How does the AIA affect the treatment of foreign priority claims in determining prior art dates?
The AIA (America Invents Act) has significantly changed the treatment of foreign priority claims in determining prior art dates. Under the AIA: Foreign priority claims can now establish an earlier effective filing date for prior art purposes. This applies to both U.S. and foreign applicants. The subject matter must be adequately supported in the priority…
Read MoreHow does AIA 35 U.S.C. 102(d) determine the effective filing date for subject matter in foreign priority applications?
AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows: The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement). The foreign priority application must be entitled to a right of priority under 35…
Read MoreHow does AIA 35 U.S.C. 102(d) differ from the Hilmer doctrine?
AIA 35 U.S.C. 102(d) eliminates the Hilmer doctrine, which was applicable under pre-AIA law. The key differences are: Under the Hilmer doctrine, the effective filing date for U.S. patents as prior art was limited to their earliest U.S. filing date. Under AIA 35 U.S.C. 102(d), a U.S. patent document can have an effective filing date…
Read MoreHow does a prior foreign application affect the determination of prior art?
A prior foreign application can significantly affect the determination of prior art in U.S. patent examination. MPEP § 1302.06 directs us to MPEP § 202 and MPEP § 214 for detailed information on this topic. Key points to consider: The foreign priority date can be used as the effective filing date for prior art purposes…
Read MoreCan I perfect a foreign priority claim in a reissue application if it wasn’t perfected in the original patent?
Yes, you can perfect a foreign priority claim in a reissue application even if it wasn’t perfected in the original patent. This is one of the reasons for which a reissue application can be filed. MPEP 1417 cites the case of Brenner v. State of Israel, which established that “reissue is also available to correct…
Read MoreWhat are the grounds for filing a reissue application?
A reissue application is filed to correct an error in the patent that makes it wholly or partly inoperative or invalid. The MPEP states: There must be at least one error in the patent to provide grounds for reissue of the patent. If there is no error in the patent, the patent will not be…
Read MoreWhat is the time limit for claiming priority to a foreign application?
The time limit for claiming priority to a foreign application is generally 12 months from the filing date of the foreign application. This is in accordance with the Paris Convention and U.S. patent law. MPEP § 214, which is referenced in MPEP § 1302.06, provides detailed information on this time limit. Specifically, MPEP § 214…
Read MoreHow does the process of claiming foreign priority differ for reissue applications filed before and after September 16, 2012?
The process of claiming foreign priority in reissue applications differs based on whether the application was filed before or after September 16, 2012. Here’s a breakdown of the differences: For reissue applications filed on or after September 16, 2012: MPEP 1417 states: “For reissue applications filed on or after September 16, 2012, the foreign priority…
Read MoreWhat happens to foreign priority information when a patent is reissued?
When a patent is reissued, the foreign priority information from the original patent is not automatically carried forward to the reissue patent. This is an important point for both applicants and examiners to note. According to MPEP 1417: “The examiner should note that foreign priority information on the front page of the patent will not…
Read MoreHow does foreign priority affect benefit claims under 35 U.S.C. 120 in continuation-in-part (CIP) design applications?
Foreign priority can significantly affect benefit claims under 35 U.S.C. 120 in continuation-in-part (CIP) design applications, especially when the conditions of 35 U.S.C. 120 are not met: If the CIP application doesn’t meet the conditions of 35 U.S.C. 120 (e.g., insufficient disclosure), it’s not entitled to the benefit of the parent application’s filing date. In…
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