| Benefit Claims, Priority, Electronic Exchange of Documents |
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(217) DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-P-2015-0049]
Change in Practice Regarding Correction of
Foreign Priority Claims
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: The American Inventors Protection Act of 1999 (AIPA) provided
for publication of patent applications at eighteen months from the
earliest filing date for which a benefit is claimed. Thus, the patent
laws and regulations require that foreign priority or domestic benefit
claims, specifying the application number, country (or intellectual
property authority), and filing date of any foreign application for
which priority is claimed and the application number of any domestic
application for which benefit is claimed, be submitted in a timely
manner to allow for publication at eighteen months from the earliest
filing date for which a benefit is claimed. It has been United States
Patent and Trademark Office (USPTO) practice to require that any
correction of the application number in a domestic benefit claim after
the time period for filing a priority or benefit claim be via a
petition to accept an unintentionally delayed benefit claim, but to
permit correction of the application number in a foreign priority claim
after the time period for filing a priority or benefit claim without
such a petition. This dissimilar treatment of the correction of foreign
priority claims and domestic benefit claims results in the publication
of a corrected patent application publication reflecting the accurate
domestic benefit claim information whenever an applicant corrects the
application number in a domestic benefit claim in a pending
application, but not whenever an applicant corrects the application
number of the foreign application in a foreign priority claim. The
rationale for the practice of permitting correction of the application
number in a foreign priority claim without a petition was because the
filing date of a prior foreign patent application did not affect the
effective prior art date of a U.S. patent application publication and
because the USPTO schedules publication of an application with the
filing date provided by applicant in a foreign priority claim. The
Leahy-Smith America Invents Act (AIA), however, now provides that the
filing date of an earlier foreign patent application may now be the
effective prior art date for subject matter disclosed in a U.S. patent
or a U.S. patent application publication. Therefore, U.S. patent
application publications should reflect accurate foreign priority
information to minimize the burden on examiners and members of the
public in assessing the effective prior art date for subject matter
disclosed in such U.S. patent application publications. The USPTO will
thus now require that any correction of the identification of the
foreign application (by application number, country (or intellectual
property authority), and filing date) in a foreign priority claim after
the time period for filing a priority or benefit claim be via a
petition to accept an unintentionally delayed priority claim, and once
the petition is granted in a pending application, will now publish a
corrected patent application publication reflecting the accurate
foreign priority claim information. Requiring a petition and publishing
a corrected patent application publication whenever an applicant
corrects the application number in a foreign priority claim or a
domestic benefit claim will provide for common treatment of the
correction of the identification of a foreign or domestic application
in a priority or benefit claim. The publication of a corrected patent
application publication by the USPTO will result in corrected patent
application publications with accurate foreign priority information
which will benefit examiners, applicants and members of the public in
assessing the effective prior art date for subject matter disclosed in
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US PATENT AND TRADEMARK OFFICE |
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a U.S. patent application publication.
DATES: Effective Date: The change in this notice takes effect on
November 5, 2015. Any corrections to the foreign application number in
a foreign priority claim that were previously accepted are not affected
by this change in practice.
FOR FURTHER INFORMATION CONTACT: Eugenia A. Jones, Senior Legal
Advisor, by telephone at (571) 272-7727, or Erin M. Harriman, Legal
Advisor, by telephone (571) 272-7747, Office of Patent Legal
Administration, Office of the Deputy Commissioner for Patent
Examination Policy, or by mail addressed to: Mail Stop Comments--
Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-
1450, marked to the attention of Eugenia A. Jones.
SUPPLEMENTARY INFORMATION: Background: In view of the AIPA, foreign
priority or domestic benefit claims must be submitted in a timely
manner to allow for publication of patent applications at eighteen
months from the earliest filing date for which a benefit is claimed.
See 35 U.S.C. 122(b). The requirements for making a domestic benefit
claim are set forth in 37 CFR 1.78 and the requirements for making a
foreign priority claim are set forth in 37 CFR 1.55. As provided in 37
CFR 1.55 and 1.78, the claim for priority or benefit 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
application (hereinafter referred to as the 4/16 month time period) in
a patent application filed under 35 U.S.C. 111(a). Note that the 4/16
month time period does not apply to an application for a design patent
or an application filed before November 29, 2000. A claim for foreign
priority must identify the foreign application by specifying the
application number, country (or intellectual property authority), and
the filing date (day, month, and year) of the foreign application. See
37 CFR 1.55(d).
It has been USPTO practice to require that any correction of the
application number in a domestic benefit claim after the 4/16 month
time period be via a petition to accept an unintentionally delayed
benefit claim, but to permit correction of the application number in a
foreign priority claim after the 4/16 month time period without such a
petition (discussed in the Eighteen-Month Publication Questions and
Answers on the USPTO Web site). This dissimilar treatment of the
correction of foreign priority claims and domestic benefit claims
results in the publication of a corrected patent application
publication reflecting the accurate domestic benefit claim information
whenever an applicant corrects the application number in a domestic
benefit claim in a pending application, but not whenever an applicant
corrects the application number of the foreign application in a foreign
priority claim. The rationale for this practice was because the USPTO
was able to schedule the application for publication with the filing
date of the foreign application provided by applicant and the prior art
date under pre-AIA 35 U.S.C. 102(e) of the publication was not
affected. See the Patent FAQs Web page available at
http://www.uspto.gov/help/patent-help.
Under the first inventor to file provisions of the AIA, a U.S.
patent or patent application publication may be effective as prior art
as of the filing date of an earlier foreign application. See AIA 35
U.S.C. 102(d) and the Manual of Patent Examining Procedure (MPEP) (9th
Ed. 2014), Section 2154.01(b). Therefore, the rationale for not
requiring a petition to correct an error in the application number of a
foreign priority claim is no longer appropriate. In view of the first
inventor to file provisions of the AIA, U.S. patent application
publications should reflect accurate foreign priority information to
minimize the burden on examiners and members of the public in assessing
the effective prior art date for subject matter disclosed in such U.S.
patent application publications.
Change in Practice: The USPTO will now require compliance with all
the requirements of 37 CFR 1.55 and thus require a petition to accept
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an unintentionally delayed claim for foreign priority under 37 CFR
1.55(e) in order to correct any error in a foreign priority claim if
the correction is being made after the 4/16 month time period. This is
consistent with the practice for correcting any error in a domestic
benefit claim under 37 CFR 1.78 if the correction is being made after
the 4/16 month time period and will result in a corrected patent
application publication with the accurate foreign priority information
being published by the USPTO for a pending application.
Requiring compliance with all the requirements of 37 CFR 1.55 will
create consistency between the practices under 37 CFR 1.55 and 1.78 and
will result in corrected patent application publications with accurate
foreign priority information being published by the USPTO. A U.S.
patent application publication which claims priority to a foreign
application that identifies the correct foreign application number,
country (or intellectual property authority), and date of filing will
help ensure that proper examination of patent applications being
examined under the first inventor to file provisions of the AIA will
occur. Identification of the correct foreign priority information on
U.S. patent application publications will also minimize the burden on
examiners and members of the public in obtaining a copy of the correct
foreign priority document in the event that a copy is not available in
the application file of the reference. This change in practice will
benefit examiners, applicants, and members of the public by reducing
any uncertainty caused by the dissimilar treatment of the correction of
foreign priority claims and domestic benefit claims and by ensuring
that a corrected U.S. patent application publication reflecting
accurate foreign priority information will be published by the USPTO
enabling accurate assessment of the effective prior art date for
subject matter disclosed in U.S. patent application publications.
The Patent FAQs will be modified to reflect that a petition under
37 CFR 1.55(e), including the petition fee, will be required to correct
any error in a foreign priority claim after the 4/16 month period of 37
CFR 1.55(d).
September 26, 2015 MICHELLE K. LEE
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
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