[Federal Register Volume 78, Number 50 (Thursday, March 14, 2013)]
[Rules and Regulations]
[Pages 16182-16184]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-05815]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket No. PTO-P-2012-0015]
RIN 0651-AC77


Changes To Implement the First Inventor To File Provisions of the 
Leahy-Smith America Invents Act; Correction

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Final rule; correction.

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SUMMARY: The United States Patent and Trademark Office (Office) 
published in the Federal Register of February 14, 2013, a final rule 
revising the rules of practice in patent cases for consistency with, 
and to address the examination issues raised by, the changes in the 
first inventor to file provisions of the Leahy-Smith America Invents 
Act (AIA) (First Inventor to File Final Rule). Due to a technical 
issue, the First Inventor to File Final Rule as published in the 
Federal Register is missing text in the provisions pertaining to claims 
for priority to a foreign application in an application filed under the 
Patent Cooperation Treaty (PCT). This document corrects the omission in 
the First Inventor to File Final Rule as published in the Federal 
Register.

DATES: Effective March 16, 2013.

FOR FURTHER INFORMATION CONTACT: Susy Tsang-Foster, Legal Advisor 
(telephone (571) 272-7711; electronic mail message ([email protected])) or Linda S. Therkorn, Patent Examination Policy 
Advisor (telephone (571) 272-7837; electronic mail message 
([email protected])), of the Office of the Deputy Commissioner 
for Patent Examination Policy.

SUPPLEMENTARY INFORMATION: The Office published in the Federal Register 
of February 14, 2013, a final rule revising the rules of practice in 
patent cases for consistency with, and to address the examination 
issues raised by, the changes in the first inventor to file provisions 
of the AIA. See Changes To Implement the First Inventor To File 
Provisions of the Leahy-Smith America Invents Act, 78 FR 11024 (Feb. 
14, 2013). The First Inventor to File Final Rule as published in the 
Federal Register is missing text in the provisions pertaining to claims 
for priority to a foreign application in an application filed under the 
PCT. See Changes To Implement the First Inventor To File Provisions of 
the Leahy-Smith America Invents Act, 78 FR 11053 (to be codified at 37 
CFR 1.55(c)). Specifically, the ``371'' in ``35 U.S.C. 371'' as it 
appears in the body of Sec.  1.55(c) in the electronic copy of the 
First Inventor to File Final Rule submitted to the Office of the 
Federal Register contained a hyperlink, which is not printed by the 
Office of the Federal Register. This document corrects the omission of 
``371'' in ``35 U.S.C. 371'' in the body of Sec.  1.55(c) in the First 
Inventor to File Final Rule as published in the Federal Register.
    In rule FR Doc. 2013-03453 published on February 14, 2013 (78 FR 
11024), make the following corrections:


Sec.  1.55  [Correction]

0
1. On page 11053, second column, through page 11055, first column, 
revise amendatory instruction 6 and its amendatory text to read as 
follows:
0
6. Section 1.55 is revised to read as follows:


Sec.  1.55  Claim for foreign priority.

    (a) In general. An applicant in a nonprovisional application may 
claim priority to one or more prior foreign applications under the 
conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, and 
365(a) and (b) and this section.
    (b) Time for filing subsequent application. The nonprovisional 
application must be filed not later than

[[Page 16183]]

twelve months (six months in the case of a design application) after 
the date on which the foreign application was filed, or be entitled to 
claim the benefit under 35 U.S.C. 120, 121, or 365(c) of an application 
that was filed not later than twelve months (six months in the case of 
a design application) after the date on which the foreign application 
was filed. The twelve-month period is subject to 35 U.S.C. 21(b) (and 
Sec.  1.7(a)) and PCT Rule 80.5, and the six-month period is subject to 
35 U.S.C. 21(b) (and Sec.  1.7(a)).
    (c) Time for filing priority claim and certified copy of foreign 
application in an application entering the national stage under 35 
U.S.C. 371. In an international application entering the national stage 
under 35 U.S.C. 371, the claim for priority must be made and a 
certified copy of the foreign application must be filed within the time 
limit set forth in the PCT and the Regulations under the PCT.
    (d) Time for filing priority claim in an application filed under 35 
U.S.C. 111(a). In an original application filed under 35 U.S.C. 111(a), 
the claim for priority must be filed within the later of four months 
from the actual filing date of the application or sixteen months from 
the filing date of the prior foreign application. The claim for 
priority must be presented in an application data sheet (Sec.  
1.76(b)(6)), and must identify the foreign application for which 
priority is claimed, by specifying the application number, country (or 
intellectual property authority), day, month, and year of its filing. 
The time period in this paragraph does not apply in a design 
application.
    (e) Delayed priority claim in an application filed under 35 U.S.C. 
111(a). Unless such claim is accepted in accordance with the provisions 
of this paragraph, any claim for priority under 35 U.S.C. 119(a) 
through (d) or (f) or 365(a) in an original application filed under 35 
U.S.C. 111(a) not presented in an application data sheet (Sec.  
1.76(b)(6)) within the time period provided by paragraph (d) of this 
section is considered to have been waived. If a claim for priority is 
presented after the time period provided by paragraph (d) of this 
section, the claim may be accepted if the priority claim was 
unintentionally delayed. A petition to accept a delayed claim for 
priority under 35 U.S.C. 119(a) through (d) or (f) or 365(a) must be 
accompanied by:
    (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f) or 
365(a) in an application data sheet (Sec.  1.76(b)(6)), identifying the 
foreign application for which priority is claimed, by specifying 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 if required by 
paragraph (f) of this section, unless previously submitted;
    (3) The surcharge set forth in Sec.  1.17(t); and
    (4) A statement that the entire delay between the date the priority 
claim was due under paragraph (d) of this section and the date the 
priority claim was filed was unintentional. The Director may require 
additional information where there is a question whether the delay was 
unintentional.
    (f) Time for filing certified copy of foreign application in an 
application filed under 35 U.S.C. 111(a). In an original application 
filed under 35 U.S.C. 111(a), a certified copy of the foreign 
application must be filed within the later of four months from the 
actual filing date of the application or sixteen months from the filing 
date of the prior foreign application, except as provided in paragraphs 
(h) and (i) of this section. If a certified copy of the foreign 
application is not filed within the later of four months from the 
actual filing date of the application or sixteen months from the filing 
date of the prior foreign application, and the exceptions in paragraphs 
(h) and (i) of this section are not applicable, the certified copy of 
the foreign application must be accompanied by a petition including a 
showing of good and sufficient cause for the delay and the petition fee 
set forth in Sec.  1.17(g). The time period in this paragraph does not 
apply in a design application.
    (g) Requirement for filing priority claim, certified copy of 
foreign application, and translation in any application. (1) The claim 
for priority and the certified copy of the foreign application 
specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be 
filed within the pendency of the application and before the patent is 
granted. If the claim for priority or the certified copy of the foreign 
application is filed after the date the issue fee is paid, it must also 
be accompanied by the processing fee set forth in Sec.  1.17(i), but 
the patent will not include the priority claim unless corrected by a 
certificate of correction under 35 U.S.C. 255 and Sec.  1.323.
    (2) The Office may require that the claim for priority and the 
certified copy of the foreign application be filed earlier than 
otherwise provided in this section:
    (i) When the application is involved in an interference (see Sec.  
41.202 of this title) or derivation (see part 42 of this title) 
proceeding;
    (ii) When necessary to overcome the date of a reference relied upon 
by the examiner; or
    (iii) When deemed necessary by the examiner.
    (3) An English language translation of a non-English language 
foreign application is not required except:
    (i) When the application is involved in an interference (see Sec.  
41.202 of this title) or derivation (see part 42 of this title) 
proceeding;
    (ii) When necessary to overcome the date of a reference relied upon 
by the examiner; or
    (iii) When specifically required by the examiner.
    (4) If an English language translation of a non-English language 
foreign application is required, it must be filed together with a 
statement that the translation of the certified copy is accurate.
    (h) Foreign intellectual property office participating in a 
priority document exchange agreement. The requirement in paragraphs 
(c), (f), and (g) of this section for a certified copy of the foreign 
application to be filed within the time limit set forth therein will be 
considered satisfied if:
    (1) The foreign application was filed in a foreign intellectual 
property office participating with the Office in a bilateral or 
multilateral priority document exchange agreement (participating 
foreign intellectual property office), or a copy of the foreign 
application was filed in an application subsequently filed in a 
participating foreign intellectual property office that permits the 
Office to obtain such a copy;
    (2) The claim for priority is presented in an application data 
sheet (Sec.  1.76(b)(6)), identifying the foreign application for which 
priority is claimed, by specifying the application number, country (or 
intellectual property authority), day, month, and year of its filing, 
and the applicant provides the information necessary for the 
participating foreign intellectual property office to provide the 
Office with access to the foreign application;
    (3) The copy of the foreign application is received by the Office 
from the participating foreign intellectual property office, or a 
certified copy of the foreign application is filed, within the period 
specified in paragraph (g)(1) of this section; and
    (4) The applicant files a request in a separate document that the 
Office obtain a copy of the foreign application from a participating 
intellectual property office that permits the Office to obtain such a 
copy if the foreign application was not filed in a participating 
foreign intellectual property office but a copy of

[[Page 16184]]

the foreign application was filed in an application subsequently filed 
in a participating foreign intellectual property office that permits 
the Office to obtain such a copy. The request must identify the 
participating intellectual property office and the subsequent 
application by the application number, day, month, and year of its 
filing in which a copy of the foreign application was filed. The 
request must be filed within the later of sixteen months from the 
filing date of the prior foreign application or four months from the 
actual filing date of an application under 35 U.S.C. 111(a), within 
four months from the later of the date of commencement (Sec.  1.491(a)) 
or the date of the initial submission under 35 U.S.C. 371 in an 
application entering the national stage under 35 U.S.C. 371, or with a 
petition under paragraph (e) of this section.
    (i) Interim copy. The requirement in paragraph (f) of this section 
for a certified copy of the foreign application to be filed within the 
time limit set forth therein will be considered satisfied if:
    (1) A copy of the original foreign application clearly labeled as 
``Interim Copy,'' including the specification, and any drawings or 
claims upon which it is based, is filed in the Office together with a 
separate cover sheet identifying the foreign application by specifying 
the application number, country (or intellectual property authority), 
day, month, and year of its filing, and stating that the copy filed in 
the Office is a true copy of the original application as filed in the 
foreign country (or intellectual property authority);
    (2) The copy of the foreign application and separate cover sheet is 
filed within the later of sixteen months from the filing date of the 
prior foreign application or four months from the actual filing date of 
an application under 35 U.S.C. 111(a), or with a petition under 
paragraph (e) of this section; and
    (3) A certified copy of the foreign application is filed within the 
period specified in paragraph (g)(1) of this section.
    (j) Requirements for certain applications filed on or after March 
16, 2013. If a nonprovisional application filed on or after March 16, 
2013, claims priority to a foreign application filed prior to March 16, 
2013, and also contains, or contained at any time, a claim to a claimed 
invention that has an effective filing date on or after March 16, 2013, 
the applicant must provide a statement to that effect within the later 
of four months from the actual filing date of the nonprovisional 
application, four months from the date of entry into the national stage 
as set forth in Sec.  1.491 in an international application, sixteen 
months from the filing date of the prior-filed foreign application, or 
the date that a first claim to a claimed invention that has an 
effective filing date on or after March 16, 2013, is presented in the 
nonprovisional application. An applicant is not required to provide 
such a statement if the applicant reasonably believes on the basis of 
information already known to the individuals designated in Sec.  
1.56(c) that the nonprovisional application does not, and did not at 
any time, contain a claim to a claimed invention that has an effective 
filing date on or after March 16, 2013.
    (k) Inventor's certificates. An applicant in a nonprovisional 
application may under certain circumstances claim priority on the basis 
of one or more applications for an inventor's certificate in a country 
granting both inventor's certificates and patents. To claim the right 
of priority on the basis of an application for an inventor's 
certificate in such a country under 35 U.S.C. 119(d), the applicant 
when submitting a claim for such right as specified in this section, 
must include an affidavit or declaration. The affidavit or declaration 
must include a specific statement that, upon an investigation, he or 
she is satisfied that to the best of his or her knowledge, the 
applicant, when filing the application for the inventor's certificate, 
had the option to file an application for either a patent or an 
inventor's certificate as to the subject matter of the identified claim 
or claims forming the basis for the claim of priority.
    (l) Time periods not extendable. The time periods set forth in this 
section are not extendable.

    Dated: March 7, 2013.
Teresa Stanek Rea,
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.
[FR Doc. 2013-05815 Filed 3-13-13; 8:45 am]
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