What happens if I file a U.S. patent application more than 12 months after my foreign filing?
If you file a U.S. patent application more than 12 months after your foreign filing, your claim for priority based on that foreign application may be denied. The MPEP states: The claim for priority cannot be based on said application, because the subsequent nonprovisional or international application designating the United States was filed more than…
Read MoreWhat are the requirements for a petition to restore the right of priority?
A petition to restore the right of priority must include several key elements. The MPEP outlines these requirements: A petition to restore the right of priority must include: (1) the priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) in an application data sheet, identifying the foreign application to which priority…
Read MoreWhere should I file the petition to restore the right of priority?
The location for filing your petition to restore the right of priority depends on the type of application you have. The MPEP provides guidance: The petition to restore the right of priority must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c)…
Read MoreCan the USPTO request additional information for a priority restoration petition?
Yes, the USPTO may request additional information when considering a petition to restore the right of priority. The MPEP states: The Director may require additional information where there is a question whether the delay was unintentional. This means that if the USPTO has doubts about whether the delay in filing was truly unintentional, they may…
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 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 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 is the priority document exchange program and how does it affect foreign priority claims?
The priority document exchange program is an agreement between patent offices to electronically exchange priority documents. It affects foreign priority claims in the following ways: Applicants may not need to submit a certified copy if the foreign application is available through the program The USPTO will attempt to retrieve the priority document automatically If successful,…
Read MoreHow can an applicant file a delayed claim for foreign priority in a U.S. patent application?
If a claim for foreign priority is not presented within the required time period under 37 CFR 1.55, it is considered waived. However, the claim may be accepted if the priority claim was unintentionally delayed. To file a petition for an unintentionally delayed priority claim, the applicant must submit: The priority claim under 35 U.S.C.…
Read MoreWhat is the proper way to identify a foreign priority application in a U.S. patent application?
To properly identify a foreign priority application in a U.S. patent application, you should provide: The application number The country or intellectual property authority The filing date (day, month, and year) MPEP 214.04 advises: “To ensure an accurate and complete citation of a foreign priority application, applicants should review the list of the various intellectual…
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