How does the USPTO handle translation errors in foreign priority documents for international design applications?
The USPTO handles translation errors in foreign priority documents for international design applications as follows: If an error in the translation of a foreign priority document is discovered after publication of the international registration, the USPTO will generally not take action to correct the error. However, the applicant may submit a corrected translation for consideration…
Read MoreHow does the USPTO determine the effective filing date for foreign priority claims?
For U.S. patent documents claiming foreign priority, the USPTO determines the effective filing date based on the description of the subject matter in the foreign application. MPEP 2154.01(b) states: If subject matter of a U.S. patent document under examination is not described in the earliest application to which benefit or priority is claimed, the effective…
Read MoreWhat are the requirements for submitting a certified copy of a foreign priority document in an international design application?
The requirements for submitting a certified copy of a foreign priority document in an international design application are as follows: A certified copy of the foreign priority document is generally not required to be submitted to the USPTO. The International Bureau will normally handle the exchange of priority documents with the USPTO. If the priority…
Read MoreWhat is the relationship between priority claims and the written description requirement?
Priority claims, whether under 35 U.S.C. 119 or 35 U.S.C. 120, are closely tied to the written description requirement. According to MPEP 2163.03: “Under 35 U.S.C. 119(a) or (e), the claims in a U.S. application are entitled to the benefit of a foreign priority date or the filing date of a provisional application if the…
Read MoreHow can priority claims be used to overcome a pre-AIA 35 U.S.C. 102(e) rejection?
Priority claims can be an effective way to overcome a pre-AIA 35 U.S.C. 102(e) rejection. This can be done through either foreign priority claims or domestic benefit claims. For foreign priority claims, the MPEP states: “Submitting a claim to priority under 35 U.S.C. 119(a) – (d) within the time period set in 37 CFR 1.55”…
Read MoreWhat issues can be considered in ex parte reexamination ordered under 35 U.S.C. 304?
Ex parte reexamination ordered under 35 U.S.C. 304 is limited to considerations of prior art patents and printed publications. The MPEP states: “Rejections will not be based on matters other than patents or printed publications, such as public use or sale, inventorship, 35 U.S.C. 101, conduct issues, etc.” However, certain ancillary matters may be considered,…
Read MoreWhat is Form Paragraph 23.19 and when is it used in patent examination?
Form Paragraph 23.19 is a standardized notification used by patent examiners to inform applicants about the requirement for a certified English translation of a foreign priority document. According to MPEP 2304.01(c): “Form paragraph 23.19 may be used to notify applicant that a certified English translation of the priority document is required.” The content of Form…
Read MoreHow does foreign priority affect patent term?
Foreign priority does not affect the calculation of patent term in the United States. As stated in the MPEP, Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), 365(b), 386(a), or 386(b) is not considered in determining the term of a patent. This means that the 20-year term is calculated from the U.S. filing date, not the…
Read MoreWhat is foreign priority in international design applications?
Foreign priority in international design applications refers to the right to claim priority to an earlier filed foreign application or international design application. According to MPEP 2920.05(d), this right is granted under 35 U.S.C. 386(a) and (b): “Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign…
Read MoreCan the filing date of a foreign priority document be used as the effective filing date under pre-AIA 35 U.S.C. 102?
No, the filing date of a foreign priority document cannot be used as the effective filing date under pre-AIA 35 U.S.C. 102. However, it can be used to overcome certain references. The MPEP states: “The effective filing date for claims subject to pre-AIA 35 U.S.C. 102 is not the filing date of the foreign priority…
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