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 can the requirement for a certified copy be satisfied if the foreign application was filed in a foreign intellectual property office participating in a priority document exchange agreement?
Under 37 CFR 1.55(i), the requirement for a certified copy of the foreign application will be considered satisfied if: The foreign application was filed in a foreign intellectual property office participating with the USPTO in a bilateral or multilateral priority document exchange agreement; The claim for priority is presented in an application data sheet, identifying…
Read MoreHow does the Priority Document Exchange (PDX) program work?
The Priority Document Exchange (PDX) program allows for electronic transmission of priority documents between participating foreign intellectual property offices. According to 37 CFR 1.55(i), if the foreign application was filed in a participating office, the requirement for a timely filed certified copy is considered satisfied if the Office receives a copy through the PDX program…
Read MoreHow should priority papers be marked to ensure proper correlation with U.S. applications?
To ensure proper correlation between priority papers and U.S. applications, the MPEP suggests: “It is suggested that a notation of the application number of the corresponding U.S. application be placed on the priority papers when such papers are not submitted via a priority document exchange program. Such notation should be placed directly on the priority…
Read MoreCan an interim copy of the foreign priority application be filed to meet the certified copy requirement?
Yes, under 37 CFR 1.55(j), the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f) will be considered satisfied if: A copy of the original foreign application clearly labeled as “Interim Copy,” including the specification, and any drawings or claims upon which…
Read MoreWhat is an ‘interim copy’ of a foreign priority application?
An ‘interim copy’ is a true copy of the original foreign application that an applicant can file to meet the timeliness requirement when they cannot obtain a certified copy within the time limit. According to 37 CFR 1.55(j), the interim copy must be clearly labeled as ‘Interim Copy’ and filed with a cover sheet stating…
Read MoreCan a copy of the foreign patent satisfy the certified copy requirement?
No, a copy of the foreign patent as issued does not comply with the certified copy requirement. The MPEP states: “A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the…
Read MoreHow should the interim copy be filed via the USPTO patent electronic filing system?
When filing an interim copy via the USPTO patent electronic filing system: The main parts of the foreign priority application (Abstract, Drawings, Specification, Claims, etc.) along with the cover sheet may be filed as a single PDF image file. Select the document description ‘Interim Copy of the Foreign Priority Application’ when indexing. For plain text…
Read MoreWhat happens if there are deficiencies in the priority papers?
If priority papers are found to be deficient in material respects, such as failure to include the correct certified copy, applicants should ensure that there is sufficient time to remedy any defects. The MPEP advises: “Frequently, priority papers are found to be deficient in material respects, such as for example, the failure to include the…
Read MoreWhat is the time period for filing a certified copy of the foreign priority application in a U.S. application filed on or after March 16, 2013?
For an original application filed under 35 U.S.C. 111(a) on or after March 16, 2013, a certified copy of the foreign application 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 foreign application, except as provided in…
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