How does the USPTO determine if an applicant is entitled to the benefit of the foreign filing date?
The examiner generally does not examine the certified copy of the foreign priority application except to see that it contains no obvious formal defects and corresponds to the U.S. application. The examiner will consider the merits of the priority claim if: An intervening reference is found with an effective date between the foreign filing date…
Read MoreWhen does the examiner require a translation of a non-English language foreign priority application?
If the applicant files the certified copy of the foreign application to overcome the effective date of a reference, a translation is required if the copy is not in English. The examiner should require the translation when requesting the certified copy. The translation must be a complete translation of the certified copy, and must be…
Read MoreWhat is the significance of the filing date for foreign applications in priority claims?
The filing date of foreign applications is significant in priority claims for the following reasons: It establishes the effective date of the priority claim. The date accorded is the date on which the specification and drawing were filed, not necessarily the date of the petition (which is called the application in some countries). This date…
Read MoreWhat are the requirements for accepting an unintentionally delayed claim for foreign priority?
The requirements for accepting an unintentionally delayed claim for foreign priority include: Filing a petition to accept a delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b). Submitting the priority claim in an application data sheet identifying the foreign application. Providing a certified copy of the foreign…
Read MoreHow can a claim for foreign priority be perfected after a patent has been issued?
A claim for foreign priority can be perfected after a patent has been issued through two main methods: Certificate of Correction under 35 U.S.C. 255 and 37 CFR 1.323 Reissue application The choice of method depends on the specific circumstances: A Certificate of Correction can be used if the requirements of 37 CFR 1.55 are…
Read MoreWhat is the most important aspect of an examiner’s action regarding a right of priority?
The most important aspect of an examiner’s action regarding a right of priority is determining the identity of invention between the U.S. and foreign applications. This involves: Considering the foreign application as if it had been filed in the U.S. on the same date it was filed in the foreign country Examining the foreign application…
Read MoreCan the foreign priority application be filed by an assignee, legal representative or agent of the inventor?
Yes, the foreign application may have been filed by and in the name of the assignee or legal representative or agent of the inventor, as applicant. If the certified copy of the foreign application corresponds with the one identified in the U.S. application and no discrepancies appear, it may be assumed the U.S. application is…
Read MoreWhat does an examiner check when reviewing a claim to foreign priority?
When reviewing a claim to foreign priority, the examiner generally checks the following: That the papers contain no obvious formal defects That the papers correspond in number, date and country to the application identified in the application data sheet For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under…
Read MoreHow does an examiner handle an intervening reference when a foreign priority claim is present?
When an examiner finds an intervening reference (a reference with an effective date between the foreign filing date and the U.S. filing date) and a foreign priority claim is present, the examiner follows these steps: If the certified copy of the priority papers has not been filed, the examiner rejects the claims that may be…
Read MoreWhen does an examiner consider the merits of a foreign priority claim?
An examiner considers the merits of a foreign priority claim in the following situations: When a reference is found with an effective date between the foreign filing date and the U.S. filing date When determining if a reference’s prior art date falls within the grace period for the application under examination When an interference situation…
Read More