215    Certified Copy of Foreign Application [R-11.2013]

I.   REQUIREMENT FOR CERTIFIED COPY

35 U.S.C. 119(b)(3) authorizes the Office to require the applicant to furnish a certified copy of the foreign priority application, and the Office requires such a copy pursuant to 37 CFR 1.55. The filing of the foreign priority papers under 35 U.S.C. 119(a)-(d) makes the record of the file of the United States patent complete. The U.S. Patent and Trademark Office does not normally examine the papers to determine whether the applicant is in fact entitled to the right of priority and does not grant or refuse the right of priority, except when the application is involved in an interference or derivation proceeding, when necessary to overcome the date of a reference relied upon by the examiner, or when deemed necessary by the examiner. See MPEP § 216. When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner should review the certified copy to see that it contains no obvious formal defects and that it corresponds in number, date and country to the application identified in the application data sheet for an application filed on or after September 16, 2012, or oath or declaration for an application filed prior to September 16, 2012.

II.   MEANING OF "CERTIFIED COPY"

The certified copy which must be filed is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information. Certified copies include those retrieved by the Office in accordance with a priority document exchange program. See MPEP § 215.01. "Application" in this connection is not considered to include formal papers such as a petition. A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the certification indicates that it corresponds to the application as filed.

III.   CERTIFIED COPY FILED IN PARENT OR RELATED APPLICATION

Where the benefit of a foreign filing date based on a foreign application is claimed in a later filed application (i.e., continuation, continuation-in-part, division) or in a reissue application and a certified copy of the foreign application as filed, has been filed in a parent or related application, it is not necessary to file an additional certified copy in the later application. A reminder of this provision is found in form paragraph 2.20. The applicant when making such claim for priority may simply identify the application containing the certified copy. In such cases, the examiner should acknowledge the claim on form PTOL-326. Note copy in MPEP § 707.

If the applicant fails to call attention to the fact that the certified copy is in the parent or related application and the examiner is aware of the fact that a claim for priority under 35 U.S.C. 119(a)-(d) or (f) was made in the parent application, the examiner should call applicant’s attention to these facts in an Office action, so that if a patent issues on the later or reissue application, the priority data will appear in the patent. In such cases, the language of form paragraph 2.20 should be used.

¶ 2.20    Certified Copies of Priority Papers in Parent or Related (Reissue Situation) - Application

Applicant is reminded that in order for a patent issuing on the instant application to obtain priority under 35 U.S.C. 119(a) -(d)  or (f), based on priority papers filed in parent or related Application No. [1] (to which the present application claims the benefit under 35 U.S.C. 120, 121, of 365(c) ), a claim for such foreign priority must be timely made in this application. To satisfy the requirement of 35 U.S.C. 155  for a certified copy of the foreign application, applicant may simply identify the application containing the certified copy.

Where the benefit of a foreign filing date, based on a foreign application, is claimed in a later filed application or in a reissue application and a certified copy of the foreign application, as filed, has not been filed in a parent or related application, a claim for priority may be made in the later application. In re Tangsrud, 184 USPQ 746 (Comm’r Pat. 1973). When such a claim is made in the later application and a certified copy of the foreign application is placed therein, the examiner should acknowledge the claim on form PTOL-326. Note copy in MPEP § 707.

IV.   FOREIGN PRIORITY DOCUMENT INCONSISTENT WITH A TIMELY FOREIGN PRIORITY CLAIM OR NO CLAIM FOR FOREIGN PRIORITY

For applications filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet. For applications filed prior to September 16, 2012, any foreign priority claim must be identified in either the oath or declaration or in an application data sheet. If the certified copy filed does not correspond to the foreign application identified in the application oath or declaration or an application data sheet, or if the application oath or declaration or an application data sheet does not refer to the particular foreign application, the applicant has not complied with the requirements of the rule relating to the application data sheet or the oath or declaration. In such instances, the Office action, after acknowledging receipt of the certified copy, should require the applicant to explain the inconsistency and to file a new oath or declaration (for applications filed prior to September 16, 2012) or an application data sheet stating correctly the facts concerning foreign applications required by 37 CFR 1.63 by using form paragraph 2.22.

Where applicant has filed a certified copy but has not made a claim for foreign priority, use form paragraph 2.22.

¶ 2.22    Certified Copy Filed, But NoProper Claim Not Made

Receipt is acknowledged of a certified copy of foreign application [1]. If this copy is being filed to obtain priority to the foreign filing date under 35 U.S.C. 119(a)-(d),  applicant should also file a claim for such priority as required by 35 U.S.C. 119(b). If the application was filed before September 16, 2012, the priority claim must be made in either the oath or declaration or in an application data sheet; if the application was filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet.

If the application being examined is an original application filed under 35 U.S.C. 111(a)  (other than a design application), the claim for priority must be presented during the pendency of the application, and 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. See 37 CFR 1.55. If the application being examined is a utility or plant application entering the national stage from an international application under 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and Regulations of the PCT. See 37 CFR 1.55. Any claim for priority under 35 U.S.C. 119(a)-(d) or (f)  or 365(a) or (b)  not presented within the time period set forth in 37 CFR 1.55  is considered to have been waived. If a claim for foreign priority is presented after the time period set forth in 37 CFR 1.55, the claim may be accepted if the claim properly identifies the prior foreign application and is accompanied by a grantable petition to accept an unintentionally delayed claim for priority. See 37 CFR 1.55.

Examiner Note:

In bracket 1, insert the application number of the foreign application.

NOTE: Where the applicant’s accompanying letter states that the certified copy is filed for priority purposes or for the convention date, it is accepted as a claim for priority, but such claim is not in compliance with the requirements of 37 CFR 1.55 and either 37 CFR 1.76 or pre-AIA 37 CFR 1.63.

V.   APPLICATION IN ISSUE

When 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 foreign priority claim or certified copy must be accompanied by a processing fee set forth in 37 CFR 1.17(i). The foreign 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 foreign 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 design applications), a grantable petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55 must be filed with the certificate of correction.

VI.   NO CERTIFIED COPY

Where priority is claimed but no certified copy of the foreign application has been filed, use form paragraph 2.25.

¶ 2.25    Claimed Foreign Priority, No Papers Certified Copy Filed

Acknowledgment is made of applicant's claim for foreign priority based on an application filed in [1] on [2]. It is noted, however, that applicant has not filed a certified copy of the [3] application as required by 37 CFR 1.55.

Examiner Note:

1. In bracket 1, insert the country name.

2. In bracket 2, insert the filing date of the foreign application.

3. In bracket 3, insert the application number of the foreign application.

Any unusual situation may be referred to the Technology Center (TC) Director.

VII.   RETURN OF CERTIFIED COPY

Certified copies that have been entered into the application file will not be returned to applicant.

215.01   Electronic Priority Document Exchange [R-11.2013]

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 at approximately 19 months from the filing date of that foreign application. However, an electronic retrieval attempt by the USPTO will be initiated earlier than 19 months in the following situations: applications granted accelerated examination status; applications in which a petition has been granted under the Patent Prosecution Highway program; and, when an Office action by the examiner is mailed prior to 19 months from the foreign priority date. 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 the Patent Application and Information Retrieval (PAIR) to 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, it must be accompanied by the processing fee set forth in 37 CFR 1.17(i), but the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and § 1.323. See MPEP § 215.02(a) for information pertaining to meeting the timeliness requirement for filing a certified copy by using PDX.

The Office provides additional information concerning the priority document exchange program on its Internet Web site at http://www.uspto.gov/patents/process/file/ pdx/pdx_index.jsp. 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.

  Applications That Are Not PDX Eligible

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)).

215.02   Time For Filing Certified Copy – Application Filed On or After March 16, 2013 [R-11.2013]

[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 in an application filed under 35 U.S.C. 111(a). In an original application filed 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, except as provided in paragraphs (h) and (i) of this section. If a certified copy of the foreign application is not 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, and the exceptions in paragraphs (h) and (i) of this section 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 § 1.17(g). The time period in this paragraph does not apply in a design application.

*****

For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f) sets forth the time period for filing a certified copy of the foreign application. The time period in 37 CFR 1.55(f) does not apply in design applications. 37 CFR 1.55(f) 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 two exceptions. This time period requirement does not apply if: (1) 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(h) and MPEP § 215.02(a)); or (2) 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(i) 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 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 the exceptions in 37 CFR 1.55(h) and (i) 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 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-11.2013]

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

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  • (h) Foreign intellectual property office participating in a priority document exchange agreement. The requirement in paragraphs (c), (f), and (g) 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 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 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 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 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 (§ 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 paragraph (e) of this section.

*****

37 CFR 1.55(h) provides that the requirement in 37 CFR 1.55(c), (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(c), (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(h) 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 pendency of the application and before the patent is granted (as set forth in 37 CFR 1.55(g)(1)).

37 CFR 1.55(h) 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). Applicants can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.

The Office has provided information concerning the priority document exchange program on its Internet Web site (www.uspto.gov). 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(h) may satisfy the requirement of 37 CFR 1.55(h)(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(h)(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-11.2013]

I.   TRUE COPY OF FOREIGN APPLICATION AS FILED

37 C.F.R. 1.55 

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  • (i) Interim copy. The requirement in paragraph (f) 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 is 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), or with a petition under paragraph (e) 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(i) 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(i). 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(i). 37 CFR 1.55(i) 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), or with a petition under 37 CFR 1.55(e). 37 CFR 1.55(i) 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(i) 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 and before a patent is granted.

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 possibly Sequence Listing or Computer Program Listings, along with the separate cover sheet required by 37 CFR 1.55(i), 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 Document" 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 Document (text file)" to index a plain text file part of the application. See MPEP § 502.05 for additional information about EFS-Web.

215.03   Time For Filing Certified Copy – Application Filed Before March 16, 2013 [R-11.2013]

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

Pre-March 16, 2013 37 C.F.R. 1.55  Claim for foreign priority.

  • (a) An applicant filing a nonprovisional application may claim the benefit of the filing date of one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) and (b).

    • (1)
      • (i) In an original application filed under 35 U.S.C. 111(a), the claim for foreign priority must be presented in an application data sheet (§ 1.76(b)(6)) during the pendency of the application, and 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. This time period is not extendable. The claim must identify the foreign application for which priority is claimed, as well as any foreign application for the same subject matter and having a filing date before that of the application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. The time periods in this paragraph do not apply in an application under 35 U.S.C. 111(a) if the application is:

        • (A) A design application; or
        • (B) An application filed before November 29, 2000.
      • (ii) In an application that entered the national stage from an international application after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and the Regulations under the PCT.
    • (2) The claim for 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 priority or the certified copy of the foreign application is filed after the date the issue fee is paid, it must be accompanied by the processing fee set forth in § 1.17(i), but the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and § 1.323.
    • (3) The Office may require that the claim for priority and the certified copy of the foreign application be filed earlier than provided in paragraphs (a)(1) or (a)(2) of this section:

      • (i) When the application becomes involved in an interference (see § 41.202 of this title),
      • (ii) When necessary to overcome the date of a reference relied upon by the examiner, or
      • (iii) When deemed necessary by the examiner.
    • (4)
      • (i) An English language translation of a non-English language foreign application is not required except:

        • (A) When the application is involved in an interference (see § 41.202 of this title),
        • (B) When necessary to overcome the date of a reference relied upon by the examiner, or
        • (C) When specifically required by the examiner.
      • (ii) If an English language translation is required, it must be filed together with a statement that the translation of the certified copy is accurate.
  • (c) Unless such claim is accepted in accordance with the provisions of this paragraph, any claim for priority under 35 U.S.C. 119(a) -(d)  or 365(a)  not presented in an application data sheet (§ 1.76(b)(6) ) within the time period provided by paragraph (a) of this section is considered to have been waived. If a claim for priority under 35 U.S.C. 119(a) -(d)  or 365(a)  is presented after the time period provided by paragraph (a) of this section, the claim may be accepted if the claim identifying the prior foreign application by specifying its application number, country (or intellectual property authority), and the day, month, and year of its filing was unintentionally delayed. A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) -(d)  or 365(a)  must be accompanied by:

    • (1) The claim under 35 U.S.C. 119(a) -(d)  or 365(a)  and this section to the prior foreign application, unless previously submitted;
    • (2) The surcharge set forth in § 1.17(t); and
    • (3) A statement that the entire delay between the date the claim was due under paragraph (a)(1) of this section and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

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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, it must be accompanied by the processing fee set forth in 37 CFR 1.17(i), but 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 pre-March 16, 2013 37 CFR 1.55(a)(2). 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 without a processing fee (37 CFR 1.17(i)) is the date of the payment of the issue fee, except that, under certain circumstances, they are required at an earlier date. These circumstances are specified in pre-March 16, 2013 37 CFR 1.55(a)(3) as:

    • (A) in the case of interferences in which event the papers must be filed within the time specified in the interference rules;
    • (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 must be accompanied by a processing fee set forth in 37 CFR 1.17(i). 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), a grantable petition to accept an unintentionally delayed claim for priority under pre-March 16, 2013 37 CFR 1.55(c) must also be filed with the certificate of correction.

In view of the shortened periods for prosecution leading to allowances, it is recommended that priority papers be filed as early as possible. Although pre-March 16, 2013 37 CFR 1.55(a)(2) 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 pencil notation of the application number of the corresponding U.S. application be placed on the priority papers. 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 pencil 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 pencil notation on the priority document of the U.S. application data will result in a substantial lessening of the problem.