What are the consequences of failing to timely submit a reference to a prior-filed application for a benefit claim under 35 U.S.C. 120 or 119(e)?

Failure to timely submit the reference to the prior-filed application within the time periods specified in 37 CFR 1.78 is considered a waiver of any benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application. See 37 CFR 1.78(d)(3)(iii). The time periods are not extendable. If the reference to the prior-filed…

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When is the latest a certified copy can be filed for the patent to include the foreign priority claim without a certificate of correction?

The certified copy of the foreign application must be filed before the patent is granted. If the certified copy is filed after payment of the issue fee but prior to the date of grant, the priority claim will be placed in the file record but the patent will not include the priority claim unless corrected…

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What can I do if the USPTO refuses to record a document I believe should be recorded?

If the USPTO returns a document unrecorded and you believe it represents an unusual case that justifies recordation, you have the option to petition for its recordation. The MPEP provides the following guidance: “Any document returned unrecorded, which the sender nevertheless believes represents an unusual case which justifies recordation, may be submitted to the Office…

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How can I petition for my correspondence to be considered filed on a particular date due to a Priority Mail Express® interruption?

You can petition the USPTO Director to consider correspondence as filed on a particular date if it was returned or refused by the USPS due to a Priority Mail Express® interruption or emergency. The petition process is outlined in 37 CFR 1.10(g) and (h): File the petition promptly after becoming aware of the return or…

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What should I do if there’s a discrepancy between the USPTO filing date and the Priority Mail Express® “date accepted”?

If there’s a discrepancy between the filing date accorded by the USPTO and the “date accepted” on the Priority Mail Express® mailing label, you can file a petition under 37 CFR 1.10(c). MPEP 513 states that such a petition should: Be filed promptly after becoming aware of the discrepancy Include evidence that the Priority Mail…

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