[Federal Register Volume 80, Number 193 (Tuesday, October 6, 2015)]
[Notices]
[Pages 60367-60368]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-25407]


-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

 Patent and Trademark Office

[Docket No. PTO-P-2015-0049]


Change in Practice Regarding Correction of Foreign Priority 
Claims

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

-----------------------------------------------------------------------

SUMMARY: The American Inventors Protection Act of 1999 (AIPA) provided 
for publication of patent applications at eighteen months from the 
earliest filing date for which a benefit is claimed. Thus, the patent 
laws and regulations require that foreign priority or domestic benefit 
claims, specifying the application number, country (or intellectual 
property authority), and filing date of any foreign application for 
which priority is claimed and the application number of any domestic 
application for which benefit is claimed, be submitted in a timely 
manner to allow for publication at eighteen months from the earliest 
filing date for which a benefit is claimed. It has been United States 
Patent and Trademark Office (USPTO) practice to require that any 
correction of the application number in a domestic benefit claim after 
the time period for filing a priority or benefit claim be 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 time period for filing a priority or benefit claim without 
such a petition. This dissimilar treatment of the correction of foreign 
priority claims and domestic benefit claims results in the publication 
of a corrected patent application publication reflecting the accurate 
domestic benefit claim information whenever an applicant corrects the 
application number in a domestic benefit claim in a pending 
application, but not whenever an applicant corrects the application 
number of the foreign application in a foreign priority claim. The 
rationale for the practice of permitting correction of the application 
number in a foreign priority claim without a petition was because the 
filing date of a prior foreign patent application did not affect the 
effective prior art date of a U.S. patent application publication and 
because the USPTO schedules publication of an application with the 
filing date provided by applicant in a foreign priority claim. The 
Leahy-Smith America Invents Act (AIA), however, now 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 
thus now require that any correction of the identification of the 
foreign application (by application number, country (or intellectual 
property authority), and filing date) in a foreign priority claim after 
the time period for filing a priority or benefit claim be via a 
petition to accept an unintentionally delayed priority claim, and once 
the petition is granted in a pending application, will now publish a 
corrected patent application publication reflecting the accurate 
foreign priority claim information. Requiring a petition and publishing 
a corrected patent application publication whenever an applicant 
corrects the application number in a foreign priority claim or a 
domestic benefit claim will provide for common treatment of the 
correction of the identification of a foreign or domestic application 
in a priority or benefit claim. The publication of a corrected patent 
application publication by the USPTO will result in corrected patent 
application publications with accurate foreign priority information 
which will benefit examiners, applicants and members of the public in 
assessing the effective prior art date for subject matter disclosed in 
a U.S. patent application publication.

DATES: Effective Date: The change in this notice takes effect on 
November 5, 2015. Any corrections to the foreign application number in 
a foreign priority claim that were previously accepted are not affected 
by this change in practice.

FOR FURTHER INFORMATION CONTACT: Eugenia A. Jones, Senior Legal 
Advisor, by telephone at (571) 272-7727, or Erin M. Harriman, Legal 
Advisor, by telephone (571) 272-7747, Office of Patent Legal 
Administration, Office of the Deputy Commissioner for Patent 
Examination Policy, or by mail addressed to: Mail Stop Comments--
Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-
1450, marked to the attention of Eugenia A. Jones.

SUPPLEMENTARY INFORMATION: Background: In view of the AIPA, foreign 
priority or domestic benefit claims must be submitted in a timely 
manner to allow for publication of patent applications at eighteen 
months from the earliest filing date for which a benefit is claimed. 
See 35 U.S.C. 122(b). The requirements for making a domestic benefit 
claim are set forth in 37 CFR 1.78 and the requirements for making a 
foreign priority claim are set forth in 37 CFR 1.55. As provided in 37 
CFR 1.55 and 1.78, the claim for priority or benefit 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

[[Page 60368]]

application (hereinafter referred to as the 4/16 month time period) in 
a patent application filed under 35 U.S.C. 111(a). Note that the 4/16 
month time period does not apply to an application for a design patent 
or an application filed before November 29, 2000. A claim for foreign 
priority must identify the foreign application by specifying the 
application number, country (or intellectual property authority), and 
the filing date (day, month, and year) of the foreign application. See 
37 CFR 1.55(d).
    It has been USPTO practice to require that any correction of the 
application number in a domestic benefit claim after the 4/16 month 
time period be 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 time period without such a 
petition (discussed in the Eighteen-Month Publication Questions and 
Answers on the USPTO Web site). This dissimilar treatment of the 
correction of foreign priority claims and domestic benefit claims 
results in the publication of a corrected patent application 
publication reflecting the accurate domestic benefit claim information 
whenever an applicant corrects the application number in a domestic 
benefit claim in a pending application, but not whenever an applicant 
corrects the application number of the foreign application in a foreign 
priority claim. The rationale for this practice was because the USPTO 
was able to schedule the application for publication with the filing 
date of the foreign application provided by applicant and the prior art 
date under pre-AIA 35 U.S.C. 102(e) of the publication was not 
affected. See the Patent FAQs Web page available at http://www.uspto.gov/help/patent-help.
    Under the first inventor to file provisions of the AIA, a U.S. 
patent or patent application publication may be effective as prior art 
as of the filing date of an earlier foreign application. See AIA 35 
U.S.C. 102(d) and the Manual of Patent Examining Procedure (MPEP) (9th 
Ed. 2014), Section 2154.01(b). Therefore, the rationale for not 
requiring a petition to correct an error in the application number of a 
foreign priority claim is no longer appropriate. In view of the first 
inventor to file provisions of the AIA, 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.
    Change in Practice: The USPTO will now require compliance with all 
the requirements of 37 CFR 1.55 and thus require a petition to accept 
an unintentionally delayed claim for foreign priority under 37 CFR 
1.55(e) in order to correct any error in a foreign priority claim if 
the correction is being made after the 4/16 month time period. This is 
consistent with the practice for correcting any error in a domestic 
benefit claim under 37 CFR 1.78 if the correction is being made after 
the 4/16 month time period and will result in a corrected patent 
application publication with the accurate foreign priority information 
being published by the USPTO for a pending application.
    Requiring compliance with all the requirements of 37 CFR 1.55 will 
create consistency between the practices under 37 CFR 1.55 and 1.78 and 
will result in corrected patent application publications with accurate 
foreign priority information being published by the USPTO. A U.S. 
patent application publication which claims priority to a foreign 
application that identifies the correct foreign application number, 
country (or intellectual property authority), and date of filing will 
help ensure that proper examination of patent applications being 
examined under the first inventor to file provisions of the AIA will 
occur. Identification of the correct foreign priority information on 
U.S. patent application publications will also minimize the burden on 
examiners and members of the public in obtaining a copy of the correct 
foreign priority document in the event that a copy is not available in 
the application file of the reference. This change in practice will 
benefit examiners, applicants, and members of the public by reducing 
any uncertainty caused by the dissimilar treatment of the correction of 
foreign priority claims and domestic benefit claims and by ensuring 
that a corrected U.S. patent application publication reflecting 
accurate foreign priority information will be published by the USPTO 
enabling accurate assessment of the effective prior art date for 
subject matter disclosed in U.S. patent application publications.
    The Patent FAQs will be modified to reflect that a petition under 
37 CFR 1.55(e), including the petition fee, will be required to correct 
any error in a foreign priority claim after the 4/16 month period of 37 
CFR 1.55(d).

    Dated: September 26, 2015.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2015-25407 Filed 10-5-15; 8:45 am]
 BILLING CODE 3510-16-P