When might the USPTO require an earlier submission of the certified copy?
According to 37 CFR 1.55(g)(2), the USPTO may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in the following circumstances: When the application is involved in an interference or derivation proceeding; When necessary to overcome the date of a reference relied upon by…
Read MoreHow does the USPTO acknowledge receipt of foreign priority claims?
The USPTO acknowledges receipt of foreign priority claims in several ways: If the claim is timely and all requirements are met, the examiner will advise the applicant in the next Office action using form PTOL-326 or form paragraph 2.26 For priority documents filed in a parent application, the examiner may use form paragraph 2.27 If…
Read MoreWhat are the three broad types of patent applications?
According to the MPEP, patent applications can be directed to three broad types of subject matter: Utility patent applications under 35 U.S.C. 101 for “a new and useful process, machine, manufacture, or composition of matter” Plant patent applications under 35 U.S.C. 161 Design patent applications under 35 U.S.C. 171
Read MoreHow can I file an unintentionally delayed foreign priority claim?
To file an unintentionally delayed foreign priority claim, you must submit a petition under 37 CFR 1.55(e). The petition must include: The priority claim (if not previously submitted) A certified copy of the foreign application (unless previously submitted or an exception applies) The petition fee set forth in 37 CFR 1.17(m) A statement that the…
Read MoreWhat types of patent applications can be filed in the USPTO?
The three main types of patent applications that can be filed in the USPTO are: Utility patent applications (filed under 35 U.S.C. 101) for “any new and useful process, machine, manufacture, or composition of matter” Design patent applications (filed under 35 U.S.C. 171) for “any new, original, and ornamental design for an article of manufacture”…
Read MoreWhen does the examiner require a translation of a non-English language foreign priority application?
If the applicant files the certified copy of the foreign application to overcome the effective date of a reference, a translation is required if the copy is not in English. The examiner should require the translation when requesting the certified copy. The translation must be a complete translation of the certified copy, and must be…
Read MoreWhat is a transition application under the AIA?
A transition application under the America Invents Act (AIA) is: A nonprovisional application filed on or after March 16, 2013 That claims foreign priority to, or domestic benefit of, an application filed before March 16, 2013 Transition applications can be either pre-AIA first-to-invent applications or AIA first-inventor-to-file applications, depending on the effective filing date of…
Read MoreWhat are the time periods for filing a claim for foreign priority in a U.S. patent application?
The time periods for filing a priority claim depend on the type of application: For original applications filed under 35 U.S.C. 111(a) (other than design applications), the claim must be filed during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months…
Read MoreWhat are the time periods for filing priority or benefit claims in U.S. patent applications?
The time periods for filing priority or benefit claims in U.S. patent applications vary depending on the type of claim and application. Generally: For foreign priority claims under 35 U.S.C. 119(a)-(d) and (f), the claim must be made within the later of 4 months from the actual filing date or 16 months from the foreign…
Read MoreWhat time periods apply for submitting a specific reference to a prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e)?
The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78: For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application…
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