215.02    Time For Filing Certified Copy – Application Filed On or After March 16, 2013 [R-07.2015]

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

37 C.F.R. 1.55  Claim for foreign priority

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  • (f) Time for filing certified copy of foreign application—
    • (1) Application under 35 U.S.C. 111(a). A certified copy of the foreign application 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 foreign application, in an original application under 35 U.S.C. 111(a)  filed on or after March 16, 2013, except as provided in paragraphs (h), (i), and (j) of this section. The time period in this paragraph does not apply in a design application.
    • (2) Application under 35 U.S.C. 371. A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371. If a certified copy of the foreign application is not filed during the 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)  (§ 1.491(a) ), four months from the date of the initial submission under 35 U.S.C. 371  to enter the national stage, or sixteen months from the filing date of the prior foreign application, except as provided in paragraphs (h), (i), and (j) of this section.
    • (3) If a certified copy of the foreign application is not filed within the time period specified [in] paragraph (f)(1) of this section in an application under 35 U.S.C. 111(a)  or within the period specified in paragraph (f)(2) of this section in an international application entering the national stage under 35 U.S.C. 371, and an exception in paragraph (h), (i), or (j) of this section is 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 § 1.17(g).

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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 ($200 petition fee set forth in 37 CFR 1.17(g)  versus the $400 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 ).

215.02(a)    Timeliness Requirement – Met By Priority Document Exchange [R-07.2015]

37 C.F.R. 1.55  Claim for foreign priority.

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  • (i) Foreign intellectual property office participating in a priority document exchange agreement. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application to be filed within the time limit set forth therein will be considered satisfied if:
    • (1) The foreign application was filed in a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office), or 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;
    • (2) The claim for priority is presented in an application data sheet (§ 1.76(b)(6) ), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and the applicant provides the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application;
    • (3) The copy of the foreign application is received by the Office from the participating foreign intellectual property office, or a certified copy of the foreign application is filed, within the period specified in paragraph (g)(1) of this section; and
    • (4) The applicant files in a separate document a request that the Office obtain a copy of the foreign application from a participating intellectual property office that permits the Office to obtain such a copy where, although the foreign application was not filed in a participating foreign intellectual property office, 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. The request must identify the participating intellectual property office and the subsequent application by the application number, day, month, and year of its filing in which a copy of the foreign application was filed. The request must be filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), four months from the date on which the national stage commenced under 35 U.S.C. 371(b)  or (f)  (§ 1.491(a) ), or four months from the date of the initial submission under 35 U.S.C. 371  to enter the national stage, or the request must be accompanied by a petition under paragraph (e) or (f) of this section.

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37 CFR 1.55(i)  provides that the requirement in 37 CFR 1.55(f)  and (g)  for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f)  and (g)  will be considered satisfied if the Office receives a copy of the priority document through the priority document exchange program during the pendency of the application and before the patent is granted. 37 CFR 1.55(i)  specifically provides that this requirement for a timely filed certified copy of the foreign application will be considered satisfied if: (1) The foreign application was filed in a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office); (2) the claim for priority is presented in an application data sheet (§ 1.76(b)(6) ), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and including the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application; and (3) the copy of the foreign application is received by the Office from the participating foreign intellectual property office, or a certified copy of the foreign application is filed, within the time period set forth in 37 CFR 1.55(g)(1) ).

37 CFR 1.55(i)  also provides that if the foreign application was not filed in a participating foreign intellectual property office, but 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, the applicant must also file a request in a separate document that the Office obtain a copy of the foreign application from the participating intellectual property office. This request must identify the participating intellectual property office and the application number and filing date of the subsequent application in which a copy of the foreign application was filed, and be filed within the later of sixteen months from the filing date of the prior foreign application or four months from the actual filing date of an application under 35 U.S.C. 111(a), within four months from the later of the date of commencement (37 CFR 1.491(a) ) or the date of the initial submission under 35 U.S.C. 371  in an application entering the national stage under 35 U.S.C. 371, or with a petition under 37 CFR 1.55(e)  or (f). Applicants can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.

The Office website provides information concerning the priority document exchange program ( www.uspto.gov/patents-getting-started/international- protection/electronic-priority-document-exchange-pdx ). See also MPEP § 215.01. 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. The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i)  may satisfy the requirement of 37 CFR 1.55(i)(3)  by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.

Note that the Office cannot obtain a copy of a design application to which priority is claimed, or a foreign application to which priority is claimed in a design application, through the priority document exchange program. In addition, note that the Office can obtain a PCT application to which priority is claimed through the priority document exchange program for PCT applications filed in a limited number of PCT Receiving Offices (currently, RO/DK (Denmark), RO/FI (Finland), RO/IB (International Bureau), and RO/SE (Sweden)).

Applicants continue to bear the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued. Accordingly, applicants are encouraged to check as necessary to confirm receipt by the Office of appropriate documents. Priority documents retrieved from a participating foreign intellectual property office will bear the document description: ‘‘Priority documents electronically retrieved by USPTO from a participating IP Office.’’ Furthermore, 37 CFR 1.55(i)(4)  provides that, under specified conditions, if the foreign application was not filed in a participating foreign intellectual property office, the applicant can file a request in a separate document that the Office obtain a copy of the foreign application from a participating intellectual property office that permits the Office to obtain such a copy. Applicants can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request. If the Office receives 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, the applicant need not file a certified paper copy of the foreign application. As a specific example, Germany is not currently a participating foreign intellectual property office, however a DE application may be retrieved via the priority document exchange program if it is identified in the claim for priority on the application data sheet, a subsequent application filed in the European Patent Office (EPO) or the Japan Patent Office (JPO) contains a certified copy of the DE application, and the applicant timely files a separate request for the Office to obtain from the EPO or JPO a copy of the certified copy of the DE application, wherein the request identifies the DE application and the subsequent EP or JP application by their application number, country, day, month, and year of their filing.

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(f)  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.

215.02(b)    Timeliness Requirement – Met By Interim Copy of Foreign Application [R-07.2015]

I.    TRUE COPY OF FOREIGN APPLICATION AS FILED

37 C.F.R. 1.55  Claim for foreign priority.

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  • (j) Interim copy. The requirement in paragraph (f) of this section for a certified copy of the foreign application to be filed within the time limit set forth therein will be considered satisfied if:
    • (1) A copy of the original foreign application clearly labeled as "Interim Copy," including the specification, and any drawings or claims upon which it is based, is filed in the Office together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority);
    • (2) The copy of the foreign application and separate cover sheet are filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), four months from the date on which the national stage commenced under 35 U.S.C. 371(b)  or (f)  (§ 1.491(a) ), four months from the date of the initial submission under 35 U.S.C. 371  to enter the national stage, or with a petition under paragraph (e) or (f) of this section; and
    • (3) A certified copy of the foreign application is filed within the period specified in paragraph (g)(1) of this section.

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37 CFR 1.55(j)  permits an applicant to provide an ‘‘interim copy’’ of the original foreign application from the applicant’s own records to provide for the situation in which the applicant cannot obtain a certified copy of the foreign application within the time limit set forth in 37 CFR 1.55(f), although there is no requirement that an applicant be unable to obtain a certified copy of the foreign application within the time limit set forth in 37 CFR 1.55(f)  to use 37 CFR 1.55(j). The requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f)  will be considered satisfied if the applicant files a copy of the original foreign application clearly labeled as ‘‘Interim Copy,’’ including the specification, and any drawings or claims upon which it is based with the time period specified in 37 CFR 1.55(j). 37 CFR 1.55(j)  also provides that the interim copy of the foreign application must be filed together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority). 37 CFR 1.55(i)  also provides that the interim copy of the foreign application and cover sheet must be filed within the later of sixteen months from the filing date of the prior foreign application or four months from the actual filing date of an application under 35 U.S.C. 111(a), within four months from the later of the date of commencement (37 CFR 1.491(a) ) or the date of the initial submission under 35 U.S.C. 371  in an application entering the national stage under 35 U.S.C. 371, or with a petition under 37 CFR 1.55(e)  or (f). 37 CFR 1.55(j)  finally provides that a certified copy of the foreign application ultimately must be filed within the period specified in 37 CFR 1.55(g)(1). Thus, providing an interim copy of a foreign application under 37 CFR 1.55(j)  satisfies the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f), but a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g)  as appropriate.

An interim copy of a foreign priority application will be entered into the file wrapper of the application in which it was filed and labeled as "Interim copy of Foreign Priority Document."

II.    FILING INTERIM COPY VIA EFS-WEB

If not provided as a single paper document, the main parts of the interim copy of the foreign priority application, i.e., Abstract, Drawings, Specification, Claims, and where applicable, Sequence Listing or Computer Program Listings, along with the separate cover sheet required by 37 CFR 1.55(j), may be filed as a single PDF file via EFS-Web. The PDF file will be stored in the Image File Wrapper of the application, and applicants must select the document description "Interim Copy of the Foreign Priority Application" to index this document when filing online.

Application parts that were filed in a foreign patent office only as plain text computer files (e.g. TXT file), such as a Sequence Listing, lengthy Tables(s), or Computer Program Listing appendix, may be filed as a TXT file via EFS-Web (or on compact disc). When filing online via EFS-Web, applicants must select the document description "Interim Copy of the Foreign Priority (text file)" to index a plain text file part of the application. See MPEP § 502.05 for additional information regarding filing documents via EFS-Web.