Rule Review
USPTO Changes Its Practice Regarding Corrections to Foreign Priority Claims
On October 6, 2015, the U.S. Patent and Trademark Office (USPTO) issued a Notice in the Federal Register informing the public that it is amending its practice regarding an applicant’s request to correct a foreign priority claim. See 80 Fed. Reg. 60,367 (Oct. 6, 2015). In short, as of November 5, 2015, the USPTO will require an applicant to comply with all the requirements of 35 U.S.C. § 1.55, including the requirement to submit a formal petition to accept an unintentionally delayed benefit claim in order to amend an incorrect application number in a foreign benefit claim, as is currently required to correct a domestic benefit claim.
BackgroundPrior to the Leahy-Smith America Invents Act (AIA), a U.S. patent application publication was only prior art as of its U.S. filing date, not its prior foreign filing date. See 35 U.S.C. § 102(e)(1) (pre-AIA) (“A person shall be entitled to a patent unless . . . (e) the invention was described in – (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent . . . .”). For any correction to a domestic benefit claim after the time period for filing a priority or benefit claim, the USPTO required a petition to accept an unintentionally delayed benefit claim. See 37 C.F.R. § 1.78(e). The USPTO would then republish the application with the corrected domestic priority information.
To correct an error in the application number in a foreign benefit claim outside the time period set forth for filing a claim, an applicant was technically required to file the same type of petition. See 37 C.F.R.
§ 1.55(e). In practice, however, the USPTO would accept a correction to the foreign application number even if an applicant only filed a corrected Application Data Sheet (ADS) or declaration. Because no formal petition was filed, the application would not be republished with the corrected application number. The fact that the application would not be republished was not important, in the USPTO’s view, because the filing date of a prior foreign application did not affect the effective prior art date of the U.S. patent application publication.
After the AIA, the filing date of an earlier foreign patent application may be the effective prior art date for the subject matter disclosed in a U.S. patent application publication. See 35 U.S.C. § 102(a)(2) (post-AIA) (“A person shall be entitled to a patent unless . . . the claimed invention was described . . . in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”). Thus, the rationale for not requiring a petition to correct an error in the foreign priority claim is no longer appropriate.
Accordingly, the USPTO is changing its practice and will now require applicants to make any correction to their foreign priority claims using the formal petition procedure laid out in 37 C.F.R. § 1.55(e). Once a petition is granted, the application will be republished with the correct foreign benefit claim. Republishing applications to reflect the accurate foreign priority information will minimize the burden on examiners, applicants, and members of the public in assessing the effective prior art date of a U.S. patent application publication under the AIA.
Correcting a Foreign Benefit ClaimA benefit claim must be made within four (4) months of the filing of the application or 16 months from the filing date of the prior application, whichever is later. 37 C.F.R. § 1.78 (domestic benefit claim); 37 C.F.R. § 1.55 (foreign benefit claim). As noted above, should a benefit claim need to be corrected outside this time period, the USPTO will now require a petition to accept an unintentionally delayed benefit claim for corrections to domestic and foreign priority claims in accordance with 37 C.F.R.
§ 1.78(e) and § 1.55(e), respectively.
The exact requirements for such a petition to accept an unintentionally delayed foreign benefit claim are set out in 37 C.F.R. § 1.55(e), which provides that the petition must be accompanied by (1) the priority claim, specifically identifying the foreign application to which priority is claimed by the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted; (2) a certified copy of the foreign application, unless previously submitted or an exception applies1; (3) a petition fee; and (4) a statement that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional. Section 1.55(e) also provides that the Director may require additional information where there is a question whether the delay was unintentional.
The change in practice will not affect applicants who were already strictly adhering to the rules. For others, the change will make the process of correcting one’s foreign priority claim more formal and will require the applicant to pay a fee and make a statement that the delay was unintentional.
As always, applicants are encouraged to make a proper and accurate benefit claim as early as possible and especially within the time set forth in the rules. In addition, applicants should confirm that the priority claim listed on the filing receipt is correct and should request any correction as soon as possible. If the correction needs to be in a petition to accept an unintentionally delayed benefit claim, even though § 1.55(e) does not explicit state an ADS is required, it is recommended that an applicant use an ADS to avoid a possible rejection of the claim by the USPTO.
1 Exceptions are noted in 37 C.F.R. § 1.55(h), (i), and (j).
