- 1. AIA Final Rules Submission of Certified Foreign
PriorityDocuments and Translations Under the AIA March 20,
2013
2. Foreign Priority Documents 3. 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
additionalfee 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 4. Foreign Priority Documents-
Pre-AIA (Old) Translation of Non-English Foreign PriorityDocument
Generally, not required BUT, could be required by USPTO-
e.g.,intervening prior art, interference, etc. 5. Certified Foreign
Priority Doc.- Old TimingCertifiedForeignFeePriorityDoc.Filed Paid
IssuedApplication Issue Fee 6. Foreign Priority Documents- AIA
(New) Certified Copy of Foreign Priority DocumentNeeds to be filed
within the later of: 4 Months from Actual Filing Date OR 16 Months
from Foreign Filing Priority DateSee, 37 CFR 1.55(f)Note: For the
examples, the slides will generallyidentify the 4 Month deadline
for the sake ofbrevity. 7. Certified Foreign Priority Doc.- AIA
TimingCertifiedForeignPriorityDoc. Filed Paid Issued4 Months(or 16
frompriority date)ApplicationIssueFee 8. Foreign Priority
Documents- AIA (New) Exception 1- Do not need to submit
certifiedcopy within 4/16 month deadline Foreign Priority
Application in PDX ParticipatingPatent 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 9. Foreign Priority Documents- AIA (New) Foreign Priority
Application in PDXParticipating Patent Office Request normally not
required because USPTOwill 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 cant electronically retrieve
DesignPatent Applications PCT applications- limited receiving
offices Denmark, Finland, IB, and Sweden. 10. CertifiedCertified
Foreign Priority Doc.- AIA Timing Foreign Patent Document Sure!
PriorityPleaseExchange Doc. SendFiledFiled IssuedADS4
MonthsADSPriority ApplicationApp. 11. Certified Foreign Priority
Doc.- AIA Timing Huh?Certified Patent DocumentZZZZForeign Exchange
Priority Doc.FiledFiledIssued ADS4 Months ADSPriority
ApplicationApp. 12. Foreign Priority Documents- AIA (New) Exception
2- Do not need to submit certifiedcopy within 4/16 month deadline
File interim copy of original foreign applicationwithin 4/16 month
deadline period, AND File certified copy before patent is
granted.Note: To use interim copy exception, norequirement that
applicant is unable to obtain acertified copy. Submission Need to
clearly label Interim Copy Need Cover Sheet listing applicationno.,
country, filing date, and statement that thecopy filed is a true
copy of the originalapplication as filed in the foreign country. p.
29. 13. Certified Foreign Priority Doc.- AIA Timing Oui, butOkay,
send Certifiedneed more Interim Copy Sendwhat you
Foreigntime!filed.CertifiedCopy Priority Doc.Filed FiledIssuedADS4
MonthsADSPriority ApplicationApp. 14. 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 15. Certified Foreign Priority Doc.-
AIA Timing Certified OOPS!Foreign ProcessingFeePriority Fee
Petition Doc. FiledPaid IssuedFiled ADS 4 Months ADSPriority
ApplicationApp. Issue Fee 16. 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 ForeignPriority Documents Not in English
Interference Overcome date of reference cited by examiner Required
by examiner Requires statement that translation is accurate 17.
More Information and Questions Contact: Chuck SchmalPhone: (317)
713-4954Email: [email protected] 18. AIA Final Rules Submission
of Certified Foreign PriorityDocuments and Translations Under the
AIA March 20, 2013 2013 Woodard, Emhardt, Moriarty, McNett &
Henry LLP
