215.01 Electronic Priority Document Exchange [R-01.2024]

Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices. The Office treats a proper priority claim under 37 CFR 1.55 to an application filed in a participating foreign intellectual property office as a request that the Office obtain a copy of the foreign application from the participating intellectual property office. A separate written request may be used when the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating foreign intellectual property office after the foreign priority has been claimed, so long as the time period set in 37 CFR 1.55 has not expired. A separate written request is required in the situation where the foreign application is not originally filed in a participating office, but a certified copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office. Applicants can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.

An improper, incomplete, or inconsistent citation of a foreign priority application and/or its filing date will result in a delay or prevent retrieval under the Priority Document Exchange program. In particular, any foreign priority claim that is incomplete will prevent successful electronic retrieval of the priority application. Applicants are strongly encouraged to cite the foreign application using an acceptable format (see MPEP § 214.04) and use proper and consistent citation format throughout the U.S. application.

In general, an attempt to retrieve an eligible foreign application to which priority is claimed in a U.S. application will be made by the USPTO when the application is docketed to an examiner. In any case the USPTO will not attempt electronic retrieval until the Office of Patent Application Processing has completed its review of the application. Applicants are encouraged to check Patent Center determine whether the foreign priority application has been successfully retrieved. A successful request to retrieve an electronic foreign priority application takes approximately 1 week to complete.

The Office will not send a notice setting a time period for filing a certified copy of the priority document. Upon receipt of a Notice of Allowance, applicants should check to see whether the Office has received a copy of the foreign application under the priority document exchange program because successful retrieval of priority documents cannot be guaranteed. To be entitled to priority, the Office must receive a copy of the foreign application from the participating foreign intellectual property office within the pendency of the application and before the patent is granted, or receive a paper certified copy of the foreign application during that time period. If a certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323. See MPEP § 215.02(a) for information pertaining to meeting the timeliness requirement for filing a certified copy by using PDX.

The USPTO will attempt retrieval of foreign applications to which priority is claimed in a U.S. design application where possible. The Spanish Patent and Trademark Office deposits certain ES industrial design applications for access by the USPTO via the WIPO DAS. Therefore, when the applicant claims foreign priority to an ES industrial design application and provides the WIPO DAS access code, the USPTO will attempt retrieval via the WIPO DAS. The USPTO will automatically attempt retrieval of international applications filed under the PCT where the receiving office is RO/AU, RO/DK, RO/ES, RO/FI, RO/IB, RO/MA or RO/SE and the applicant has provided the required WIPO DAS access code for the international application to which foreign priority is claimed.

The Office website provides additional information concerning the priority document exchange program (www.uspto.gov/PatentsPDX). This information includes the intellectual property offices that participate in the priority document exchange program, as well as the information necessary for each participating foreign intellectual property office to provide the Office with access to the foreign application.

215.02 Time For Filing Certified Copy – Application Filed On or After March 16, 2013 [R-01.2024]

[Editor Note: See MPEP § 215.03 for information regarding the time for filing a certified copy in an application filed before March 16, 2013.]

For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) sets forth the time period for filing a certified copy of the foreign application. The time period in 37 CFR 1.55(f)(1) does not apply in design applications. 37 CFR 1.55(f)(1) requires that a certified copy of the foreign application 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 with three exceptions. For international applications entering the national stage under 35 U.S.C. 371, 37 CFR 1.55(f)(2) sets forth the time period for filing a certified copy of the foreign application. 37 CFR 1.55(f)(2) requires a certified copy of the foreign application be filed within the time limit set forth in the PCT and the Regulations under the PCT, and if a certified copy is not filed during international stage in an international application in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, of sixteen months from the filing date of the prior foreign application with three exceptions. As provided in 37 CFR 1.55(h), (i), or (j), the time period requirement in 37 CFR 1.55(f)(1) or (f)(2) does not apply if:

• (1) a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c) or 386(c) contains a certified copy of the foreign application and such prior-filed nonprovisional application is identified as containing a certified copy of the foreign application, or in the case of a reissue application, if the patent for which reissue is sought satisfies the requirement for a certified copy and such patent is identified as containing the certified copy (see 37 CFR 1.55(h) and MPEP § 215, subsection III);
• (2) the priority application was filed in a participating foreign intellectual property office, or if 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, and the Office either receives a copy of the foreign application from the participating foreign intellectual property office or a certified copy of the foreign application during the pendency of the application and before the patent is granted (see 37 CFR 1.55(i) and MPEP § 215.02(a)); or
• (3) the applicant provides an interim copy of the original foreign application 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 files a certified copy of the foreign application within the pendency of the application and before the patent is granted (see 37 CFR 1.55(j) and MPEP § 215.02(b)).

Because U.S. patent application publications (as well as U.S. patents) will have a prior art effect as of the earliest priority date (for subject matter disclosed in the priority application) with respect to applications subject to AIA 35 U.S.C. 102, the Office needs to ensure that it has a copy of the priority application by the time of publication. The time period of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application is consistent with the international norm for when the certified copy of the foreign application needs to be filed in an application. See PCT Rule 17.1(a).

If a certified copy of the foreign application is not filed within the time period specified in 37 CFR 1.55(f)(1) or (f)(2), as appropriate, and the exceptions in 37 CFR 1.55(h), (i), and (j) 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 37 CFR 1.17(g). This provision for the belated filing of a certified copy of the foreign application obviates the need for a petition under 37 CFR 1.183 to waive or suspend a requirement of the regulations in such a situation. 37 CFR 1.55(f) provides a lower standard (good and sufficient cause versus an extraordinary situation) and lower fee (petition fee set forth in 37 CFR 1.17(g) versus the petition fee set forth in 37 CFR 1.17(f)) than petitions under 37 CFR 1.183.

See MPEP § 213.06 for additional information regarding filing a certified copy in a national stage application (35 U.S.C. 371).

215.03 Time For Filing Certified Copy – Application Filed Before March 16, 2013 [R-08.2017]

[Editor Note: See MPEP § 215.02 for information regarding the time for filing a certified copy in an application filed on or after March 16, 2013.]

35 U.S.C. 119(b)(3) authorizes the Office to require the applicant to furnish a certified copy of priority papers. Pursuant to 37 CFR 1.55, applicants are required to submit the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 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, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323. See 37 CFR 1.55(g)(1). Certification by the authority empowered under a bilateral or multilateral treaty to receive applications which give rise to a right of priority under Article 4A(2) of the Paris Convention will be deemed to satisfy the certification requirement. See MPEP § 214.01 for the time period for claiming priority to a foreign application.

If a claim for foreign priority has been made, the latest time at which the certified copy of the foreign application may be filed in order for the patent to include the priority claim without the need for a certificate of correction is the date of the payment of the issue fee. Under certain circumstances, the certified copy may be required at an earlier date. These circumstances are specified in 37 CFR 1.55(g)(2) as:

• (A) when the application is involved in an interference or derivation proceeding;
• (B) when necessary to overcome the date of a reference relied on by the examiner; and
• (C) when specifically required by the examiner.

The claim for foreign 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 before the patent is granted. If the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the priority claim or certified copy will be placed in the file record but there will be no review of the papers and the patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the priority claim or certified copy considered after publication of the patent. In addition, for original applications filed under 35 U.S.C. 111(a) (other than a design application), where the priority claim was not timely filed, a grantable petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55(e) and the petition fee must also be filed with the certificate of correction. Furthermore, where the priority claim was timely filed but was not included on the patent because the certified copy was not submitted, a grantable petition under 37 CFR 1.55(f) and the petition fee or, in the case of a design application, a grantable petition under 37 CFR 1.55(g) and the petition fee must also be filed with the certificate of correction unless the exception in 37 CFR 1.55(h) is applicable. See MPEP § 216.01.

In view of the shortened periods for prosecution leading to allowances, it is recommended that priority papers be filed as early as possible. Although 37 CFR 1.55(g)(1) permits the filing of priority papers up to and including the date for payment of the issue fee, it is advisable that such papers be filed promptly after filing the application. Frequently, priority papers are found to be deficient in material respects, such as for example, the failure to include the correct certified copy, and applicants should ensure that there is sufficient time to remedy any defects. For applications filed prior to September 16, 2012, where the priority claim is presented in the oath or declaration, a new oath or declaration may be necessary where the original oath or declaration omits the reference to the foreign filing date for which the benefit is claimed. The early filing of priority papers would thus be advantageous to applicants in that it would afford time to explain any inconsistencies that exist or to supply any additional documents that may be necessary. It is important to note that for applications filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet (37 CFR 1.76(b)(6)).

It is suggested that a notation of the application number of the corresponding U.S. application be placed on the priority papers when such papers are not submitted via a priority document exchange program. Such notation should be placed directly on the priority papers themselves even where a cover letter is attached bearing the U.S. application data. Experience indicates that cover letters and priority papers occasionally become separated, and without the suggested notations on the priority papers, correlating them with the corresponding U.S. application becomes exceedingly difficult, frequently resulting in severe problems for both the Office and applicant. Adherence to the foregoing suggestion for making a notation on the priority document of the U.S. application data will result in a substantial lessening of the problem.