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
Fee
Filed
Paid
Issued
Issue
Fee
Application

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
Filed
Paid
Issued
Issue
Fee
4 Months
(or 16 from
priority date)
Application

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 can’t electronically retrieve Design Patent Applications
PCT applications- limited receiving offices
Denmark, Finland, IB, and Sweden.

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

11. Certified Foreign Priority Doc.- AIA Timing
Huh?
Certified
Foreign
Priority
Doc.
Patent Document
Exchange
ZZZZ…
Filed
Issued
Filed
ADS
4 Months
If priority document NOT
exchanged, you must
submit
Priority
App.
Application

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

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
OOPS!
Petition
Processing Fee
Fee
Issued
Filed
Paid
Filed
ADS
Issue
Fee
4 Months
Certificate
of Correction
Priority
App.
Application

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
Required by examiner
Requires statement that translation is accurate

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

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