How are foreign priority claims handled on the bib-data sheet?
Foreign priority claims are an important aspect of patent applications and are reflected on the bib-data sheet. The examiner should verify that foreign applications listed on the oath, declaration, or application data sheet are correctly listed on the bib-data sheet. According to the MPEP: A bib-data sheet should include the application number, country (or intellectual…
Read MoreHow does the USPTO handle United Kingdom provisional specifications in priority claims?
The USPTO handles United Kingdom provisional specifications in priority claims as follows: A certified copy of the “provisional specification” may be submitted, sometimes accompanied by a copy of the “complete specification.” The provisional specification is examined for completeness of disclosure, as it may not contain a complete disclosure in the sense of 35 U.S.C. 112.…
Read MoreHow 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 might the USPTO require an earlier submission of the certified copy?
According to 37 CFR 1.55(g)(2), the USPTO may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in the following circumstances: When the application is involved in an interference or derivation proceeding; When necessary to overcome the date of a reference relied upon by…
Read MoreHow does the USPTO acknowledge receipt of foreign priority claims?
The USPTO acknowledges receipt of foreign priority claims in several ways: If the claim is timely and all requirements are met, the examiner will advise the applicant in the next Office action using form PTOL-326 or form paragraph 2.26 For priority documents filed in a parent application, the examiner may use form paragraph 2.27 If…
Read MoreHow can I file an unintentionally delayed foreign priority claim?
To file an unintentionally delayed foreign priority claim, you must submit a petition under 37 CFR 1.55(e). The petition must include: The priority claim (if not previously submitted) A certified copy of the foreign application (unless previously submitted or an exception applies) The petition fee set forth in 37 CFR 1.17(m) A statement that the…
Read MoreWhat are the time periods for filing a claim for foreign priority in a U.S. patent application?
The time periods for filing a priority claim depend on the type of application: For original applications filed under 35 U.S.C. 111(a) (other than design applications), the claim must be filed during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months…
Read MoreWhat are the time periods for filing priority or benefit claims in U.S. patent applications?
The time periods for filing priority or benefit claims in U.S. patent applications vary depending on the type of claim and application. Generally: For foreign priority claims under 35 U.S.C. 119(a)-(d) and (f), the claim must be made within the later of 4 months from the actual filing date or 16 months from the foreign…
Read MoreWhat is the time limit for filing a U.S. application claiming foreign priority?
The U.S. nonprovisional application must generally be filed within 12 months of the filing date of the foreign application to claim priority. For design applications, this period is 6 months. Specifically, 37 CFR 1.55(b) states: “The nonprovisional application must be: (1) Filed not later than twelve months (six months in the case of a design…
Read MoreWhat is the right of priority for foreign patent applications?
The right of priority allows an applicant who has filed a patent application in a foreign country to claim priority to that earlier filing date when filing a subsequent U.S. application for the same invention. This right is established by 35 U.S.C. 119 and gives the U.S. application the benefit of the earlier foreign filing…
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