Foreign And Provisional Priority - Pi Patent Exam Prep

Front 1

Requirements to obtain benefit of foreign filing date:

Back 1

1) File U.S. application within 12 months of first application filed in a "recognized" foreign country.
- 6 months for design patents,
- Inventor(s) named in the U.S. application must be inventors of the subject matter of foreign application.
2) Claim priority,
3) File a certified copy of the foreign application in the U.S. application, and a translation if needed (e.g., if there is intervening prior art),
4) U.S. claims must be §112 ¶1 supported by the foreign application
- Written description,
- Enablement,
- Best mode.

Front 2

What are the differences between claiming foreign priority versus an earlier US filing date (continuing applications)?

Back 2

Foreign filing date cannot overcome §102(b) prior art.

Front 3

What is the prior art date as a §102(e) reference that claims foreign priority?

Back 3

The US file date, not foreign priority. Foreign priority is a shield, not a sword.

Front 4

When must foreign priority be claimed?

Back 4

1) Must be filed during pendency of the application, and within the later of
a) 4 months from actual file date of the application,
b) 16 months from foreign filing date.

Front 5

Is the time for claiming foreign priority extendable?

Back 5

No. Although unintentional late filing may be accepted.

Front 6

What is required for filing unintentional late foreign priority claims?

Back 6

a) Petition to accept late claim,
b) Surcharge,
c) Statement that the entire delay was unintentional.

Front 7

What must a claim of foreign priority include?

Back 7

1) The foreign application on which priority is claimed, including application number and the filing date of the foreign application, the name of the treaty under which the application was filed, and the country or intergovernmental authority.
2) All corresponding foreign applications filed prior to filing in the U.S.

Front 8

Where may an applicant make a foreign priority claim?

Back 8

1) In an ADS,
2) The oath,
3) An amendment or,
4) A continuing application.
If not made in the original application data sheet or oath, a supplemental ADS or oath must be filed.

Front 9

What is required to perfect a claim to foreign priority?

Back 9

1) Filing a certified copy of the foreign application, before issue fee is paid or earlier if necessary.
2) A translation if necessary.

Front 10

May a U.S. application claim priority to two or more foreign applications?

Back 10

Yes, so long as the requirements are satisfied.

Front 11

Does a provisional application start the 20 year clock for calculating patent term?

Back 11

No. Same as foreign priority.

Front 12

Requirements to obtain a filing date from a provisional:

Back 12

1) A specification complying with §112 ¶1,
2) Drawings if necessary.

Front 13

Requirements to maintain a filing date from a provisional application:

Back 13

1) A filing fee,
2) A cover sheet including;
a) An identification of the application (otherwise it is treated as a nonprovisional),
b) Names of the inventors.

Front 14

What are not required for a provisional?

Back 14

Claims, oath or declaration.

Front 15

Can a provisional application claim foreign or domestic priority?

Back 15

No.

Front 16

May a provisional application be the basis for foreign priority?

Back 16

Maybe. Hasn't been tested.

Front 17

Can a design patent claim priority to a provisional?

Back 17

No.

Front 18

Can a provisional priority date overcome §102(b)?

Back 18

Yes, unlike foreign priority.

Front 19

Does the filing date of a provisional constitute a §102(e) bar?

Back 19

Yes, unlike foreign priority.

Front 20

Requirements for receiving provisional priority date (MPEP §201.11):

Back 20

1) Nonprovisional filed within 12 months,
2) Overlap in inventors,
3) Claims in nonprovisional must be §112 ¶1 supported,
4) Filing fee in provisional must be paid,
5) The nonprovisional application must contain a priority reference,
6) Co-pendency is not required (you can expressly abandon the provisional) 35 USC §119(e)(2).

Front 21

What is required for a provisional application cover sheet (37 CFR §1.51(c)(1))?

Back 21

1) Identify the application as provisional,
2) The names of all inventors, even when no claims are submitted,
3) The residence of all inventors,
4) The title of the invention,
5) The name and registration number of the attorney or agent, if any,
6) The applicant's (attorney's) docket number, if any,
7) A correspondence address,
8) The government agency and contract number, if any.

Front 22

Within what time may a nonprovisional be converted to a provisional?

Back 22

1) Time for conversion must be:
a) Before the payment of the issue fee,
b) Within 12 months of filing of the nonprovisional,
c) Prior to any requests to convert the nonprovisional into a statutory invention registration.

Front 23

Requirements to convert nonprovisional to a provisional:

Back 23

A request and fee are required under MPEP §201.04(b).

Front 24

Within what time may a provisional be converted to a nonprovisional?

Back 24

1) Before abandonment,
2) Within 12 months of filing the nonprovisional.

Front 25

Requirements to convert a provisional to a nonprovisional:

Back 25

A request, a fee, and at least one claim are required. (No fee refund is made or applied),