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AIA Final Rules Submission of Certified Foreign Priority Documents and Translations Under the AIA March 20, 2013.

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Presentation on theme: "AIA Final Rules Submission of Certified Foreign Priority Documents and Translations Under the AIA March 20, 2013."— Presentation transcript:

1 AIA Final Rules Submission of Certified Foreign Priority Documents and Translations Under the AIA March 20, 2013

2 Foreign Priority Documents

3 Foreign Priority Documents- Pre-AIA (Old) Certified Copy of Foreign Priority Document –Needed to be filed before patent issued –Filed after payment of issue fee- pay additional fee No foreign priority claim on face of patent Required Certificate of Correction to show foreign priority –Patent Document Exchange (PDX) program USPTO would automatically pull copy from participating foreign patent offices

4 Foreign Priority Documents- Pre-AIA (Old) Translation of Non-English Foreign Priority Document –Generally, not required –BUT, could be required by USPTO- e.g., intervening prior art, interference, etc.

5 Certified Foreign Priority Doc.- Old Timing Application FiledIssue Fee Paid Issued Fee Certified Foreign Priority Doc.

6 Foreign Priority Documents- AIA (New) Certified Copy of Foreign Priority Document Needs to be filed within the later of: –4 Months from Actual Filing Date OR –16 Months from Foreign Filing Priority Date See, 37 CFR 1.55(f) Note: For the examples, the slides will generally identify the 4 Month deadline for the sake of brevity.

7 Certified Foreign Priority Doc.- AIA Timing Application FiledIssue Fee Paid Issued Certified Foreign Priority Doc. 4 Months (or 16 from priority date)

8 Foreign Priority Documents- AIA (New) Exception 1- Do not need to submit certified copy within 4/16 month deadline –Foreign Priority Application in PDX Participating Patent Office Originally filed there, OR Copy of foreign priority document filed there; AND –USPTO Receives Before Patent is Granted Copy of the foreign priority application from the PDX Patent Office, OR Certified copy of foreign priority document. Current PDX Offices- EPO, JPO, KIPO, & WIPO

9 Foreign Priority Documents- AIA (New) Foreign Priority Application in PDX Participating Patent Office –Request normally not required because USPTO will automatically request based on ADS –Exception: need separate Request to Retrieve (PTO/SB/38) where foreign priority application not originally filed in PDX participating Patent Office, but a copy was later filed in a PDX participating Patent Office USPTO cant electronically retrieve Design Patent Applications PCT applications- limited receiving offices –Denmark, Finland, IB, and Sweden.

10 Sure! Certified Foreign Priority Doc.- AIA Timing Application Filed Issued 4 Months ADS Filed Priority App. Certified Foreign Priority Doc. Patent Document Exchange Please Send

11 Certified Foreign Priority Doc.- AIA Timing Application Filed Issued 4 Months ADS Filed Priority App. Certified Foreign Priority Doc. Patent Document Exchange Huh? ZZZZ…

12 Foreign Priority Documents- AIA (New) Exception 2- Do not need to submit certified copy within 4/16 month deadline –File interim copy of original foreign application within 4/16 month deadline period, AND –File certified copy before patent is granted. Note: To use interim copy exception, no requirement that applicant is unable to obtain a certified copy. Submission –Need to clearly label Interim Copy –Need Cover Sheet listing application no., country, filing date, and statement that the copy filed is a true copy of the original application as filed in the foreign country. p. 29.

13 Certified Foreign Priority Doc.- AIA Timing Application Filed Issued 4 Months ADS Filed Priority App. Certified Foreign Priority Doc. Interim Copy Oui, but need more time! Send Certified Copy Okay, send what you filed.

14 Foreign Priority Documents- AIA (New) Late Submission of Certified Copy –37 CFR 1.55(f) Requirements- before payment of Issue Fee –Certified copy of foreign priority document –Petition- good and sufficient cause lower standard than extraordinary situation –Fee under 37 CFR 1.17(g)- $200 lower fee than $400 fee in 37 CFR 1.17(f) Requirements- after payment of Issue Fee –Same as above –Processing fee under 37 CFR 1.17(i) –Need Certificate of Correction to add priority patent issued without priority claim

15 Certified Foreign Priority Doc.- AIA Timing Application Filed Issued 4 Months ADS Filed Priority App. Certified Foreign Priority Doc. Fee Petition Issue Fee Paid Processing Fee OOPS!

16 Foreign Priority Documents- AIA (New) USPTO May Require Earlier Submission –Interference –Overcome date of reference cited by examiner –Deemed necessary by examiner English Language Translation of Foreign Priority Documents Not in English –Interference –Overcome date of reference cited by examiner –Required by examiner Requires statement that translation is accurate

17 More Information and Questions… Contact: Chuck Schmal Phone: (317)

18 AIA Final Rules Submission of Certified Foreign Priority Documents and Translations Under the AIA March 20, 2013 ©2013 Woodard, Emhardt, Moriarty, McNett & Henry LLP


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