filing date of a later-filed U.S. continuing application that claimed the benefit of the international application
It’s important to note that publications of international applications filed before November 29, 2000, do not have a pre-AIPA 35 U.S.C. 102(e) date at all, but they may still be prior art under pre-AIA 35 U.S.C. 102(a) or (b) as of their publication date.
To learn more:
MPEP 2700 – Patent Terms (1)
Foreign priority does not affect the calculation of patent term in the United States. As stated in the MPEP, Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), 365(b), 386(a), or 386(b) is not considered in determining the term of a patent
. This means that the 20-year term is calculated from the U.S. filing date, not the foreign priority date.
To learn more:
MPEP 2701 – Patent Term (1)
Foreign priority does not affect the calculation of patent term in the United States. As stated in the MPEP, Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), 365(b), 386(a), or 386(b) is not considered in determining the term of a patent
. This means that the 20-year term is calculated from the U.S. filing date, not the foreign priority date.
To learn more:
Or (E) (1)
The “pre-AIPA” version of 35 U.S.C. 102(e) refers to the law as it was in force on November 28, 2000, before the changes made by the American Inventors Protection Act (AIPA). This version applies to patents issued from international applications filed before November 29, 2000.
According to the MPEP, Patents issued directly, or indirectly, from international applications filed before November 29, 2000 may only be used as prior art based on the provisions of pre-AIPA 35 U.S.C. 102(e) as in force on November 28, 2000.
For these patents, the pre-AIPA 35 U.S.C. 102(e) date is the earliest of:
- The date of compliance with 35 U.S.C. 371(c)(1), (2) and (4)
- The filing date of a later-filed U.S. continuing application that claimed the benefit of the international application
It’s important to note that publications of international applications filed before November 29, 2000, do not have a pre-AIPA 35 U.S.C. 102(e) date at all, but they may still be prior art under pre-AIA 35 U.S.C. 102(a) or (b) as of their publication date.
To learn more:
Patent Law (5)
Claiming priority to a PCT international application can be done in two ways:
- In a U.S. national stage application under 35 U.S.C. 371:
- The priority claim is made in the PCT application
- No further action is needed when entering the national stage
- In a U.S. nonprovisional application under 35 U.S.C. 111(a):
- File within 12 months of the PCT filing date
- Make the priority claim in an application data sheet
- Provide a certified copy of the PCT application (unless already filed with the PCT)
In both cases, the PCT application must designate the United States. The specific requirements are detailed in 37 CFR 1.55(d)(2) and (f)(2) for national stage applications, and 37 CFR 1.55(d)(1) and (f)(1) for applications under 35 U.S.C. 111(a).
According to 37 CFR 1.9(a)(1), a national application is defined as:
- A U.S. application for patent filed in the USPTO under 35 U.S.C. 111
- An international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid
- An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10
This definition encompasses various types of patent applications that are treated as national applications by the USPTO.
35 U.S.C. 365 addresses the right of priority for international applications in two key aspects:
- National applications based on international applications
- International applications based on foreign applications
The MPEP states:
“35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States.”
“35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application.”
These provisions ensure that applicants can claim priority based on international applications, enhancing the flexibility of the international patent system.
Foreign priority does not affect the calculation of patent term in the United States. As stated in the MPEP, Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), 365(b), 386(a), or 386(b) is not considered in determining the term of a patent
. This means that the 20-year term is calculated from the U.S. filing date, not the foreign priority date.
To learn more:
The “pre-AIPA” version of 35 U.S.C. 102(e) refers to the law as it was in force on November 28, 2000, before the changes made by the American Inventors Protection Act (AIPA). This version applies to patents issued from international applications filed before November 29, 2000.
According to the MPEP, Patents issued directly, or indirectly, from international applications filed before November 29, 2000 may only be used as prior art based on the provisions of pre-AIPA 35 U.S.C. 102(e) as in force on November 28, 2000.
For these patents, the pre-AIPA 35 U.S.C. 102(e) date is the earliest of:
- The date of compliance with 35 U.S.C. 371(c)(1), (2) and (4)
- The filing date of a later-filed U.S. continuing application that claimed the benefit of the international application
It’s important to note that publications of international applications filed before November 29, 2000, do not have a pre-AIPA 35 U.S.C. 102(e) date at all, but they may still be prior art under pre-AIA 35 U.S.C. 102(a) or (b) as of their publication date.
To learn more:
Patent Procedure (5)
Claiming priority to a PCT international application can be done in two ways:
- In a U.S. national stage application under 35 U.S.C. 371:
- The priority claim is made in the PCT application
- No further action is needed when entering the national stage
- In a U.S. nonprovisional application under 35 U.S.C. 111(a):
- File within 12 months of the PCT filing date
- Make the priority claim in an application data sheet
- Provide a certified copy of the PCT application (unless already filed with the PCT)
In both cases, the PCT application must designate the United States. The specific requirements are detailed in 37 CFR 1.55(d)(2) and (f)(2) for national stage applications, and 37 CFR 1.55(d)(1) and (f)(1) for applications under 35 U.S.C. 111(a).
According to 37 CFR 1.9(a)(1), a national application is defined as:
- A U.S. application for patent filed in the USPTO under 35 U.S.C. 111
- An international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid
- An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10
This definition encompasses various types of patent applications that are treated as national applications by the USPTO.
35 U.S.C. 365 addresses the right of priority for international applications in two key aspects:
- National applications based on international applications
- International applications based on foreign applications
The MPEP states:
“35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States.”
“35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application.”
These provisions ensure that applicants can claim priority based on international applications, enhancing the flexibility of the international patent system.
Foreign priority does not affect the calculation of patent term in the United States. As stated in the MPEP, Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), 365(b), 386(a), or 386(b) is not considered in determining the term of a patent
. This means that the 20-year term is calculated from the U.S. filing date, not the foreign priority date.
To learn more:
The “pre-AIPA” version of 35 U.S.C. 102(e) refers to the law as it was in force on November 28, 2000, before the changes made by the American Inventors Protection Act (AIPA). This version applies to patents issued from international applications filed before November 29, 2000.
According to the MPEP, Patents issued directly, or indirectly, from international applications filed before November 29, 2000 may only be used as prior art based on the provisions of pre-AIPA 35 U.S.C. 102(e) as in force on November 28, 2000.
For these patents, the pre-AIPA 35 U.S.C. 102(e) date is the earliest of:
- The date of compliance with 35 U.S.C. 371(c)(1), (2) and (4)
- The filing date of a later-filed U.S. continuing application that claimed the benefit of the international application
It’s important to note that publications of international applications filed before November 29, 2000, do not have a pre-AIPA 35 U.S.C. 102(e) date at all, but they may still be prior art under pre-AIA 35 U.S.C. 102(a) or (b) as of their publication date.
To learn more: