Due to COVID-19, the USPTO recently announced that it is possible to request a suspension of the requirement to file a certified copy of a foreign priority application by the time the issue fee is paid, if the foreign priority application is not available via a multilateral priority document exchange program.
Here’s What You Need To Know:
An applicant must have requested the certified copy of the priority document before the payment of the issue fee — and must have been unable to file it by the day the issue fee was paid because of the inability of the foreign intellectual property office to provide for the request. Moreover, a non-certified copy must have been filed at the appropriate time.
The request to delay the submission of the certified copy of the priority document must occur no later than the day in which the issue fee is paid and must include a statement in which the applicant states that a non-certified copy was submitted at the proper time and that a request for a certified copy was made to the foreign patent office prior to the payment of the issue fee, but due to the COVID-19 pandemic, the foreign patent office had not been able to process the request.
Once the foreign patent office resumes processing requests for paper certified copies, the applicant or patentee must:
(1) comply with the requirements of the foreign patent office for obtaining a paper certified copy (which may include submitting a new request for a paper certified copy) within two months after the date the foreign patent office resumes processing requests for paper certified copies; and
(2) submit the paper certified copy to the USPTO within one month after the date the paper certified copy is issued from the foreign patent office.
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Silvia Salvadori, PhD