1. AIA Final Rules
Submission of Certified Foreign Priority
Documents and Translations Under the AIA
March 20, 2013

2. Foreign Priority Documents

3. Foreign Priority Documents- Pre-AIA (“Old”)
• Certified Copy of Foreign Priority Document
– Needed to be filed before patent issued
– Filed after payment of issue fee- pay additional
fee
 No foreign priority claim on face of patent
 Required Certificate of Correction to show foreign
priority
– Patent Document Exchange (PDX) program
 USPTO would automatically pull copy from
participating foreign patent offices

4. Foreign Priority Documents- Pre-AIA (“Old”)
• Translation of Non-English Foreign Priority
Document
– Generally, not required
– BUT, could be required by USPTO- e.g.,
intervening prior art, interference, etc.

5. Certified Foreign Priority Doc.- Old Timing
Certified
Foreign
Fee
Priority
Doc.
Filed Paid Issued
Application
Issue
Fee

6. Foreign Priority Documents- AIA (“New”)
• Certified Copy of Foreign Priority Document
Needs to be filed within the later of:
– 4 Months from Actual Filing Date OR
– 16 Months from Foreign Filing Priority Date
See, 37 CFR 1.55(f)
Note: For the examples, the slides will generally
identify the 4 Month deadline for the sake of
brevity.

7. Certified Foreign Priority Doc.- AIA Timing
Certified
Foreign
Priority
Doc.
Filed Paid Issued
4 Months
(or 16 from
priority date)
Application
Issue
Fee

8. Foreign Priority Documents- AIA (“New”)
• Exception 1- Do not need to submit certified
copy within 4/16 month deadline
– Foreign Priority Application in PDX Participating
Patent Office
 Originally filed there, OR
 Copy of foreign priority document filed there; AND
– USPTO Receives Before Patent is Granted
 Copy of the foreign priority application from the PDX
Patent Office, OR
 Certified copy of foreign priority document.
• Current PDX Offices- EPO, JPO, KIPO, &
WIPO

9. Foreign Priority Documents- AIA (“New”)
• Foreign Priority Application in PDX
Participating Patent Office
– Request normally not required because USPTO
will automatically request based on ADS
– Exception: need separate Request to Retrieve
(PTO/SB/38)
 where foreign priority application not originally filed
in PDX participating Patent Office, but a copy was
later filed in a PDX participating Patent Office
• USPTO can’t electronically retrieve Design
Patent Applications
• PCT applications- limited receiving offices
– Denmark, Finland, IB, and Sweden.

10. Certified
Certified Foreign Priority Doc.- AIA Timing
Foreign Patent Document
Sure!
Priority Please Exchange
Doc. Send
Filed Filed Issued
ADS
4 Months
ADS
Priority Application
App.

11. Certified Foreign Priority Doc.- AIA Timing
Huh? Certified Patent Document
ZZZZ… Foreign Exchange
Priority
Doc.
Filed Filed Issued
ADS
4 Months
ADS
Priority Application
App.

12. Foreign Priority Documents- AIA (“New”)
• Exception 2- Do not need to submit certified
copy within 4/16 month deadline
– File “interim copy” of original foreign application
within 4/16 month deadline period, AND
– File certified copy before patent is granted.
Note: To use “interim copy” exception, no
requirement that applicant is unable to obtain a
certified copy.
• Submission
– Need to clearly label “Interim Copy”
– Need Cover Sheet listing application
no., country, filing date, and statement that “the
copy filed is a true copy of the original
application as filed in the foreign country.” p. 29.

13. Certified Foreign Priority Doc.- AIA Timing
Oui, but Okay, send
Certified
need more Interim Copy
Send
what you Foreign
time! filed.
Certified
Copy Priority
Doc.
Filed Filed Issued
ADS
4 Months
ADS
Priority Application
App.

14. Foreign Priority Documents- AIA (“New”)
• Late Submission of Certified Copy
– 37 CFR 1.55(f)
• Requirements- before payment of Issue Fee
– Certified copy of foreign priority document
– Petition- “good and sufficient cause”
 lower standard than “extraordinary situation”
– Fee under 37 CFR 1.17(g)- $200
 lower fee than $400 fee in 37 CFR 1.17(f)
• Requirements- after payment of Issue Fee
– Same as above
– Processing fee under 37 CFR 1.17(i)
– Need Certificate of Correction to add priority
 patent issued without priority claim

15. Certified Foreign Priority Doc.- AIA Timing
Certified
OOPS!
Foreign Processing
Fee
Priority
Fee Petition Doc.
Filed Paid Issued
Filed
ADS
4 Months
ADS
Priority Application
App. Issue
Fee

16. Foreign Priority Documents- AIA (“New”)
• USPTO May Require Earlier Submission
– Interference
– Overcome date of reference cited by examiner
– “Deemed necessary” by examiner
• English Language Translation of Foreign
Priority Documents Not in English
– Interference
– Overcome date of reference cited by examiner
– Required by examiner
• Requires statement that translation is accurate

17. More Information and Questions…
• Contact: Chuck Schmal
Phone: (317) 713-4954
Email: cschmal@uspatent.com

18. AIA Final Rules
Submission of Certified Foreign Priority
Documents and Translations Under the AIA
March 20, 2013
©2013 Woodard, Emhardt, Moriarty, McNett & Henry LLP