(232) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-P-2012-0015]
RIN 0651-AC77
Changes To Implement the
First Inventor To File Provisions of the
Leahy-Smith America Invents Act; Correction
AGENCY: United States Patent and Trademark Office, Department of Commerce.
ACTION: Final rule; correction.
SUMMARY: The United States Patent and Trademark Office (Office) published
in the Federal Register of February 14, 2013, a final rule revising the
rules of practice in patent cases for consistency with, and to address the
examination issues raised by, the changes in the first inventor to file
provisions of the Leahy-Smith America Invents Act (AIA) (First Inventor to
File Final Rule). Due to a technical issue, the First Inventor to File
Final Rule as published in the Federal Register is missing text in the
provisions pertaining to claims for priority to a foreign application in an
application filed under the Patent Cooperation Treaty (PCT). This document
corrects the omission in the First Inventor to File Final Rule as published
in the Federal Register.
DATES: Effective March 16, 2013.
FOR FURTHER INFORMATION CONTACT: Susy Tsang-Foster, Legal Advisor
(telephone (571) 272-7711; electronic mail message (susy.tsang-
foster@uspto.gov)) or Linda S. Therkorn, Patent Examination Policy Advisor
(telephone (571) 272-7837; electronic mail message
(linda.therkorn@uspto.gov)), of the Office of the Deputy Commissioner for
Patent Examination Policy.
SUPPLEMENTARY INFORMATION: The Office published in the Federal Register
of February 14, 2013, a final rule revising the rules of practice in
patent cases for consistency with, and to address the examination issues
raised by, the changes in the first inventor to file provisions of the AIA.
See Changes To Implement the First Inventor To File Provisions of the
Leahy-Smith America Invents Act, 78 FR 11024 (Feb. 14, 2013). The First
Inventor to File Final Rule as published in the Federal Register is missing
text in the provisions pertaining to claims for priority to a foreign
application in an application filed under the PCT. See Changes To Implement
the First Inventor To File Provisions of the Leahy-Smith America Invents
Act, 78 FR 11053 (to be codified at 37 CFR 1.55(c)). Specifically, the
"371" in "35 U.S.C. 371" as it appears in the body of § 1.55(c) in the
electronic copy of the First Inventor to File Final Rule submitted to the
Office of the Federal Register contained a hyperlink, which is not printed
by the Office of the Federal Register. This document corrects the omission
of "371" in "35 U.S.C. 371" in the body of § 1.55(c) in the First Inventor
to File Final Rule as published in the Federal Register. In rule FR Doc.
2013-03453 published on February 14, 2013 (78 FR 11024), make the following
corrections:
§ 1.55 [Correction]
. 1. On page 11053, second column, through page 11055, first column,
revise amendatory instruction 6 and its amendatory text to read as
follows:
. 6. Section 1.55 is revised to read as follows:
§ 1.55 Claim for foreign priority.
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(a) In general. An applicant in a nonprovisional application may
claim priority to one or more prior foreign applications under the
conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, and
365(a) and (b) and this section.
(b) Time for filing subsequent application. The nonprovisional
application must be filed not later thantwelve months (six months in the
case of a design application) after the date on which the foreign
application was filed, or be entitled to claim the benefit under 35 U.S.C.
120, 121, or 365(c) of an application that was filed not later than
twelve months (six months in the case of a design application) after the
date on which the foreign application was filed. The twelve-month period is
subject to 35 U.S.C. 21(b) (and § 1.7(a)) and PCT Rule 80.5, and the six-
month period is subject to 35 U.S.C. 21(b) (and § 1.7(a)).
(c) Time for filing priority claim and certified copy of foreign
application in an application entering the national stage under 35
U.S.C. 371. In an international application entering the national stage
under 35 U.S.C. 371, the claim for priority must be made and a certified
copy of the foreign application must be filed within the time limit set
forth in the PCT and the Regulations under the PCT.
(d) Time for filing priority claim in an application filed under 35
U.S.C. 111(a). In an original application filed under 35 U.S.C. 111(a),
the claim for priority must be filed within the later of four months
from the actual filing date of the application or sixteen months from
the filing date of the prior foreign application. The claim for priority
must be presented in an application data sheet (§ 1.76(b)(6)), and must
identify the foreign application for which priority is claimed, by
specifying the application number, country (or intellectual property
authority), day, month, and year of its filing. The time period in this
paragraph does not apply in a design application.
(e) Delayed priority claim in an application filed under 35 U.S.C.
111(a). Unless such claim is accepted in accordance with the provisions
of this paragraph, any claim for priority under 35 U.S.C. 119(a)
through (d) or (f) or 365(a) in an original application filed under 35
U.S.C. 111(a) not presented in an application data sheet (§ 1.76(b)(6))
within the time period provided by paragraph (d) of this section is
considered to have been waived. If a claim for priority is presented after
the time period provided by paragraph (d) of this section, the claim may
be accepted if the priority claim was unintentionally delayed. A petition
to accept a delayed claim for priority under 35 U.S.C. 119(a) through (d)
or (f) or 365(a) must be accompanied by:
(1) The priority claim under 35 U.S.C. 119(a) through (d) or (f) or
365(a) in an application data sheet (§ 1.76(b)(6)), identifying the
foreign application for which priority is claimed, by specifying the
application number, country (or intellectual property authority), day,
month, and year of its filing, unless previously submitted;
(2) A certified copy of the foreign application if required by
paragraph (f) of this section, unless previously submitted;
(3) The surcharge set forth in § 1.17(t); and
(4) A statement that the entire delay between the date the priority
claim was due under paragraph (d) of this section and the date the
priority claim was filed was unintentional. The Director may require
additional information where there is a question whether the delay was
unintentional.
(f) Time for filing certified copy of foreign application in an
application filed under 35 U.S.C. 111(a). In an original application
filed under 35 U.S.C. 111(a), a certified copy of the foreign
application must be filed within the later of four months from the
actual filing date of the application or sixteen months from the filing
date of the prior foreign application, except as provided in paragraphs
(h) and (i) of this section. If a certified copy of the foreign
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application is not filed within the later of four months from the
actual filing date of the application or sixteen months from the filing
date of the prior foreign application, and the exceptions in paragraphs
(h) and (i) of this section are not applicable, the certified copy of
the foreign application must be accompanied by a petition including a
showing of good and sufficient cause for the delay and the petition fee
set forth in § 1.17(g). The time period in this paragraph does not
apply in a design application.
(g) Requirement for filing priority claim, certified copy of
foreign application, and translation in any application. (1) The claim
for priority and the certified copy of the foreign application
specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be
filed within the pendency of the application and before the patent is
granted. If the claim for priority or the certified copy of the foreign
application is filed after the date the issue fee is paid, it must also
be accompanied by the processing fee set forth in § 1.17(i), but
the patent will not include the priority claim unless corrected by a
certificate of correction under 35 U.S.C. 255 and § 1.323.
(2) The Office may require that the claim for priority and the
certified copy of the foreign application be filed earlier than otherwise
provided in this section:
(i) When the application is involved in an interference (see § 41.202
of this title) or derivation (see part 42 of this title)
proceeding;
(ii) When necessary to overcome the date of a reference relied upon
by the examiner; or
(iii) When deemed necessary by the examiner.
(3) An English language translation of a non-English language foreign
application is not required except:
(i) When the application is involved in an interference (see § 41.202
of this title) or derivation (see part 42 of this title) proceeding;
(ii) When necessary to overcome the date of a reference relied upon
by the examiner; or
(iii) When specifically required by the examiner.
(4) If an English language translation of a non-English language
foreign application is required, it must be filed together with a statement
that the translation of the certified copy is accurate.
(h) Foreign intellectual property office participating in a priority
document exchange agreement. The requirement in paragraphs (c), (f), and
(g) of this section for a certified copy of the foreign application to be
filed within the time limit set forth therein will be considered satisfied
if:
(1) The foreign application was filed in a foreign intellectual
property office participating with the Office in a bilateral or
multilateral priority document exchange agreement (participating
foreign intellectual property office), or a copy of the foreign
application was filed in an application subsequently filed in a
participating foreign intellectual property office that permits the
Office to obtain such a copy;
(2) The claim for priority is presented in an application data
sheet (§ 1.76(b)(6)), identifying the foreign application for which
priority is claimed, by specifying the application number, country (or
intellectual property authority), day, month, and year of its filing,
and the applicant provides the information necessary for the
participating foreign intellectual property office to provide the
Office with access to the foreign application;
(3) The copy of the foreign application is received by the Office
from the participating foreign intellectual property office, or a
certified copy of the foreign application is filed, within the period
specified in paragraph (g)(1) of this section; and
(4) The applicant files a request in a separate document that the
Office obtain a copy of the foreign application from a participating
intellectual property office that permits the Office to obtain such a
copy if the foreign application was not filed in a participating
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foreign intellectual property office but a copy of the foreign application
was filed in an application subsequently filed in a participating foreign
intellectual property office that permits the Office to obtain such a copy.
The request must identify the participating intellectual property office
and the subsequent application by the application number, day, month, and
year of its filing in which a copy of the foreign application was filed.
The request must be filed within the later of sixteen months from the
filing date of the prior foreign application or four months from the actual
filing date of an application under 35 U.S.C. 111(a), within four months
from the later of the date of commencement (§ 1.491(a)) or the date of the
initial submission under 35 U.S.C. 371 in an application entering the
national stage under 35 U.S.C. 371, or with a petition under paragraph (e)
of this section.
(i) Interim copy. The requirement in paragraph (f) of this section
for a certified copy of the foreign application to be filed within the
time limit set forth therein will be considered satisfied if:
(1) A copy of the original foreign application clearly labeled as
"Interim Copy," including the specification, and any drawings or
claims upon which it is based, is filed in the Office together with a
separate cover sheet identifying the foreign application by specifying
the application number, country (or intellectual property authority),
day, month, and year of its filing, and stating that the copy filed in
the Office is a true copy of the original application as filed in the
foreign country (or intellectual property authority);
(2) The copy of the foreign application and separate cover sheet is
filed within the later of sixteen months from the filing date of the
prior foreign application or four months from the actual filing date of
an application under 35 U.S.C. 111(a), or with a petition under
paragraph (e) of this section; and
(3) A certified copy of the foreign application is filed within the
period specified in paragraph (g)(1) of this section.
(j) Requirements for certain applications filed on or after March
16, 2013. If a nonprovisional application filed on or after March 16,
2013, claims priority to a foreign application filed prior to March 16,
2013, and also contains, or contained at any time, a claim to a claimed
invention that has an effective filing date on or after March 16, 2013,
the applicant must provide a statement to that effect within the later
of four months from the actual filing date of the nonprovisional
application, four months from the date of entry into the national stage
as set forth in § 1.491 in an international application, sixteen
months from the filing date of the prior-filed foreign application, or
the date that a first claim to a claimed invention that has an
effective filing date on or after March 16, 2013, is presented in the
nonprovisional application. An applicant is not required to provide
such a statement if the applicant reasonably believes on the basis of
information already known to the individuals designated in § 1.56(c)
that the nonprovisional application does not, and did not at any time,
contain a claim to a claimed invention that has an effective filing date
on or after March 16, 2013.
(k) Inventor's certificates. An applicant in a nonprovisional
application may under certain circumstances claim priority on the basis
of one or more applications for an inventor's certificate in a country
granting both inventor's certificates and patents. To claim the right
of priority on the basis of an application for an inventor's
certificate in such a country under 35 U.S.C. 119(d), the applicant
when submitting a claim for such right as specified in this section,
must include an affidavit or declaration. The affidavit or declaration
must include a specific statement that, upon an investigation, he or
she is satisfied that to the best of his or her knowledge, the
applicant, when filing the application for the inventor's certificate,
had the option to file an application for either a patent or an
inventor's certificate as to the subject matter of the identified claim
or claims forming the basis for the claim of priority.
(l) Time periods not extendable. The time periods set forth in this
section are not extendable.
March 7, 2013 TERESA STANEK REA
Acting Under Secretary of Commerce for
Intellectual Property and Acting Director of the
United States Patent and Trademark Office
[1389 OG 111]