AIA Final Rules Submission of Certified Foreign Priority Documents and Translations Under the AIA March 20, 2013.

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