What if my foreign application was not filed in a participating PDX office?

Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-09

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

If your foreign application was not filed in a participating Priority Document Exchange (PDX) office, you may still be able to use the PDX program under certain conditions. According to 37 CFR 1.55(i)(4):

If the foreign application was not filed in a participating foreign intellectual property office, but a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy, the applicant must also file a request in a separate document that the Office obtain a copy of the foreign application from the participating intellectual property office.

To make this request, you can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)). The request must identify the participating office and the subsequent application by application number, country, and filing date.

Topics: MPEP 200 – Types and Status of Application; Benefit and Priority Patent Law Patent Procedure
Tags: Disclosure Individuals, Disclosure Timing, Materiality Standard, Prima Facie Case