80 FR 60367 - Change in Practice Regarding Correction of Foreign Priority Claims
DEPARTMENT OF COMMERCE
Patent and Trademark Office Federal Register Volume 80, Issue 193 (October 6, 2015)
Patent and Trademark Office
Federal Register Volume 80, Issue 193 (October 6, 2015)
| Page Range | 60367-60368 | |
| FR Document | 2015-25407 |
[Federal Register Volume 80, Number 193 (Tuesday, October 6, 2015)] [Notices] [Pages 60367-60368] From the Federal Register Online [www.thefederalregister.org] [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
![Federal Register / Vol. 80, No. 193 / Tuesday, October 6, 2015 / Notices 60367
II. Method of Collection SUMMARY: The American Inventors correction of the identification of the
The information will be collected on Protection Act of 1999 (AIPA) provided foreign application (by application
forms submitted electronically or by for publication of patent applications at number, country (or intellectual
mail. eighteen months from the earliest filing property authority), and filing date) in a
date for which a benefit is claimed. foreign priority claim after the time
III. Data Thus, the patent laws and regulations period for filing a priority or benefit
OMB Control Number: 0648–0041. require that foreign priority or domestic claim be via a petition to accept an
Form Numbers: NOAA Form 34–82, benefit claims, specifying the unintentionally delayed priority claim,
NOAA Form 88–14. application number, country (or and once the petition is granted in a
Type of Review: Regular submission intellectual property authority), and pending application, will now publish a
(extension of a current information filing date of any foreign application for corrected patent application publication
collection). which priority is claimed and the reflecting the accurate foreign priority
Affected Public: Business or other for- application number of any domestic claim information. Requiring a petition
profit organizations. application for which benefit is claimed, and publishing a corrected patent
Estimated Number of Respondents: be submitted in a timely manner to application publication whenever an
3,000. allow for publication at eighteen months applicant corrects the application
Estimated Time per Response: NOAA from the earliest filing date for which a number in a foreign priority claim or a
Form 34–82, 20 minutes; benefit is claimed. It has been United domestic benefit claim will provide for
NOAA Form 88–14, 3.5 hours for States Patent and Trademark Office common treatment of the correction of
agreements and 1 hour for certificate. (USPTO) practice to require that any the identification of a foreign or
Estimated Total Annual Burden domestic application in a priority or
correction of the application number in
Hours: 2,917. benefit claim. The publication of a
Estimated Total Annual Cost to a domestic benefit claim after the time
period for filing a priority or benefit corrected patent application publication
Public: $15,320 in recordkeeping/ by the USPTO will result in corrected
reporting costs. claim be via a petition to accept an
unintentionally delayed benefit claim, patent application publications with
IV. Request for Comments accurate foreign priority information
but to permit correction of the
which will benefit examiners,
Comments are invited on: (a) Whether application number in a foreign priority
applicants and members of the public in
the proposed collection of information claim after the time period for filing a
assessing the effective prior art date for
is necessary for the proper performance priority or benefit claim without such a
subject matter disclosed in a U.S. patent
of the functions of the agency, including petition. This dissimilar treatment of the
application publication.
whether the information shall have correction of foreign priority claims and
DATES: Effective Date: The change in
practical utility; (b) the accuracy of the domestic benefit claims results in the
publication of a corrected patent this notice takes effect on November 5,
agency’s estimate of the burden 2015. Any corrections to the foreign
(including hours and cost) of the application publication reflecting the
accurate domestic benefit claim application number in a foreign priority
proposed collection of information; (c) claim that were previously accepted are
ways to enhance the quality, utility, and information whenever an applicant
corrects the application number in a not affected by this change in practice.
clarity of the information to be FOR FURTHER INFORMATION CONTACT:
collected; and (d) ways to minimize the domestic benefit claim in a pending
application, but not whenever an Eugenia A. Jones, Senior Legal Advisor,
burden of the collection of information by telephone at (571) 272–7727, or Erin
on respondents, including through the applicant corrects the application
number of the foreign application in a M. Harriman, Legal Advisor, by
use of automated collection techniques telephone (571) 272–7747, Office of
or other forms of information foreign priority claim. The rationale for
the practice of permitting correction of Patent Legal Administration, Office of
technology. the Deputy Commissioner for Patent
Comments submitted in response to the application number in a foreign
priority claim without a petition was Examination Policy, or by mail
this notice will be summarized and/or
because the filing date of a prior foreign addressed to: Mail Stop Comments—
included in the request for OMB
patent application did not affect the Patents, Commissioner for Patents, P.O.
approval of this information collection;
effective prior art date of a U.S. patent Box 1450, Alexandria, VA 22313–1450,
they also will become a matter of public
application publication and because the marked to the attention of Eugenia A.
record.
USPTO schedules publication of an Jones.
Dated: September 30, 2015.
application with the filing date SUPPLEMENTARY INFORMATION:
Sarah Brabson, provided by applicant in a foreign Background: In view of the AIPA,
NOAA PRA Clearance Officer. priority claim. The Leahy-Smith foreign priority or domestic benefit
[FR Doc. 2015–25331 Filed 10–5–15; 8:45 am] America Invents Act (AIA), however, claims must be submitted in a timely
BILLING CODE 3510–22–P now provides that the filing date of an manner to allow for publication of
earlier foreign patent application may patent applications at eighteen months
now be the effective prior art date for from the earliest filing date for which a
DEPARTMENT OF COMMERCE subject matter disclosed in a U.S. patent benefit is claimed. See 35 U.S.C. 122(b).
or a U.S. patent application publication. The requirements for making a domestic
Patent and Trademark Office Therefore, U.S. patent application benefit claim are set forth in 37 CFR
[Docket No. PTO–P–2015–0049] publications should reflect accurate 1.78 and the requirements for making a
tkelley on DSK3SPTVN1PROD with NOTICES
foreign priority information to minimize foreign priority claim are set forth in 37
Change in Practice Regarding the burden on examiners and members CFR 1.55. As provided in 37 CFR 1.55
Correction of Foreign Priority Claims of the public in assessing the effective and 1.78, the claim for priority or
AGENCY: United States Patent and prior art date for subject matter benefit must be filed within the later of
Trademark Office, Commerce. disclosed in such U.S. patent four months from the actual filing date
application publications. The USPTO of the application or sixteen months
ACTION: Notice.
will thus now require that any from the filing date of the prior
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![60368 Federal Register / Vol. 80, No. 193 / Tuesday, October 6, 2015 / Notices
application (hereinafter referred to as Change in Practice: The USPTO will Dated: September 26, 2015.
the 4/16 month time period) in a patent now require compliance with all the Michelle K. Lee,
application filed under 35 U.S.C. 111(a). requirements of 37 CFR 1.55 and thus Under Secretary of Commerce for Intellectual
Note that the 4/16 month time period require a petition to accept an Property and Director of the United States
does not apply to an application for a unintentionally delayed claim for Patent and Trademark Office.
design patent or an application filed foreign priority under 37 CFR 1.55(e) in [FR Doc. 2015–25407 Filed 10–5–15; 8:45 am]
before November 29, 2000. A claim for order to correct any error in a foreign BILLING CODE 3510–16–P
foreign priority must identify the foreign priority claim if the correction is being
application by specifying the made after the 4/16 month time period.
application number, country (or This is consistent with the practice for DEPARTMENT OF EDUCATION
intellectual property authority), and the correcting any error in a domestic
filing date (day, month, and year) of the [Docket No.: ED–2015–ICCD–0118]
benefit claim under 37 CFR 1.78 if the
foreign application. See 37 CFR 1.55(d).
correction is being made after the 4/16 Agency Information Collection
It has been USPTO practice to require month time period and will result in a
that any correction of the application Activities; Comment Request;
corrected patent application publication Application for Grants Under the
number in a domestic benefit claim after
with the accurate foreign priority Talent Search Program
the 4/16 month time period be via a
information being published by the
petition to accept an unintentionally AGENCY: Office of Postsecondary
delayed benefit claim, but to permit USPTO for a pending application.
Education (OPE), Department of
correction of the application number in Requiring compliance with all the Education (ED).
a foreign priority claim after the 4/16 requirements of 37 CFR 1.55 will create ACTION: Notice.
month time period without such a consistency between the practices under
petition (discussed in the Eighteen- 37 CFR 1.55 and 1.78 and will result in SUMMARY: In accordance with the
Month Publication Questions and corrected patent application Paperwork Reduction Act of 1995 (44
Answers on the USPTO Web site). This publications with accurate foreign U.S.C. chapter 3501 et seq.), ED is
dissimilar treatment of the correction of priority information being published by proposing a reinstatement of a
foreign priority claims and domestic the USPTO. A U.S. patent application previously approved information
benefit claims results in the publication publication which claims priority to a collection.
of a corrected patent application foreign application that identifies the DATES: Interested persons are invited to
publication reflecting the accurate correct foreign application number, submit comments on or before
domestic benefit claim information country (or intellectual property December 7, 2015.
whenever an applicant corrects the authority), and date of filing will help
application number in a domestic ADDRESSES: To access and review all the
ensure that proper examination of documents related to the information
benefit claim in a pending application,
patent applications being examined collection listed in this notice, please
but not whenever an applicant corrects
under the first inventor to file use http://www.regulations.gov by
the application number of the foreign
provisions of the AIA will occur. searching the Docket ID number ED–
application in a foreign priority claim.
The rationale for this practice was Identification of the correct foreign 2015–ICCD–0118. Comments submitted
because the USPTO was able to priority information on U.S. patent in response to this notice should be
schedule the application for publication application publications will also submitted electronically through the
with the filing date of the foreign minimize the burden on examiners and Federal eRulemaking Portal at http://
application provided by applicant and members of the public in obtaining a www.regulations.gov by selecting the
the prior art date under pre-AIA 35 copy of the correct foreign priority Docket ID number or via postal mail,
U.S.C. 102(e) of the publication was not document in the event that a copy is not commercial delivery, or hand delivery.
affected. See the Patent FAQs Web page available in the application file of the Please note that comments submitted by
available at http://www.uspto.gov/help/ reference. This change in practice will fax or email and those submitted after
patent-help. benefit examiners, applicants, and the comment period will not be
Under the first inventor to file members of the public by reducing any accepted. Written requests for
provisions of the AIA, a U.S. patent or uncertainty caused by the dissimilar information or comments submitted by
patent application publication may be treatment of the correction of foreign postal mail or delivery should be
effective as prior art as of the filing date priority claims and domestic benefit addressed to the Director of the
of an earlier foreign application. See Information Collection Clearance
claims and by ensuring that a corrected
AIA 35 U.S.C. 102(d) and the Manual of Division, U.S. Department of Education,
U.S. patent application publication
Patent Examining Procedure (MPEP) 400 Maryland Avenue SW., LBJ, Room
reflecting accurate foreign priority
(9th Ed. 2014), Section 2154.01(b). 2E103, Washington, DC 20202–4537.
information will be published by the
Therefore, the rationale for not requiring FOR FURTHER INFORMATION CONTACT: For
USPTO enabling accurate assessment of
a petition to correct an error in the specific questions related to collection
the effective prior art date for subject
application number of a foreign priority activities, please contact Craig Pooler,
matter disclosed in U.S. patent
claim is no longer appropriate. In view 202–502–7640.
application publications.
of the first inventor to file provisions of SUPPLEMENTARY INFORMATION: The
the AIA, U.S. patent application The Patent FAQs will be modified to Department of Education (ED), in
reflect that a petition under 37 CFR
tkelley on DSK3SPTVN1PROD with NOTICES
publications should reflect accurate accordance with the Paperwork
foreign priority information to minimize 1.55(e), including the petition fee, will Reduction Act of 1995 (PRA) (44 U.S.C.
the burden on examiners and members be required to correct any error in a 3506(c)(2)(A)), provides the general
of the public in assessing the effective foreign priority claim after the 4/16 public and Federal agencies with an
prior art date for subject matter month period of 37 CFR 1.55(d). opportunity to comment on proposed,
disclosed in such U.S. patent revised, and continuing collections of
application publications. information. This helps the Department
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Document Created: 2015-12-15 08:50:52
Document Modified: 2015-12-15 08:50:52
| Category | Regulatory Information | |
| Collection | Federal Register | |
| sudoc Class | AE 2.7: GS 4.107: AE 2.106: | |
| Publisher | Office of the Federal Register, National Archives and Records Administration | |
| Section | Notices | |
| Action | Notice. | |
| 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 | |
| FR Citation | 80 FR 60367 |
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