How does the incorporation by reference work for foreign priority applications?
Incorporation by reference for foreign priority applications is an important safeguard for applicants. Here’s how it works: For applications filed on or after September 21, 2004, a claim under 37 CFR 1.55 for priority of a prior-filed foreign application is considered an incorporation by reference of the prior-filed foreign priority application. This incorporation is subject…
Read MoreWhat is an ‘interim copy’ of a foreign application and how can it satisfy the certified copy requirement?
37 CFR 1.55(j) allows an applicant to provide an ‘interim copy’ of the original foreign application to satisfy the requirement for a certified copy to be filed within the time limit set in 37 CFR 1.55(f). An interim copy must: Be clearly labeled as ‘Interim Copy’ Include the specification, drawings, and claims of the foreign…
Read MoreWhat is an ‘interim copy’ of a foreign application in patent filings?
An ‘interim copy’ is a mechanism provided by 37 CFR 1.55(j) that allows applicants to meet the timeliness requirement for submitting a certified copy of a foreign application. It’s a copy of the original foreign application that the applicant can provide from their own records when they cannot obtain a certified copy within the time…
Read MoreWhat is an interim copy of a foreign priority document and when is it acceptable?
An interim copy of a foreign priority document is a copy that is submitted before the certified copy is available. The MPEP 213.02 provides guidance on when an interim copy is acceptable: The Office may require that an ‘interim copy’ of the foreign application be furnished in the event that the certified copy of the…
Read MoreDoes filing an interim copy replace the need for a certified copy of the foreign application?
No, filing an interim copy does not replace the need for a certified copy of the foreign application. While an interim copy satisfies the timeliness requirement, a certified copy is still required. The MPEP clarifies this point: Thus, providing an interim copy of a foreign application under 37 CFR 1.55(j) satisfies the requirement for a…
Read MoreHow does claiming benefit of an international application affect the patent term?
How does claiming benefit of an international application affect the patent term? Claiming the benefit of an international application can affect the patent term in specific ways. According to MPEP 211.01(c): It should be noted that international applications, which designate the United States, are included in the definition of ‘national application’ in pre-AIA 35 U.S.C.…
Read MoreWhat happens if an international application designating the US is published in a language other than English?
What happens if an international application designating the US is published in a language other than English? If an international application designating the United States is published under PCT Article 21(2) in a language other than English, a translation of the international application into English must be provided. The MPEP 211.01(c) states: If the international…
Read MoreCan an international application be used as a basis for priority in a U.S. national application?
Yes, an international application can be used as a basis for priority in a U.S. national application. This is outlined in 35 U.S.C. 365(a), which states: In accordance with the conditions and requirements of subsections (a) through (d) of section 119, a national application shall be entitled to the right of priority based on a…
Read MoreHow does an international application designating the US affect benefit claims?
How does an international application designating the US affect benefit claims? An international application designating the United States can be used as a basis for claiming benefit in a nonprovisional application. The MPEP 211.01(b) states: Any nonprovisional application claiming the benefit of one or more prior-filed copending nonprovisional applications or international applications designating the United…
Read MoreWhat happens if an international application designating the US is withdrawn?
What happens if an international application designating the US is withdrawn? If an international application designating the United States is withdrawn or considered withdrawn, either generally or as to the United States, it cannot serve as the basis for priority in a subsequent U.S. application. The MPEP states: “An international application designating the United States…
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