Can I file a continuing application based on an international design application?
Yes, you can file a continuing application based on an international design application that designates the United States. The MPEP 2920 states: “An applicant may file a continuing application that claims priority to an international design application designating the United States in accordance with 35 U.S.C. 386(c).” This means that you can file continuation, divisional,…
Read MoreWhat are the consequences of not providing a certified translation for a foreign benefit application?
Failing to provide a certified translation for a foreign benefit application can have significant consequences. According to MPEP 2304.01(c): “Any showing of priority that relies on a non-English language application is prima facie insufficient if no certified translation of the application is on file.” This means that without a certified translation, the applicant may not…
Read MoreWhat precautions should be taken when claiming priority to a pre-AIA application?
When claiming priority to a pre-AIA application (filed before March 16, 2013) in a new application filed on or after March 16, 2013, special care must be taken. The MPEP 2159.03 advises: “For these reasons, when subject matter is claimed in an application filed on or after March 16, 2013 having priority to or the…
Read MoreHow can applicants claim foreign priority in international design applications designating the United States?
Applicants can claim foreign priority in international design applications designating the United States under certain conditions: The claim must be in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations. The priority claim can be made to a prior foreign application, international application (PCT) designating at…
Read MoreWhat is the time limit for correcting or adding a priority claim in a PCT application?
The time limit for correcting or adding a priority claim in a PCT application is generally 16 months from the priority date. However, there are some nuances to this rule. According to the MPEP: “The applicant may correct or add a priority claim by a notice submitted to the Receiving Office or the International Bureau…
Read MoreWhat is the right of priority in a U.S. national stage application?
A U.S. national stage application may be entitled to a right of priority under 35 U.S.C. 119(a) and 365(b) based on a prior foreign application or international application designating at least one country other than the United States. As stated in the MPEP, “Pursuant to 35 U.S.C. 365(b) a U.S. national stage application shall be…
Read MoreHow can I restore the right of priority in an international patent application?
To restore the right of priority in an international patent application, you need to submit a request under PCT Rule 26bis.3, 37 CFR 1.55, or 37 CFR 1.78. These requests are decided by the Director of International Patent Legal Administration. According to MPEP 1002.02(p): “Requests under PCT Rule 26bis.3, 37 CFR 1.55, or 37 CFR…
Read MoreWhat is the “relevant date” for determining prior art in PCT applications?
The “relevant date” for determining prior art in PCT applications is defined in MPEP 1878.01(a), which cites PCT Rule 64.1(b). The relevant date is generally: The international filing date of the application The filing date of an earlier application if priority is validly claimed and the international filing date is within the priority period The…
Read MoreHow is the priority claim handled in a U.S. national stage application?
The handling of priority claims in U.S. national stage applications involves specific procedures and requirements. The MPEP states, “To obtain priority in the U.S. national stage application to such applications, the priority must have been timely claimed in the international stage of the international application.” Priority claims are based on 35 U.S.C. 365(b) and must…
Read MoreWhat are the priority claim requirements for a national application under 35 U.S.C. 111(a) versus a national stage application under 35 U.S.C. 371?
The priority claim requirements differ as follows: For a national application under 35 U.S.C. 111(a): The claim for priority must be filed within the later of four months from the actual filing date or sixteen months from the prior foreign application filing date, as per 37 CFR 1.55(d). For a national stage application under 35…
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