What happens if I file a foreign priority claim after paying the issue fee but before the patent grant?
If you file a foreign priority claim after paying the issue fee but before the patent grant: The claim will be placed in the file record There may be no review of the papers The published patent will not include the priority claim To have the priority claim considered after publication, you will need to…
Read MoreCan a copy of the foreign patent satisfy the certified copy requirement?
No, a copy of the foreign patent as issued does not comply with the certified copy requirement. The MPEP states: “A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the…
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 MoreHow should the interim copy be filed via the USPTO patent electronic filing system?
When filing an interim copy via the USPTO patent electronic filing system: The main parts of the foreign priority application (Abstract, Drawings, Specification, Claims, etc.) along with the cover sheet may be filed as a single PDF image file. Select the document description ‘Interim Copy of the Foreign Priority Application’ when indexing. For plain text…
Read MoreWhat does an examiner check when reviewing a claim to foreign priority?
When reviewing a claim to foreign priority, the examiner generally checks the following: That the papers contain no obvious formal defects That the papers correspond in number, date and country to the application identified in the application data sheet For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under…
Read MoreHow does an examiner handle an intervening reference when a foreign priority claim is present?
When an examiner finds an intervening reference (a reference with an effective date between the foreign filing date and the U.S. filing date) and a foreign priority claim is present, the examiner follows these steps: If the certified copy of the priority papers has not been filed, the examiner rejects the claims that may be…
Read MoreWhen does an examiner consider the merits of a foreign priority claim?
An examiner considers the merits of a foreign priority claim in the following situations: When a reference is found with an effective date between the foreign filing date and the U.S. filing date When determining if a reference’s prior art date falls within the grace period for the application under examination When an interference situation…
Read MoreCan 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)…
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