What is required to make a proper priority claim in a U.S. patent application?
To make a proper priority claim in a U.S. patent application, the applicant must provide specific information about the foreign application and file the claim within the required time period. The requirements differ slightly depending on the type of application. For applications filed on or after September 16, 2012, under 35 U.S.C. 111(a), MPEP 213.02…
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 MoreHow has the requirement for specific reference to prior applications changed?
The requirement for specific reference to prior applications has undergone changes due to recent legislation: For applications filed before September 16, 2012: The specific reference to the prior application must be in the first sentence(s) of the specification or in an application data sheet. For applications filed on or after September 16, 2012: The specific…
Read MoreWhat is the process for examining foreign priority claims in patent applications?
When a claim to priority and certified copy of a foreign application are received during the pendency of a patent application, the examiner generally follows these steps: Checks for obvious formal defects in the documents Verifies that the documents correspond to the application identified in the application data sheet For original applications filed under 35…
Read MoreHow does the USPTO handle correspondence when there’s a conflict between customer number and application data sheet?
How does the USPTO handle correspondence when there’s a conflict between customer number and application data sheet? When there’s a conflict between the correspondence address provided in a customer number and an application data sheet (ADS), the USPTO follows specific rules: The correspondence address in the ADS takes precedence if filed with the initial application…
Read MoreHow does the inventorship in a continuing application relate to the prior application?
The inventorship in a continuing application can be the same as or different from the prior application, depending on the circumstances: For applications filed on or after September 16, 2012, the inventorship is determined by the application data sheet or the copy of the oath/declaration from the earlier-filed application. If the continuing application names a…
Read MoreWhat are the requirements for claiming priority to or benefit of a prior-filed application?
To claim priority to or benefit of a prior-filed application, the later-filed application must: Contain a specific reference to the earlier-filed application Be filed within the required time period Include the priority or benefit claim in the application data sheet (for applications filed on or after September 16, 2012) The MPEP states: “Whether an application…
Read MoreWhat are the requirements for claiming benefit of an earlier national application under 37 CFR 1.78?
The requirements for claiming benefit of an earlier national application under 37 CFR 1.78 include: A specific reference to the earlier-filed application in the later-filed application For applications filed on or after September 16, 2012, the specific reference must be in the application data sheet (ADS) For applications filed before September 16, 2012, the specific…
Read MoreHow should prior U.S. application data be provided in patent applications?
For patent applications, prior U.S. application data should be provided as follows: For applications filed on or after September 16, 2012: In an application data sheet For applications filed before September 16, 2012: In either the first sentence(s) of the specification or in an application data sheet MPEP 202 states: “The identifying data of all…
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.…
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