3 Foreign Priority Documents- Pre-AIA (“Old”) Certified Copy of Foreign Priority DocumentNeeded to be filed before patent issuedFiled after payment of issue fee- pay additional feeNo foreign priority claim on face of patentRequired Certificate of Correction to show foreign priorityPatent Document Exchange (PDX) programUSPTO would automatically pull copy from participating foreign patent offices
4 Foreign Priority Documents- Pre-AIA (“Old”) Translation of Non-English Foreign Priority DocumentGenerally, not requiredBUT, could be required by USPTO- e.g., intervening prior art, interference, etc.
5 Certified Foreign Priority Doc.- Old Timing FeeFiledPaidIssuedIssueFeeApplication
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 OR16 Months from Foreign Filing Priority DateSee, 37 CFR 1.55(f)Note: For the examples, the slides will generallyidentify the 4 Month deadline for the sake of brevity.
8 Foreign Priority Documents- AIA (“New”) Exception 1- Do not need to submit certified copy within 4/16 month deadlineForeign Priority Application in PDX Participating Patent OfficeOriginally filed there, ORCopy of foreign priority document filed there; ANDUSPTO Receives Before Patent is GrantedCopy of the foreign priority application from the PDX Patent Office, ORCertified 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 OfficeRequest normally not required because USPTO will automatically request based on ADSException: 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 OfficeUSPTO can’t electronically retrieve Design Patent ApplicationsPCT applications- limited receiving officesDenmark, Finland, IB, and Sweden.
12 Foreign Priority Documents- AIA (“New”) Exception 2- Do not need to submit certified copy within 4/16 month deadlineFile “interim copy” of original foreign application within 4/16 month deadline period, ANDFile certified copy before patent is granted.Note: To use “interim copy” exception, no requirement that applicant is unable to obtain a certified copy.SubmissionNeed 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 Oui, but need more time!Okay, send what you filed.Interim CopySend Certified CopyFiledIssuedFiledADS4 MonthsPriorityApp.Application
14 Foreign Priority Documents- AIA (“New”) Late Submission of Certified Copy37 CFR 1.55(f)Requirements- before payment of Issue FeeCertified copy of foreign priority documentPetition- “good and sufficient cause”lower standard than “extraordinary situation”Fee under 37 CFR 1.17(g)- $200lower fee than $400 fee in 37 CFR 1.17(f)Requirements- after payment of Issue FeeSame as aboveProcessing fee under 37 CFR 1.17(i)Need Certificate of Correction to add prioritypatent issued without priority claim
16 Foreign Priority Documents- AIA (“New”) USPTO May Require Earlier SubmissionInterferenceOvercome date of reference cited by examiner“Deemed necessary” by examinerEnglish Language Translation of Foreign Priority Documents Not in EnglishRequired by examinerRequires statement that translation is accurate
17 More Information and Questions… Contact: Chuck SchmalPhone: (317)