What 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 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 information appears on the front page of a patent regarding foreign priority claims?
The front page of a patent includes the following information regarding foreign priority claims: The country of the foreign application The filing date of the foreign application The number of the foreign application This information is included for applications where the bib-data sheet has been properly endorsed. As stated in the MPEP: “The front page…
Read MoreHow is foreign priority application information handled on the bib-data sheet?
Foreign priority application information is handled as follows on the bib-data sheet: If a proper foreign priority claim is not listed on the bib-data sheet, the examiner should add the information and forward it for correction in the Office computer systems. Applications listed on the bib-data sheet but filed in countries not qualifying for benefits…
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 are the requirements for the certified copy of the foreign priority application?
A certified copy of the foreign application must be filed within the time period set in 37 CFR 1.55, which is the later of four months from the filing date of the US application or sixteen months from the foreign application filing date. The certified copy requirement will be considered satisfied in a national stage…
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…
Read MoreWhat is a certified copy of a foreign application and when must it be filed?
A certified copy of a foreign application is an official copy of the foreign patent application, certified by the patent office where it was filed. It is required to perfect a claim of foreign priority in a U.S. patent application. According to 37 CFR 1.55(f), for applications filed on or after March 16, 2013: “A…
Read MoreWhen is the latest a certified copy can be filed for the patent to include the foreign priority claim without a certificate of correction?
The certified copy of the foreign application must be filed before the patent is granted. If the certified copy is filed after payment of the issue fee but prior to the date of grant, the priority claim will be placed in the file record but the patent will not include the priority claim unless corrected…
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).…
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