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 Fee Filed Paid Issued Issue Fee Application

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 Filed Paid Issued Issue Fee 4 Months (or 16 from priority date) Application

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.

Certified Foreign Priority Doc.- AIA Timing Sure! Patent Document Exchange Please Send Filed Issued Filed ADS 4 Months Priority App. Application

Certified Foreign Priority Doc.- AIA Timing Huh? Certified Foreign Priority Doc. Patent Document Exchange ZZZZ… Filed Issued Filed ADS 4 Months If priority document NOT exchanged, you must submit Priority App. Application

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 Oui, but need more time! Okay, send what you filed. Interim Copy Send Certified Copy Filed Issued Filed ADS 4 Months Priority App. Application

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 OOPS! Petition Processing Fee Fee Issued Filed Paid Filed ADS Issue Fee 4 Months Certificate of Correction Priority App. Application

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 Required by examiner Requires statement that translation is accurate

More Information and Questions… Contact: Chuck Schmal Phone: (317) 713-4954 Email: cschmal@uspatent.com

©2013 Woodard, Emhardt, Moriarty, McNett & Henry LLP AIA Final Rules Submission of Certified Foreign Priority Documents and Translations Under the AIA March 20, 2013 ©2013 Woodard, Emhardt, Moriarty, McNett & Henry LLP