AIA Final Rules Submission of Certified Foreign PriorityDocuments and Translations Under the AIA               March 20, 2...
Foreign Priority Documents
Foreign Priority Documents- Pre-AIA (“Old”)• Certified Copy of Foreign Priority Document  – Needed to be filed before pate...
Foreign Priority Documents- Pre-AIA (“Old”)• Translation of Non-English Foreign Priority  Document  – Generally, not requi...
Certified Foreign Priority Doc.- Old Timing          Certified          Foreign                                  Fee      ...
Foreign Priority Documents- AIA (“New”)• Certified Copy of Foreign Priority Document  Needs to be filed within the later o...
Certified Foreign Priority Doc.- AIA Timing              Certified              Foreign              Priority             ...
Foreign Priority Documents- AIA (“New”)• Exception 1- Do not need to submit certified  copy within 4/16 month deadline  – ...
Foreign Priority Documents- AIA (“New”)• Foreign Priority Application in PDX  Participating Patent Office  – Request norma...
Certified  Certified Foreign Priority Doc.- AIA Timing         Foreign                           Patent Document   Sure!  ...
Certified Foreign Priority Doc.- AIA Timing   Huh?                          Certified Patent Document                    Z...
Foreign Priority Documents- AIA (“New”)• Exception 2- Do not need to submit certified  copy within 4/16 month deadline  – ...
Certified Foreign Priority Doc.- AIA Timing   Oui, but            Okay, send                                              ...
Foreign Priority Documents- AIA (“New”)• Late Submission of Certified Copy  – 37 CFR 1.55(f)• Requirements- before payment...
Certified Foreign Priority Doc.- AIA Timing                                   Certified                   OOPS!           ...
Foreign Priority Documents- AIA (“New”)• USPTO May Require Earlier Submission  – Interference  – Overcome date of referenc...
More Information and Questions…• Contact: Chuck Schmal    Phone: (317) 713-4954    Email: cschmal@uspatent.com
AIA Final Rules Submission of Certified Foreign PriorityDocuments and Translations Under the AIA                     March...
Upcoming SlideShare
Loading in …5
×

AIA Foreign Priority Presentation Mar-20-2013

4,296 views

Published on

0 Comments
0 Likes
Statistics
Notes
  • Be the first to comment

  • Be the first to like this

No Downloads
Views
Total views
4,296
On SlideShare
0
From Embeds
0
Number of Embeds
1,570
Actions
Shares
0
Downloads
29
Comments
0
Likes
0
Embeds 0
No embeds

No notes for slide

AIA Foreign Priority Presentation Mar-20-2013

  1. 1. AIA Final Rules Submission of Certified Foreign PriorityDocuments and Translations Under the AIA March 20, 2013
  2. 2. Foreign Priority Documents
  3. 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 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
  4. 4. 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.
  5. 5. Certified Foreign Priority Doc.- Old Timing Certified Foreign Fee Priority Doc.Filed Paid IssuedApplication Issue Fee
  6. 6. 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.
  7. 7. Certified Foreign Priority Doc.- AIA Timing Certified Foreign Priority Doc. Filed Paid Issued 4 Months (or 16 from priority date)Application Issue Fee
  8. 8. 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
  9. 9. 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.
  10. 10. Certified Certified Foreign Priority Doc.- AIA Timing Foreign Patent Document Sure! Priority Please Exchange Doc. SendFiled Filed Issued ADS 4 Months ADSPriority ApplicationApp.
  11. 11. Certified Foreign Priority Doc.- AIA Timing Huh? Certified Patent Document ZZZZ… Foreign Exchange Priority Doc.Filed Filed Issued ADS 4 Months ADSPriority ApplicationApp.
  12. 12. 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.
  13. 13. Certified Foreign Priority Doc.- AIA Timing Oui, but Okay, send Certified need more Interim Copy Send what you Foreign time! filed. Certified Copy Priority Doc.Filed Filed Issued ADS 4 Months ADSPriority ApplicationApp.
  14. 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. 15. Certified Foreign Priority Doc.- AIA Timing Certified OOPS! Foreign Processing Fee Priority Fee Petition Doc. Filed Paid IssuedFiled ADS 4 Months ADSPriority ApplicationApp. Issue Fee
  16. 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 Foreign Priority Documents Not in English – Interference – Overcome date of reference cited by examiner – Required by examiner• Requires statement that translation is accurate
  17. 17. More Information and Questions…• Contact: Chuck Schmal Phone: (317) 713-4954 Email: cschmal@uspatent.com
  18. 18. AIA Final Rules Submission of Certified Foreign PriorityDocuments and Translations Under the AIA March 20, 2013 ©2013 Woodard, Emhardt, Moriarty, McNett & Henry LLP

×