Update: Correction of Foreign Priority Claims
{3:45 minutes to read} The United States Patent and Trademark Office (USPTO) has recently announced a change in the way corrections of foreign priority claims are handled. Previously, foreign priority or domestic benefit claims had to be submitted in a timely manner to allow for publication of patent applications at 18 months from the earliest filing date for which a benefit was claimed.
The claim for priority or benefit must be filed within the latter of either: 4 months from the actual filing date of the application or 16 months from the filing date of the prior application (the 4/16 month time period).
It has been USPTO practice to require that any correction of the application number in a domestic benefit claim made after the 4/16 month time period be submitted via a petition to accept an unintentionally delayed benefit claim, but to permit correction of the application number in a foreign priority claim after the 4/16 month period without such a petition.
This dissimilar treatment of the correction of foreign priority claims and domestic benefit claims resulted in the publication of a patent application reflecting the accurate domestic benefit claim information whenever an applicant corrected the application number in a domestic benefit claim in a pending application, but not when an applicant corrected the application number in a foreign priority claim.
The rationale for this practice was that the filing date of a prior foreign patent application did not affect the effective prior art date of a U.S. patent application publication.
However, the “first investor to file” provisions of the America Invents Act provides that the filing date of an earlier foreign patent application may now be the effective prior art date for subject matter disclosed in a U.S. patent or a U.S. patent application publication.
Therefore, U.S. patent application publications should reflect accurate foreign priority information to minimize the burden on examiners and members of the public in assessing the effective prior art date for subject matter disclosed in such U.S. patent application publications.
The USPTO will now require, as of November 5, 2015, that any correction of the identification of the foreign priority application after the 4/16 month be made via petition to accept an unintentionally delayed claim for foreign priority.
Silvia Salvadori, PhD
www.salvadorilaw.com
www.salvadorilaw.com/blog
silvia@salvadorilaw.com
(212) 897-1938