When must foreign priority document be filed in a US utility patent application?

What is the deadline for filing a certified priority document in a utility application?

Under the new AIA rules for US utility applications filed on or after March 16, 2013, both the priority claim and foreign priority document must be filed generally within 16 months of the foreign filing priority date [37 CFR 1.55(f)]. Technically, the deadline is the later of 4 months from the actual filing date of the US application or 16 months from the foreign priority date. However, since the US utility applications claiming priority are typically filed within 12 months of the foreign priority date, it’s simpler to just keep in mind the 16-month deadline.

There are exceptions to the 16-month deadline for submitting a certified copy of the foreign application:

  1. If the foreign application was filed in a PDX member country (i.e., foreign IP office participating in the Electronic Priority Document Exchange) and the priority claim was presented in an Application Data Sheet (ADS), then foreign priority document needs to be submitted during the pendency of the application (i.e., before grant); or
  2. If the foreign application was filed in a non-PDX country, then an “Interim Copy” of the foreign application which must be clearly marked as such may be filed by the 16-month deadline with a cover sheet listing the application number, country, filing date and a statement that the copy filed in the Office “is a true copy of the original application as filed in” the foreign country or IP office. A certified copy of the priority document can then be filed during the pendency of the application.

How to request that USPTO retrieve a copy of the priority application

The USPTO will automatically retrieve a copy of a priority application filed in the following participating IP offices where the USPTO has a direct bilateral exchange:

  • EPO
  • S. Korea
  • China

For other participating IP offices, the applicant must file a request to have the USPTO retrieve a copy of the priority document. If the priority application was filed in Australia, Australian counsel should provide US counsel with the WIPO DAS code to enable the USPTO to retrieve the copy of the priority application.

What are the participating PDX countries?

In addition to the direct bilateral exchange countries above, the following countries participate in the exchange of priority documents:

• (AU) Australian Patent Office

• (BR) Brazil National Institute of Industrial Property

• (DK) Denmark Patent and Trademark Office

• (EA) Eurasian Patent Office

• (EE) Estonian Patent Office

• (ES) Spanish Patent and Trademark Office

• (FI) National Board of Patents and Registration of Finland

• (GB) United Kingdom Intellectual Property Office

• (IB) International Bureau (IB), in its capacity as RO/IB

• (JP) Japan Patent Office

• (MA) Moroccan Office of Industrial and Commercial Property

• (NZ) New Zealand Intellectual Property Office

• (SE) Swedish Patent and Trademark Office

When must a certified copy of a design priority application be filed?

A certified copy of a design priority application filed in a foreign country must be filed during the pendency of the US design application. Accordingly, an applicant may file a certified copy of the priority design application with the payment of the issue fee.

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