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AIA Final Rules
Submission of Certified Foreign Priority Documents and Translations Under the AIA
March 20, 2013
Foreign Priority Documents
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 offices
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.
Certified Foreign Priority Doc.- Old Timing
Application
Filed
IssueFee
Paid Issued
Fee
CertifiedForeignPriorityDoc.
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.
Certified Foreign Priority Doc.- AIA Timing
Application
Filed
IssueFee
Paid Issued
CertifiedForeignPriorityDoc.
4 Months(or 16 from priority date)
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, & WIPO
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.
Sure!
Certified Foreign Priority Doc.- AIA Timing
Application
Filed Issued
4 Months
ADSADS
ADS
Filed
Priority App.
CertifiedForeignPriorityDoc.
Patent DocumentExchangePlease
Send
Certified Foreign Priority Doc.- AIA Timing
Application
Filed Issued
4 Months
ADSADS
ADS
Filed
Priority App.
CertifiedForeignPriorityDoc.
Patent DocumentExchange
If priority document NOT exchanged, you must
submit
Huh?ZZZZ…
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.
Certified Foreign Priority Doc.- AIA Timing
Application
Filed Issued
4 Months
ADSADS
ADS
Filed
Priority App.
CertifiedForeignPriorityDoc.
Interim CopyOui, but
need more time!
Send Certified
Copy
Okay, send what you
filed.
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 claim
Certified Foreign Priority Doc.- AIA Timing
Application
Filed Issued
4 Months
ADSADS
ADS
Filed
Priority App.
CertifiedForeignPriorityDoc.Fee Petition
IssueFee
Paid
Processing Fee
Certificateof Correction
OOPS!
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 accurate
More Information and Questions…
• Contact: Chuck Schmal
Phone: (317) 713-4954Email: [email protected]
AIA Final Rules
Submission of Certified Foreign Priority Documents and Translations Under the AIA
March 20, 2013
©2013 Woodard, Emhardt, Moriarty, McNett & Henry LLP