1 / 21

Claim for Foreign Priority

Implementing First-Inventor-to-File Provisions of the AIA By: Scott D. Malpede, Seth Boeshore and Chitra Kalyanaraman USPTO Rules Effective March 16, 2013. Claim for Foreign Priority. Domestic nonprovisional applications— Must be filed within 12 months of foreign filing

fox
Download Presentation

Claim for Foreign Priority

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

E N D

Presentation Transcript

  1. ImplementingFirst-Inventor-to-File Provisions of the AIABy:Scott D. Malpede, Seth Boeshore and Chitra KalyanaramanUSPTO Rules Effective March 16, 2013

  2. Claim for Foreign Priority Domestic nonprovisional applications— • Must be filed within 12 months of foreign filing • Priority claim, including submission of certified copy of foreign application, must be made by later of: • four months of domestic filing date, or • sixteen months from foreign filing date PCT applications—current rules do not change • PCT regulations require priority claim and certified copy of foreign application in international application within 16 months of foreign filing 37 C.F.R. § 1.55(b)

  3. Delayed Claim for Foreign Priority May be accepted if Applicant files petition that includes: • application data sheet containing priority claim • certified copy of foreign application • petition fee • statement that entire delay was unintentional Priority claims that do not comply will be waived 37 C.F.R. § 1.55(e)

  4. Late Filing of Certified Foreign Application May be accepted if Applicant files petition that includes: • certified copy • showing of good and sufficient cause for delay • petition fee 37 C.F.R. § 1.55(f)

  5. Claim for Foreign Priority Issue date is absolute deadline for perfecting claim to foreign priority Patent will not be printed with priority claim if perfected after payment of issue fee • Certificate of correction available 37 C.F.R. § 1.55(g)(1)

  6. Claim for Foreign Priority—Early Deadlines Applicant may be required to perfect foreign priority claim earlier than normal deadline if: • application is in interference or derivation proceeding, • priority date needed to overcome art rejection, or • specifically requested by Examiner English translation may be required 37 C.F.R. § 1.55(g)(2)-(3)

  7. Claim for Foreign Priority—Document Exchange PTO will obtain certified copy of foreign patent application from foreign patent office if: • foreign patent office participates in document exchange agreement • priority claim includes information necessary for PTO to access foreign application • If foreign application initially filed in non-participating country but subsequently filed in participating country, Applicant may file request that PTO obtain certified copy from participating country’s patent office Absolute deadline for certified copy still applies—PTO must receive certified copy from foreign patent office during pendency of application 37 C.F.R. § 1.55(h)

  8. Claim for Foreign Priority—Interim Copy PTO will accept uncertified copy of foreign application during application pendency if: • copy marked “Interim Copy” is timely filed, including statement that copy is a true copy • certified copy is filed prior to date of issuance 37 C.F.R. § 1.55(i)

  9. Claim for Foreign Priority—Statement in Transitional Application When nonprovisional application: • is filed on or after March 16, 2013, and • has foreign priority date before March 16, 2013, but • includes claim with effective filing date on or after March 16, 2013, Applicant must file statement notifying PTO of these facts Statement due by later of: • four months of domestic filing date, • sixteen months from foreign filing date, or • presentation of claim (if newly added) 37 C.F.R. § 1.55(j)

  10. Claiming Benefit of Earlier Filing Date Nonprovisional application can claim benefit of: • earlier provisional application, if nonprovisional filed within one year of provisional • earlier nonprovisional or international application, if filed during pendency of earlier application 37 C.F.R. § 1.78(a), (c)

  11. Claiming Benefit of Earlier Filing Date Benefit claim requires that application: • name at least one inventor of earlier application • contain reference to earlier application Reference in nonprovisional must be in ADS If reference not included in filed application, it must be added during application’s pendency and by later of: • four months of filing date, or • sixteen months from earlier application’s filing date 37 C.F.R. § 1.78 (a), (c)

  12. Claiming Benefit of Earlier Filing Date—DelayedReference Delayed benefit claim may be accepted if Applicant files petition that includes: • amendment containing reference to earlier application • petition fee, and • statement that entire delay after due date was unintentional Late benefit claims that do not comply will be waived 37 C.F.R. § 1.78(b), (d)

  13. Claiming Benefit of Earlier Filing Date—Statement in Transitional Application When nonprovisional application: • is filed on or after March 16, 2013, and • claims benefit of application filed prior to March 16, 2013, but • has claim with effective filing date on or after March 16, 2013 Applicant must file statement notifying PTO of these facts Statement must be filed by later of: • four months from filing date, • sixteen months from filing date of earlier application, or • presentation of claim (if newly added) 37 C.F.R. § 1.78(a)(6), (c)(6)

  14. Nature of Examination—Common Ownership of Claimed Subject Matter and Asserted Prior Art AIA-examined applications—earlier-filed U.S. patent or application can be removed from prior art (under 35 U.S.C. § 102(b)(2)(C)) if, as of effective filing date, subject matter disclosed in reference and subject matter claimed were: • ownedby same person (or obliged to be assigned to same person), or • developed under joint research agreement, so long asparties to agreement are named in application Pre-AIA-examined applications—§ 102(e)-(g) prior art can be removed, for purposes of § 103(c), by making either above showing, but with reference to date of claimed invention 37 C.F.R. § 1.104(c)

  15. Effective Filing Date of Claimed Invention Under AIA Effective filing date is earlier of: • actual filing date of application containing claim, and • filing date of earliest priority application that discloses subject matter of claim Effective filing date in a reissue patent or application is determined by deeming the claim to the invention to have been contained in the patent for which reissue is sought 37 C.F.R. § 1.109

  16. Inventorship and Ownership of Subject Matter of Individual Claims When joint inventors are named in application, PTO can require Applicant to identify inventorship and ownership of each claim in application, as of effective filing date PTO can further require Applicant to identify invention dates of each claim 37 C.F.R. § 1.110

  17. Affidavit of Attribution or Prior Public Disclosure Under AIA Applications examined under first-inventor-to-file rules are provided grace period of one year precedingeffective filing date • Certain disclosures that occur during grace period can be disqualified as prior art Disclosures made more than one year before effective filing date are not eligible for disqualification 37 C.F.R. § 1.130

  18. Affidavit of Attribution Grace period disclosure can be disqualified as prior art if it is attributed to inventor Affidavit of attribution must establish that grace period disclosure was made by: • inventor/joint inventor, or • someone who obtained subject matter of grace period disclosure from inventor/joint inventor 37 C.F.R. § 1.130(a)

  19. Affidavit of Prior Public Disclosure Grace period disclosure can be disqualified if it occurred after earlier public disclosure attributable to inventor Affidavit of public disclosure must establish that: • public disclosure was made prior to date of grace period disclosure • earlier public disclosure contained same subject matter as grace period disclosure • earlier public disclosure was made by • inventor/joint inventor, or • someone who obtained subject matter disclosed from inventor/joint inventor 37 C.F.R. § 1.130(b)

  20. Other Changes Rule 9 (definitions)—revised to incorporate terms used by AIA Rule 117 (fees)—revised to add new fees Rule 131 (disqualification of prior art by prior invention)—revised to include old Rule 130 (disqualification of prior art by common ownership) for pre-AIA-examined applications Rules 293-297 (statutory invention registration)—removed to comply with AIA’s elimination of invention registrations Rule 321 (filing of terminal disclaimers)—revised to be consistent with changes to §§ 102 and 103 with respect to joint research activities 37 C.F.R. §§ 9, 17, 131, 293-297, 321

  21. NEW YORK 1290 Avenue of the Americas New York, NY 10104-3800 212.218.2100 WASHINGTON 975 F Street, NW Washington, DC 20004-1405 202.530.1010 CALIFORNIA 650 Town Center Drive, Suite 1600 Costa Mesa, CA 92626-7130 714.540.8700

More Related