March 20 2013 Foreign Priority Documents Foreign Priority Documents PreAIA Old Certified Copy of Foreign Priority Document Needed to be filed before patent issued Filed after payment of issue fee pay additional fee ID: 645678
Download Presentation The PPT/PDF document "AIA Final Rules Submission of Certified ..." is the property of its rightful owner. Permission is granted to download and print the materials on this web site for personal, non-commercial use only, and to display it on your personal computer provided you do not modify the materials and that you retain all copyright notices contained in the materials. By downloading content from our website, you accept the terms of this agreement.
Slide1
AIA Final Rules
Submission of Certified Foreign Priority Documents and Translations Under the AIA
March 20, 2013Slide2
Foreign Priority DocumentsSlide3
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 officesSlide4
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.Slide5
Certified Foreign Priority Doc.- Old Timing
Application
Filed
Issue
Fee
Paid
Issued
Fee
Certified
Foreign
Priority
Doc.Slide6
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.Slide7
Certified Foreign Priority Doc.- AIA Timing
Application
Filed
Issue
Fee
Paid
Issued
Certified
Foreign
Priority
Doc.
4 Months
(or 16 from
priority date)Slide8
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, & WIPOSlide9
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. Slide10
Sure!
Certified Foreign Priority Doc.- AIA Timing
Application
Filed
Issued
4 Months
ADS
ADS
Filed
Priority
App.
Certified
Foreign
Priority
Doc.
Patent Document
Exchange
Please SendSlide11
Certified Foreign Priority Doc.- AIA Timing
Application
Filed
Issued
4 Months
ADS
ADS
Filed
Priority
App.
Certified
Foreign
Priority
Doc.
Patent Document
Exchange
If priority document NOT
exchanged, you must
submit
Huh?
ZZZZ…Slide12
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.Slide13
Certified Foreign Priority Doc.- AIA Timing
Application
Filed
Issued
4 Months
ADS
ADS
Filed
Priority
App.
Certified
Foreign
Priority
Doc.
Interim Copy
Oui, but need more time!
Send Certified Copy
Okay, send what you filed.Slide14
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 claimSlide15
Certified Foreign Priority Doc.- AIA Timing
Application
Filed
Issued
4 Months
ADS
ADS
Filed
Priority
App.
Certified
Foreign
Priority
Doc.
Fee
Petition
Issue
Fee
Paid
Processing Fee
Certificate
of Correction
OOPS!Slide16
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 accurateSlide17
More Information and Questions…
Contact: Chuck
Schmal
Phone: (317) 713-4954
Email: cschmal@uspatent.comSlide18
AIA Final Rules
Submission of Certified Foreign Priority Documents and Translations Under the AIA
March 20,
2013
©2013 Woodard,
Emhardt
, Moriarty,
McNett
& Henry LLP