Can a nonprovisional application be entitled to different foreign filing dates for different claims?
Yes, a nonprovisional application can be entitled to different foreign filing dates for different claims. This can occur in two scenarios: The application may be found entitled to the filing date of a foreign application for some claims but not for others. An applicant may rely on two or more different foreign applications and may…
Read MoreWhat is required when submitting a certified copy of a foreign application for priority purposes?
When submitting a certified copy of a foreign application for priority purposes, the following requirements apply: If the certified copy is not in English, a translation is required The translation must be of the certified copy of the foreign application as filed The translation must be filed together with a statement that the translation of…
Read MoreWhen is a Certificate of Correction appropriate for perfecting a foreign priority claim?
A Certificate of Correction is appropriate for perfecting a foreign priority claim in the following situations: When the priority claim was timely filed in the application but was not included on the patent because the requirement for a certified copy was not satisfied. In this case, a grantable petition under 37 CFR 1.55(f) or 37…
Read MoreWhat is the significance of 37 CFR 1.55(h) for foreign priority claims?
37 CFR 1.55(h) provides an important provision for satisfying the requirement for a certified copy of a foreign application. Key points include: It allows the certified copy requirement to be met through a prior-filed nonprovisional application. The prior-filed application must be one for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c).…
Read MoreCan I add a priority claim to a patent after it has been issued?
Yes, it is possible to add a priority claim to a patent after it has been issued, but the process requires filing a reissue application. The MPEP states: ‘A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) or 35 U.S.C. 120 in the issued…
Read MoreHow does the AIA’s first-inventor-to-file (FITF) provision affect perfecting foreign priority claims?
The America Invents Act’s (AIA) first-inventor-to-file (FITF) provision has significant implications for perfecting foreign priority claims, especially in cases where the foreign application has a pre-March 16, 2013 filing date. Key points include: If a patent was examined under FITF provisions, but the foreign priority application has a pre-AIA filing date, perfecting the priority claim…
Read MoreHow can I use a certificate of correction to perfect a foreign priority claim?
A certificate of correction can be used to perfect a foreign priority claim in the following scenarios: When the priority claim was timely filed but not included on the patent due to failure to submit a certified copy. When the priority claim was not timely made, but the correction would not require further examination. To…
Read MoreCan I claim priority to a foreign application after my U.S. patent has been issued?
Yes, it is possible to claim priority to a foreign application after your U.S. patent has been issued. According to MPEP 216.01, a claim for priority under 35 U.S.C. 119(a)-(d) or (f) can be made after the patent is granted, subject to certain conditions: The claim must be made within the time period set forth…
Read MoreHow can I correct the priority claim in a patent after it has been issued?
To correct the priority claim in an issued patent, you can file a reissue application under 35 U.S.C. 251. The MPEP states: ‘A reissue application can be filed to correct the failure to adequately claim priority under 35 U.S.C. 119(a)-(d) or (f) or 35 U.S.C. 120 in the issued patent.’ This process allows you to…
Read MoreWhat is the ‘In re Van Esdonk’ case and how does it apply to foreign priority claims?
The ‘In re Van Esdonk’ case (187 USPQ 671, Comm’r Pat. 1975) is an important precedent in patent law regarding the perfection of foreign priority claims. Key points about this case include: It involved a situation where a claim to foreign priority benefits had not been filed in the application prior to patent issuance. The…
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