Patent Law FAQ

If the United States Patent and Trademark Office (USPTO) doesn’t receive your priority document through the Priority Document Exchange (PDX) program within the specified time frame, you have options. According to MPEP 215.02(a):

The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.

If you find yourself in this situation:

1. File a certified copy of the foreign application directly with the USPTO.
2. Ensure this is done during the pendency of your application and before the patent is granted.
3. Consider filing a petition under 37 CFR 1.55(e) or (f) if necessary.

Remember, it’s ultimately the applicant’s responsibility to ensure the priority document is properly filed, even when using the PDX program.

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

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

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

For more information on PDX, visit: PDX.

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

If the United States Patent and Trademark Office (USPTO) doesn’t receive your priority document through the Priority Document Exchange (PDX) program within the specified time frame, you have options. According to MPEP 215.02(a):

The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.

If you find yourself in this situation:

1. File a certified copy of the foreign application directly with the USPTO.
2. Ensure this is done during the pendency of your application and before the patent is granted.
3. Consider filing a petition under 37 CFR 1.55(e) or (f) if necessary.

Remember, it’s ultimately the applicant’s responsibility to ensure the priority document is properly filed, even when using the PDX program.

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

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

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

For more information on PDX, visit: PDX.

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

Yes, a request for issuance to an assignee can be submitted after the issue fee is paid, but additional requirements apply:

1. The request must state that the assignment was submitted for recordation before patent issuance.
2. It must include a request for a certificate of correction under 37 CFR 1.323.
3. The appropriate fees must be paid, including the certificate of correction fee and a processing fee.

37 CFR 3.81(b) states: Any request for issuance of an application in the name of the assignee submitted after the date of payment of the issue fee, and any request for a patent to be corrected to state the name of the assignee, must state that the assignment was submitted for recordation as set forth in § 3.11 before issuance of the patent, and must include a request for a certificate of correction under § 1.323 of this chapter (accompanied by the fee set forth in § 1.20(a)) and the processing fee set forth in § 1.17(i) of this chapter.

Yes, a request for issuance to an assignee can be submitted after the issue fee is paid, but additional requirements apply:

1. The request must state that the assignment was submitted for recordation before patent issuance.
2. It must include a request for a certificate of correction under 37 CFR 1.323.
3. The appropriate fees must be paid, including the certificate of correction fee and a processing fee.

37 CFR 3.81(b) states: Any request for issuance of an application in the name of the assignee submitted after the date of payment of the issue fee, and any request for a patent to be corrected to state the name of the assignee, must state that the assignment was submitted for recordation as set forth in § 3.11 before issuance of the patent, and must include a request for a certificate of correction under § 1.323 of this chapter (accompanied by the fee set forth in § 1.20(a)) and the processing fee set forth in § 1.17(i) of this chapter.

If the United States Patent and Trademark Office (USPTO) doesn’t receive your priority document through the Priority Document Exchange (PDX) program within the specified time frame, you have options. According to MPEP 215.02(a):

The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.

If you find yourself in this situation:

1. File a certified copy of the foreign application directly with the USPTO.
2. Ensure this is done during the pendency of your application and before the patent is granted.
3. Consider filing a petition under 37 CFR 1.55(e) or (f) if necessary.

Remember, it’s ultimately the applicant’s responsibility to ensure the priority document is properly filed, even when using the PDX program.

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

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

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

For more information on PDX, visit: PDX.

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

Can the inventor’s oath or declaration be submitted after filing the patent application?

Yes, the inventor’s oath or declaration can be submitted after filing the patent application. The MPEP 602.01(a) states:

“The inventor’s oath or declaration may be submitted after the application filing date. If the oath or declaration is filed after the application filing date, it must be accompanied by the surcharge under 37 CFR 1.16(f).”

However, it’s important to note:

• The application must still name each inventor at the time of filing
• An application data sheet (ADS) under 37 CFR 1.76 must be submitted with the application filing
• The oath or declaration should be submitted no later than the date on which the issue fee is paid

Submitting the oath or declaration after filing may incur additional fees and potentially delay the examination process.

To learn more:

• inventor’s oath
• declaration
• late submission
• application data sheet

Yes, the filing fee, oath or declaration, and claims can be submitted after the initial filing of a nonprovisional application. However, there are specific rules and time limits for doing so:

• These items must be submitted within the period specified by the USPTO, usually in a Notice to File Missing Parts.
• A surcharge may be required for late submission.
• Failure to submit these items within the specified period may result in the application being abandoned.

The MPEP states: The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.

It’s important to note that while these items can be submitted later, it’s generally best practice to include them with the initial filing to avoid potential issues or delays.

To learn more:

• filing fee
• oath
• declaration
• claims
• nonprovisional application
• late submission

Yes, a request for issuance to an assignee can be submitted after the issue fee is paid, but additional requirements apply:

1. The request must state that the assignment was submitted for recordation before patent issuance.
2. It must include a request for a certificate of correction under 37 CFR 1.323.
3. The appropriate fees must be paid, including the certificate of correction fee and a processing fee.

37 CFR 3.81(b) states: Any request for issuance of an application in the name of the assignee submitted after the date of payment of the issue fee, and any request for a patent to be corrected to state the name of the assignee, must state that the assignment was submitted for recordation as set forth in § 3.11 before issuance of the patent, and must include a request for a certificate of correction under § 1.323 of this chapter (accompanied by the fee set forth in § 1.20(a)) and the processing fee set forth in § 1.17(i) of this chapter.

If the United States Patent and Trademark Office (USPTO) doesn’t receive your priority document through the Priority Document Exchange (PDX) program within the specified time frame, you have options. According to MPEP 215.02(a):

The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.

If you find yourself in this situation:

1. File a certified copy of the foreign application directly with the USPTO.
2. Ensure this is done during the pendency of your application and before the patent is granted.
3. Consider filing a petition under 37 CFR 1.55(e) or (f) if necessary.

Remember, it’s ultimately the applicant’s responsibility to ensure the priority document is properly filed, even when using the PDX program.

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

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

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

For more information on PDX, visit: PDX.

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

Can the inventor’s oath or declaration be submitted after filing the patent application?

Yes, the inventor’s oath or declaration can be submitted after filing the patent application. The MPEP 602.01(a) states:

“The inventor’s oath or declaration may be submitted after the application filing date. If the oath or declaration is filed after the application filing date, it must be accompanied by the surcharge under 37 CFR 1.16(f).”

However, it’s important to note:

• The application must still name each inventor at the time of filing
• An application data sheet (ADS) under 37 CFR 1.76 must be submitted with the application filing
• The oath or declaration should be submitted no later than the date on which the issue fee is paid

Submitting the oath or declaration after filing may incur additional fees and potentially delay the examination process.

To learn more:

• inventor’s oath
• declaration
• late submission
• application data sheet

Yes, the filing fee, oath or declaration, and claims can be submitted after the initial filing of a nonprovisional application. However, there are specific rules and time limits for doing so:

• These items must be submitted within the period specified by the USPTO, usually in a Notice to File Missing Parts.
• A surcharge may be required for late submission.
• Failure to submit these items within the specified period may result in the application being abandoned.

The MPEP states: The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.

It’s important to note that while these items can be submitted later, it’s generally best practice to include them with the initial filing to avoid potential issues or delays.

To learn more:

• filing fee
• oath
• declaration
• claims
• nonprovisional application
• late submission

Yes, a request for issuance to an assignee can be submitted after the issue fee is paid, but additional requirements apply:

1. The request must state that the assignment was submitted for recordation before patent issuance.
2. It must include a request for a certificate of correction under 37 CFR 1.323.
3. The appropriate fees must be paid, including the certificate of correction fee and a processing fee.

37 CFR 3.81(b) states: Any request for issuance of an application in the name of the assignee submitted after the date of payment of the issue fee, and any request for a patent to be corrected to state the name of the assignee, must state that the assignment was submitted for recordation as set forth in § 3.11 before issuance of the patent, and must include a request for a certificate of correction under § 1.323 of this chapter (accompanied by the fee set forth in § 1.20(a)) and the processing fee set forth in § 1.17(i) of this chapter.