Can a nonprovisional application be entitled to different foreign filing dates for different claims?
Yes, a nonprovisional application can be entitled to different foreign filing dates for different claims. This can occur in two scenarios: The application may be found entitled to the filing date of a foreign application for some claims but not for others. An applicant may rely on two or more different foreign applications and may…
Read MoreWhat is the difference between claiming foreign priority and claiming benefit of a U.S. provisional application?
Claiming foreign priority under 35 U.S.C. 119(a)-(d) and claiming benefit of a U.S. provisional application under 35 U.S.C. 119(e) are similar in some ways but have important differences: 1. Time limit:– Foreign priority: Must be claimed within 12 months (6 months for design applications)– Provisional: Must be claimed within 12 months 2. Effective filing date:–…
Read MoreWhat is the difference between claiming priority and claiming benefit in patent applications?
Claiming priority and claiming benefit are two different mechanisms in patent law, though both can affect the effective filing date of a patent application: Claiming Priority: Typically refers to claiming the right of priority to a foreign application under 35 U.S.C. 119(a)-(d) and (f) Also includes priority claims to provisional applications under 35 U.S.C. 119(e)…
Read MoreWhat happens if there are deficiencies in the priority papers?
If priority papers are found to be deficient in material respects, such as failure to include the correct certified copy, applicants should ensure that there is sufficient time to remedy any defects. The MPEP advises: “Frequently, priority papers are found to be deficient in material respects, such as for example, the failure to include the…
Read MoreWhat is the requirement for the same inventor or at least one common joint inventor in foreign priority claims?
For a valid foreign priority claim, the U.S. application must have at least one common inventor with the foreign application. This requirement ensures that the right of priority is only available to the actual inventors or their legal representatives. As stated in MPEP 213.02: “Consistent with longstanding Office policy, this is interpreted to mean that…
Read MoreWhat is the ‘certified copy’ of a foreign application?
A certified copy of a foreign application is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. According to the MPEP, “Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate…
Read MoreWhat is required when submitting a certified copy of a foreign application for priority purposes?
When submitting a certified copy of a foreign application for priority purposes, the following requirements apply: If the certified copy is not in English, a translation is required The translation must be of the certified copy of the foreign application as filed The translation must be filed together with a statement that the translation of…
Read MoreWhat happens if the certified copy is filed after the issue fee is paid?
If the certified copy of the foreign application is filed after the date the issue fee is paid but prior to the date of grant of the patent, it will be placed in the file record but there will be no review of the papers. The patent when published will not include the priority claim.…
Read MoreWhen is a Certificate of Correction appropriate for perfecting a foreign priority claim?
A Certificate of Correction is appropriate for perfecting a foreign priority claim in the following situations: When the priority claim was timely filed in the application but was not included on the patent because the requirement for a certified copy was not satisfied. In this case, a grantable petition under 37 CFR 1.55(f) or 37…
Read MoreHow does the AIA’s first-inventor-to-file (FITF) provision affect perfecting foreign priority claims?
The America Invents Act’s (AIA) first-inventor-to-file (FITF) provision has significant implications for perfecting foreign priority claims, especially in cases where the foreign application has a pre-March 16, 2013 filing date. Key points include: If a patent was examined under FITF provisions, but the foreign priority application has a pre-AIA filing date, perfecting the priority claim…
Read More