Question 1

Which countries are recognized for priority claims under 35 U.S.C. 119(a)-(d)?

Accepted Answer

The MPEP provides a table of states (countries) for which the right of priority under 35 U.S.C. 119(a)-(d) is recognized. These countries fall into three categories:

Parties to the Patent Cooperation Treaty (PCT)
Parties to the Paris Convention for the Protection of Industrial Property
Members of the World Trade Organization (WTO)

The MPEP states: "Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a)-(d) has been recognized."

For the most current list of recognized countries, refer to the WIPO website at www.wipo.int/pct/en/paris_wto_pct.html.

Question 2

Which countries are recognized for claiming priority in U.S. patent applications?

Accepted Answer

The United States recognizes the right of priority for patent applications filed in countries that are:

Parties to the Patent Cooperation Treaty (PCT)
Members of the Paris Convention for the Protection of Industrial Property
Members of the World Trade Organization (WTO)

The MPEP states: Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a) - (d) has been recognized. For the most up-to-date list of recognized countries, refer to the WIPO website.

To learn more:

Question 3

What happens if an inventor's act occurs in a country that joins NAFTA or WTO after the act?

Accepted Answer

What happens if an inventor's act occurs in a country that joins NAFTA or WTO after the act?

If an inventor's act occurs in a country that later joins NAFTA or WTO, the act can still be relied upon for an affidavit or declaration under 37 CFR 1.131. According to MPEP 715.07(c):

"An affidavit or declaration under 37 CFR 1.131 may be used to swear behind a reference or activity that occurred in a NAFTA or WTO member country, if the NAFTA or WTO member country was a NAFTA or WTO member country at the time the reference or activity was performed.

This means that the country's status at the time of the act is what matters, not its status at the time of filing the affidavit or declaration. However, if the country joins NAFTA or WTO after the act occurred, the act cannot be relied upon for an affidavit or declaration under 37 CFR 1.131.

To learn more:

37 CFR 1.131

Question 4

What countries are considered for establishing a date of invention under pre-AIA 35 U.S.C. 104?

Accepted Answer

Under pre-AIA 35 U.S.C. 104, an applicant or patentee can establish a date of invention by referencing knowledge, use, or other activity in the United States, NAFTA countries, or WTO member countries. The MPEP states:

"Under 37 CFR 1.131(a), which provides for the establishment of a date of completion of the invention in a NAFTA or WTO member country, as well as in the United States, the applicant or patent owner can establish a date of completion in a NAFTA member country on or after December 8, 1993, [...] and can establish a date of completion in a WTO member country other than a NAFTA member country on or after January 1, 1996."

It's important to note that this provision applies to pre-AIA applications and is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g).

To learn more:

pre-AIA
date of invention
NAFTA
WTO
37 CFR 1.131(a)

To learn more:

37 CFR 1.131(a)

Question 5

What are the requirements for claiming priority to a foreign application?

Accepted Answer

What are the requirements for claiming priority to a foreign application?

To claim priority to a foreign application, several requirements must be met:

The U.S. application must be filed within 12 months of the foreign application (or 6 months for design patents).
The foreign application must be from a country that grants similar privileges to U.S. applicants (Paris Convention member or WTO member).
The applicant must file a claim for priority and a certified copy of the foreign application.
As stated in MPEP 213: "The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed before the patent is granted."

It's important to note that the subject matter claimed in the U.S. application must be adequately supported by the foreign application to receive the benefit of the earlier filing date.

To learn more:

Question 6

What are the geographical limitations for acts relied upon in a 37 CFR 1.131(a) affidavit?

Accepted Answer

MPEP 715.07(c) outlines the geographical limitations for acts relied upon in a 37 CFR 1.131(a) affidavit or declaration. According to pre-AIA 35 U.S.C. 104:

Acts must have been carried out in the United States, a NAFTA country, or a WTO member country.
For NAFTA countries, acts can be relied upon if they occurred on or after December 8, 1993.
For WTO member countries (other than NAFTA countries), acts can be relied upon if they occurred on or after January 1, 1996.

The MPEP states: The 37 CFR 1.131(a) affidavit or declaration must contain an allegation that the acts relied upon to establish the date prior to the reference or activity were carried out in this country or in a NAFTA country or WTO member country.

It's important to note: Acts occurring prior to the effective dates of NAFTA or URAA may be relied upon to show completion of the invention; however, a date of completion of the invention may not be established under 37 CFR 1.131(a) before December 8, 1993 in a NAFTA country or before January 1, 1996 in a WTO country other than a NAFTA country.

To learn more:

Question 7

What are the critical dates for establishing invention completion in NAFTA and WTO countries?

Accepted Answer

The MPEP 715.07(c) provides specific critical dates for establishing invention completion in NAFTA and WTO countries under pre-AIA law:

NAFTA countries: On or after December 8, 1993
WTO member countries (other than NAFTA): On or after January 1, 1996

The MPEP states:

"Acts occurring prior to the effective dates of NAFTA or URAA may be relied upon to show completion of the invention; however, a date of completion of the invention may not be established under 37 CFR 1.131(a) before December 8, 1993 in a NAFTA country or before January 1, 1996 in a WTO country other than a NAFTA country."

These dates correspond to the effective dates of the North American Free Trade Agreement Act and the Uruguay Round Agreements Act, respectively.

To learn more:

Question 8

How does the MPEP 715.07(c) address the use of information from NAFTA and WTO countries in patent proceedings?

Accepted Answer

MPEP 715.07(c) addresses the use of information from NAFTA and WTO countries in patent proceedings by referencing pre-AIA 35 U.S.C. 104(a)(3), which states:

"To the extent that any information in a NAFTA country or a WTO member country concerning knowledge, use, or other activity relevant to proving or disproving a date of invention has not been made available for use in a proceeding in the Patent and Trademark Office, a court, or any other competent authority to the same extent as such information could be made available in the United States, the Director, court, or such other authority shall draw appropriate inferences, or take other action permitted by statute, rule, or regulation, in favor of the party that requested the information in the proceeding."

This provision ensures that if relevant information from NAFTA or WTO countries is not equally accessible as it would be in the United States, the Patent and Trademark Office, courts, or other authorities must make appropriate inferences or take actions that favor the party requesting the information. This helps to maintain fairness in patent proceedings when dealing with international inventions and prior art.

To learn more:

NAFTA
WTO
information use
patent proceedings
pre-AIA

Question 9

How does the AIA affect the use of 37 CFR 1.131 affidavits for NAFTA/WTO acts?

Accepted Answer

How does the AIA affect the use of 37 CFR 1.131 affidavits for NAFTA/WTO acts?

The America Invents Act (AIA) has significantly impacted the use of 37 CFR 1.131 affidavits, including those relying on acts in NAFTA/WTO countries. The MPEP 715.07(c) notes:

"The provisions of 35 U.S.C. 104, as in effect on March 15, 2013, apply only to applications subject to the current 35 U.S.C. 102. For applications subject to examination under the first to file provisions of the AIA, 35 U.S.C. 100(i)(1)(B) defines effective filing date for claimed inventions to include the filing date of a prior foreign application under certain conditions."

This means that for applications filed on or after March 16, 2013 (subject to AIA provisions):

The concept of swearing behind a reference using a 37 CFR 1.131 affidavit is largely eliminated.
Instead of relying on invention dates, the effective filing date of the application becomes crucial.
Foreign priority dates can now serve as the effective filing date under certain conditions.

Inventors and patent practitioners should be aware of these changes when considering strategies to overcome prior art references, especially for applications with international aspects.

To learn more:

37 CFR 1.131

Question 10

How does pre-AIA 35 U.S.C. 104 affect military personnel serving abroad?

russ.krajec@blueironip.com · Accepted Answer

Pre-AIA 35 U.S.C. 104 provides specific rights for military personnel serving abroad. The law states:

"If an invention was made by a person, civil or military— (A) while domiciled in the United States, and serving in any other country in connection with operations by or on behalf of the United States, (B) while domiciled in a NAFTA country and serving in another country in connection with operations by or on behalf of that NAFTA country, or (C) while domiciled in a WTO member country and serving in another country in connection with operations by or on behalf of that WTO member country, that person shall be entitled to the same rights of priority in the United States with respect to such invention as if such invention had been made in the United States, that NAFTA country, or that WTO member country, as the case may be."

This provision ensures that military personnel serving abroad are not disadvantaged in terms of establishing priority dates for their inventions, treating their inventions as if they were made in their home country (US, NAFTA, or WTO member country).

To learn more:

military personnel
invention rights
pre-AIA
NAFTA
WTO

Patent Law FAQ

Here’s the complete FAQ:

MPEP 200 - Types and Status of Application; Benefit and Priority (3)

Which countries are recognized for priority claims under 35 U.S.C. 119(a)-(d)?

Which countries are recognized for claiming priority in U.S. patent applications?

What are the requirements for claiming priority to a foreign application?

What are the requirements for claiming priority to a foreign application?

MPEP 213-Right of Priority of Foreign Application (1)

Which countries are recognized for priority claims under 35 U.S.C. 119(a)-(d)?

Patent Law (3)

Which countries are recognized for priority claims under 35 U.S.C. 119(a)-(d)?

Which countries are recognized for claiming priority in U.S. patent applications?

What are the requirements for claiming priority to a foreign application?

What are the requirements for claiming priority to a foreign application?

Patent Procedure (3)

Which countries are recognized for priority claims under 35 U.S.C. 119(a)-(d)?

Which countries are recognized for claiming priority in U.S. patent applications?

What are the requirements for claiming priority to a foreign application?

What are the requirements for claiming priority to a foreign application?