How does the ‘first foreign application’ rule affect priority claims?
The ‘first foreign application’ rule states that the priority period is calculated from the earliest foreign filing, with some exceptions. This means: Priority can only be claimed to the first application filed for the invention. If multiple foreign applications were filed, only the earliest can serve as the basis for priority. Applications filed in non-recognized…
Read MoreWhat happens if the foreign application is not in English?
What happens if the foreign application is not in English? If the foreign application is not in English, the applicant must provide an English translation of the non-English language application and a statement that the translation is accurate. According to MPEP 213.02: ‘If the foreign application is not in the English language, the applicant must…
Read MoreWhat if my foreign application was not filed in a participating PDX office?
If your foreign application was not filed in a participating Priority Document Exchange (PDX) office, you may still be able to use the PDX program under certain conditions. According to 37 CFR 1.55(i)(4): If the foreign application was not filed in a participating foreign intellectual property office, but a copy of the foreign application was…
Read MoreWhat happens if a foreign application was filed more than 12 months before the U.S. application?
If a foreign application was filed more than 12 months before the U.S. application and priority has not been restored, the examiner will use form paragraph 2.23 to notify the applicant that the claim for priority cannot be based on that application. As stated in the MPEP: Where the earlier foreign application was filed more…
Read MoreWhat are the requirements for claiming priority to a foreign application?
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…
Read MoreWhat is the deadline for filing a foreign priority claim in a U.S. patent application?
The deadline for filing a foreign priority claim in a U.S. patent application depends on the type of application: For applications filed under 35 U.S.C. 111(a), the claim must be filed within the later of: Four months from the actual filing date of the application, or Sixteen months from the filing date of the prior…
Read MoreHow should foreign priority claims be formatted in patent applications?
Foreign priority claims in patent applications should be formatted according to specific guidelines outlined in MPEP 214.04. The claim should include: The application number of the foreign application The country or intellectual property authority where the application was filed The day, month, and year of filing The MPEP states: ‘When the claim to priority concerns…
Read MoreHow do I file a foreign priority claim for an international application entering the national stage in the U.S.?
For international applications entering the national stage in the United States under 35 U.S.C. 371, the process for filing a foreign priority claim is different from regular U.S. applications. According to MPEP 214.01: “The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT…
Read MoreHow is foreign priority handled when the application is in issue?
When a claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but before the patent is granted, special procedures apply. According to the MPEP: When the claim for foreign priority or the certified copy of the foreign application is filed after…
Read MoreWhat are the requirements for filing a priority claim and certified copy of a foreign application?
According to 37 CFR 1.55(g)(1), the claim for priority and the certified copy of the foreign application must be filed within the pendency of the application. The MPEP states: “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…
Read More