What is required when submitting a certified copy of a foreign application for priority purposes?
When submitting a certified copy of a foreign application for priority purposes, the following requirements apply: If the certified copy is not in English, a translation is required The translation must be of the certified copy of the foreign application as filed The translation must be filed together with a statement that the translation of…
Read MoreWhat is a certified copy of a foreign application and when must it be filed?
A certified copy of a foreign application is an official copy of the foreign patent application, certified by the patent office where it was filed. It is required to perfect a claim of foreign priority in a U.S. patent application. According to 37 CFR 1.55(f), for applications filed on or after March 16, 2013: “A…
Read MoreWhat happens if the certified copy is filed after the issue fee is paid?
If the certified copy of the foreign application is filed after the date the issue fee is paid but prior to the date of grant of the patent, it will be placed in the file record but there will be no review of the papers. The patent when published will not include the priority claim.…
Read MoreWhen is the latest a certified copy can be filed for the patent to include the foreign priority claim without a certificate of correction?
The certified copy of the foreign application must be filed before the patent is granted. If the certified copy is filed after payment of the issue fee but prior to the date of grant, the priority claim will be placed in the file record but the patent will not include the priority claim unless corrected…
Read MoreWhen is a Certificate of Correction appropriate for perfecting a foreign priority claim?
A Certificate of Correction is appropriate for perfecting a foreign priority claim in the following situations: When the priority claim was timely filed in the application but was not included on the patent because the requirement for a certified copy was not satisfied. In this case, a grantable petition under 37 CFR 1.55(f) or 37…
Read MoreHow does an application become ‘amended’?
MPEP 203.03 defines an ‘amended’ application as: An ‘amended’ nonprovisional application is one that having been acted on by the examiner, has in turn been acted on by the applicant in reply to the examiner’s action. The applicant’s reply may be confined to an election, a traverse of the action taken by the examiner or…
Read MoreHow do I amend my application to include inadvertently omitted material under 37 CFR 1.57(b)?
To amend your application to include inadvertently omitted material under 37 CFR 1.57(b), you must: File an amendment to include the omitted material within the time period set by the USPTO Ensure the amendment is filed before the close of prosecution or abandonment of the application Supply a copy of the prior-filed application (unless it’s…
Read MoreWhat does it mean for a patent application to be ‘allowed’ or ‘in issue’?
According to MPEP 203.04: An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant. Its status as an ‘allowed’ application continues from the date of the notice of allowance until…
Read MoreWhat is a transition application under the America Invents Act (AIA)?
A transition application under the America Invents Act (AIA) is: Filed on or after March 16, 2013 Claims foreign priority to or domestic benefit of an application filed before March 16, 2013 Transition applications may be subject to either pre-AIA or AIA rules depending on the effective filing date of the claimed inventions. The MPEP…
Read MoreWhat statement is required for transition applications under 37 CFR 1.55 and 1.78?
For transition applications, 37 CFR 1.55 and 1.78 require a statement if: The application contains or contained a claim with an effective filing date on or after March 16, 2013 The statement must be provided within specified time limits The MPEP notes: “The statement provisions of 37 CFR 1.55 and 1.78 require that if the…
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