How does PDX apply to U.S. design applications?
PDX for U.S. design applications has specific considerations, as explained in MPEP 215.01: The USPTO will attempt retrieval of foreign applications to which priority is claimed in a U.S. design application where possible. The Spanish Patent and Trademark Office deposits certain ES industrial design applications for access by the USPTO via the WIPO DAS. Therefore,…
Read MoreCan I perfect a claim for foreign priority after my patent has been issued?
Yes, you can perfect a claim for foreign priority after your patent has been issued. There are two main methods: Certificate of Correction: This is generally the preferred method if the requirements of 37 CFR 1.55 are met and no further examination is required. As stated in the MPEP, Except in certain situations, a certificate…
Read MoreHow does the power of attorney from a prior application affect a continuing application?
For applications filed on or after September 16, 2012, the power of attorney from a prior application may have effect in the continuing application under certain conditions. The MPEP states: 37 CFR 1.32(d) provides that a power of attorney from a prior national application for which benefit is claimed under 35 U.S.C. 120, 121, or…
Read MoreWhat happens to continuation and divisional applications filed under 37 CFR 1.60 before December 1, 1997?
The MPEP clearly states that All continuation and divisional applications filed under 37 CFR 1.60 prior to December 1, 1997 will continue to be processed and examined under the procedures set forth in former 37 CFR 1.60. This means that applications filed before the cutoff date are grandfathered in and will be processed according to…
Read MoreWhat happens if the reference to a prior application is not in the first sentence of the specification?
If the reference to a prior application is not in the first sentence of the specification, it may still be acceptable under certain conditions. According to MPEP 211.02: If the reference to the prior application is not in the first sentence of the specification, it may be given limited review. For example, if an application…
Read MoreWhat happens if a priority claim is filed after the issue fee is paid?
If a priority claim or the certified copy of a foreign application is filed after the issue fee is paid, it will not automatically be included in the patent. The MPEP Section 213.04 states: “If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee…
Read MoreCan priority be claimed based on applications filed under bilateral or multilateral treaties?
Yes, priority can be claimed based on applications filed under bilateral or multilateral treaties. The MPEP states: Under Article 4A of the Paris Convention for the Protection of Industrial Property, a right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design…
Read MoreCan I file a priority claim in a continuation or divisional application?
Yes, you can file a priority claim in a continuation or divisional application, but there are specific rules you must follow. According to MPEP 214.01: ‘In the case of a continuation or divisional application filed under 35 U.S.C. 111(a), the claim for priority must be made during the pendency of the application and within the…
Read MoreHow can the requirement for a timely filed certified copy be satisfied through the priority document exchange program?
37 CFR 1.55(i) provides that the requirement for a timely filed certified copy can be satisfied if: The foreign application was filed in a participating foreign intellectual property office; The claim for priority is presented in an application data sheet, identifying the foreign application; The copy of the foreign application is received by the USPTO…
Read MoreWhat is the Priority Document Exchange program?
The Priority Document Exchange (PDX) program is a system that allows participating intellectual property offices to exchange priority documents electronically. This program simplifies the process of submitting certified copies of foreign priority applications for patent applicants. According to the MPEP, The Office website provides information concerning the priority document exchange program ( www.uspto.gov/patents/basics/international-protection/electronic-priority-document-exchange-pdx ). This…
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