AIA Final Rules - Woodard, Emhardt, Moriarty, McNett, & Henry

Report
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
Certified
Foreign
Priority
Doc.
Filed
Fee
Paid
Application
Issue
Fee
Issued
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
Certified
Foreign
Priority
Doc.
Paid
Filed
Application
4 Months
(or 16 from
priority date)
Issue
Fee
Issued
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
Certified
Foreign Priority Doc.- AIA Timing
Foreign
Sure!
Priority
Doc.
Filed
Patent Document
Exchange
Please
Send
Issued
Filed
ADS
ADS
Priority Application
App.
4 Months
Certified Foreign Priority Doc.- AIA Timing
Huh?
Filed
ZZZZ…
Certified Patent Document
Foreign Exchange
Priority
Doc.
Issued
Filed
ADS
ADS
Priority Application
App.
4 Months
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
Send
filed.
Certified
Interim Copy
Copy
Filed
Certified
Foreign
Priority
Doc.
Issued
Filed
ADS
ADS
Priority Application
App.
4 Months
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
Certified
OOPS!
Fee
Filed
Petition
Foreign Processing
Fee
Priority
Doc.
Paid
Filed
ADS
ADS
Priority Application
App.
4 Months
Issue
Fee
Issued
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) 713-4954
Email: [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

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