Patent Law FAQ

When an examiner finds an intervening reference (a reference with an effective date between the foreign filing date and the U.S. filing date) and a foreign priority claim is present, the examiner follows these steps:

1. If the certified copy of the priority papers has not been filed, the examiner rejects the claims that may be unpatentable over the reference without considering the priority date.
2. The applicant may then argue the rejection or present the foreign papers to overcome the date of the reference.
3. If the applicant argues the rejection, the examiner may, in the next action:
   • Specifically require the foreign papers to be filed while repeating the rejection if still applicable, or
   • Simply continue the rejection

The MPEP states: “If at the time of making an action the examiner has found such an intervening reference, the examiner simply rejects whatever claims may be considered unpatentable thereover, without paying any attention to the priority date (assuming the certified copy of the priority papers has not yet been filed).” (MPEP 216)