Time For Filing Certified Copy – Application Filed On or After March 16, 2013

[Editor Note: See

MPEP § 215.03

for information

regarding the time for filing a certified copy in an application filed before March

16, 2013.]

37 CFR 1.55 Claim for foreign priority

*****

(f)

Time for filing certified copy of foreign application—

(1)

Application 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, in an original application under

35 U.S.C. 111(a)

filed on or after March 16, 2013, except as provided in paragraphs (h),

(i), and (j) of this section. The time period in this paragraph does not

apply in a design application.

(2)

Application under

35 U.S.C.

371

.

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 in an international application entering

the national stage under

35 U.S.C. 371

. If a

certified copy of the foreign application is not filed during the

international stage in an international application in which the national

stage commenced on or after December 18, 2013, a certified copy of the

foreign application must be filed within the later of four months from

the date on which the national stage commenced under

35 U.S.C.

371(b)

or

(f)

(§

1.491(a)

), four months from the date of the

initial submission under

35 U.S.C. 371

to

enter the national stage, or sixteen months from the filing date of the

prior foreign application, except as provided in paragraphs (h), (i), and

(j) of this section.

(3) If a certified copy of the foreign

application is not filed within the time period specified [in] paragraph

(f)(1) of this section in an application under

35 U.S.C.

111(a)

or within the period specified in paragraph

U.S.C. 371

to

enter the national stage, or sixteen months from the filing date of the

prior foreign application, except as provided in paragraphs (h), (i), and

(j) of this section.

(3) If a certified copy of the foreign

application is not filed within the time period specified [in] paragraph

(f)(1) of this section in an application under

35 U.S.C.

111(a)

or within the period specified in paragraph

(f)(2) of this section in an international application entering the

national stage under

35 U.S.C. 371

, and an

exception in paragraph (h), (i), or (j) of this section is 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 §

1.17(g)

.

*****

For applications filed under

35 U.S.C.

111(a)

on or after March 16, 2013,

37 CFR

1.55(f)(1)

sets forth the time period for filing a certified copy

of the foreign application. The time period in

37 CFR

1.55(f)(1)

does not apply in design applications.

37 CFR

1.55(f)(1)

requires that a certified copy of the foreign

application 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 with

three exceptions. For international applications entering the national stage under

35 U.S.C.

371

,

37 CFR 1.55(f)(2)

sets forth the

time period for filing a certified copy of the foreign application.

37 CFR

1.55(f)(2)

requires a certified copy of the foreign application be

filed within the time limit set forth in the PCT and the Regulations under the PCT, and

if a certified copy is not filed during international stage in an international

application in which the national stage commenced on or after December 18, 2013, a

certified copy of the foreign application must be filed within the later of four months

from the date on which the national stage commenced under

35 U.S.C. 371(b)

or

time limit set forth in the PCT and the Regulations under the PCT, and

if a certified copy is not filed during international stage in an international

application in which the national stage commenced on or after December 18, 2013, a

certified copy of the foreign application must be filed within the later of four months

from the date on which the national stage commenced under

35 U.S.C. 371(b)

or

(f)

, four months from the date of the initial submission under

35 U.S.C.

371

to enter the national stage, of sixteen months from the filing

date of the prior foreign application with three exceptions. As provided in

37 CFR

1.55(h)

,

(i)

, or

(j)

, the

time period requirement in

37 CFR 1.55(f)(1)

or

(f)(2)

does not apply if:

(1) a prior-filed nonprovisional application for

which a benefit is claimed under

35 U.S.C. 120

,

121

,

365(c)

or

386(c)

contains a certified copy of the foreign application

and such prior-filed nonprovisional application is identified as containing a

certified copy of the foreign application, or in the case of a reissue

application, if the patent for which reissue is sought satisfies the requirement

for a certified copy and such patent is identified as containing the certified

copy (see

37 CFR 1.55(h)

and

MPEP § 215

, subsection III);

(2) the priority application was filed in a

participating foreign intellectual property office, or if 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, and the Office either receives a copy of the foreign application from the

participating foreign intellectual property office or a certified copy of the

foreign application during the pendency of the application and before the patent

is granted (see

37 CFR 1.55(i)

and

MPEP § 215.02(a)

); or

filed in a participating

foreign intellectual property office that permits the Office to obtain such a

copy, and the Office either receives a copy of the foreign application from the

participating foreign intellectual property office or a certified copy of the

foreign application during the pendency of the application and before the patent

is granted (see

37 CFR 1.55(i)

and

MPEP § 215.02(a)

); or

(3) the applicant provides an interim copy of the

original foreign application 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 files a certified copy of the foreign application within

the pendency of the application and before the patent is granted (see

37

CFR 1.55(j)

and

MPEP §

215.02(b)

).

Because U.S. patent application publications (as well as

U.S. patents) will have a prior art effect as of the earliest priority date (for subject

matter disclosed in the priority application) with respect to applications subject to

AIA

35 U.S.C.

102

, the Office needs to ensure that it has a copy of the priority

application by the time of publication. The time period of four months from the actual

filing date of the application or sixteen months from the filing date of the prior

foreign application is consistent with the international norm for when the certified

copy of the foreign application needs to be filed in an application. See

PCT Rule

17.1(a)

.

If a certified copy of the foreign application is not

filed within the time period specified in

37 CFR 1.55(f)(1)

or

(f)(2)

, as appropriate, and the exceptions in

37 CFR

1.55(h)

,

(i)

, and

rom the filing date of the prior

foreign application is consistent with the international norm for when the certified

copy of the foreign application needs to be filed in an application. See

PCT Rule

17.1(a)

.

If a certified copy of the foreign application is not

filed within the time period specified in

37 CFR 1.55(f)(1)

or

(f)(2)

, as appropriate, and the exceptions in

37 CFR

1.55(h)

,

(i)

, and

(j)

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

37 CFR 1.17(g)

. This provision for

the belated filing of a certified copy of the foreign application obviates the need for

a petition under

37

CFR 1.183

to waive or suspend a requirement of the regulations in

such a situation.

37 CFR 1.55(f)

provides a lower

standard (good and sufficient cause versus an extraordinary situation) and lower fee

(petition fee set forth in

37 CFR 1.17(g)

versus the petition

fee set forth in

37 CFR 1.17(f)

) than petitions under

37 CFR

1.183

.

See

MPEP § 213.06

for additional

information regarding filing a certified copy in a national stage application

(

35 U.S.C.

371

).