Perfection is Attainable, at Least When It Comes to Patent Priority Claims

Dr. Jon Platt, Esq.

Vince Lombardi Was Wrong – Perfection is Attainable, at Least When It Comes to Patent Priority Claims

Vince Lombardi, the storied coach of the Green Bay Packers, is reported to have said, “Perfection is not attainable, but if we chase perfection we can catch excellence.” Clearly Vince Lombardi never practiced patent law (his degree from Fordham University was in business), because when it comes to perfecting a claim to foreign (non-US) priority in a patent application, perfection of the priority claim is not only attainable, it is actually necessary for the priority claim to be valid.

The entitlement to the benefit of non-US patent applications are covered in 35 USC 119(a)-(d) and (f). Generally, a patent application in the US can claim priority to (have the effective filing date of) an application filed in another country up to 12 months before the filing of the US application (a period that may be extended by an additional two months by payment of additional government fees if the delay in filing the US was unintentional). But to be valid the priority claim must be timely made, and must be perfected by the USPTO receiving a certified copy of the non-US priority application.

The rules covering priority claims are set forth in 37 CFR 1.55. The time for making a priority claim to a non-US application is the later of 4 months from the US filing, or 16 months from the filing of the non-US priority application, whichever is later. The priority claim is generally made in an application data sheet (ADS) filed along with the US application, so this deadline is usually not an issue, as long as US counsel has been informed of the foreign priority claim. (For a national-phase entry in the US of a Patent Cooperation Treaty (PCT) application, the non-US priority should also be listed on the ADS.)  If this deadline is missed unintentionally, it is still possible to make a late claim for priority as set forth in 37 CFR 1.55(e), which requires payment of a significant government fee (currently $2,100 for a large entity).

In addition to making the priority claim, the USPTO must be provided with a certified copy of the non-US priority application (unless an exception applies, as discussed below). The deadline for providing the certified copy (which must be sent as a physical copy, not electronically filed) is generally the same as the deadline discussed in the previous paragraph for making the priority claim, the later of 4 months from the US filing (or if appropriate, from the US national-stage entry of a PCT application), or 16 months from the filing of the non-US priority application. Again there is the possibility of submitting the certified copy after the deadline, here along with a petition showing “good and sufficient cause for the delay” (a low standard), 37 CFR 1.55(f)(3), along with a modest petition fee (currently $220 for a large entity). Further, the deadline can be extended by submitting an “interim” non-certified copy of the priority application, to be later followed by a certified copy filed during the pendency of the application, 37 CFR 1.55(j).

But significant exceptions exist to the requirement for providing a physical copy of the priority application. If a copy if the non-US priority application was provided in a parent non-provisional application from which the present application claims priority (as a continuation, divisional, or continuation in part), then the requirement for providing a certified copy is considered satisfied if “such prior-filed nonprovisional application is identified as containing a certified copy of the foreign application,” 37 CFR 1.55(h).

More importantly, the USPTO and many non-US patent offices participate in a document exchange program (PDX), allowing the USPTO to obtain copies of priority applications directly from other intellectual property offices, upon request by the applicant. The easiest way to take advantage is to provide on the ADS the WIPO Digital Access Service (WIPO DAS, or just DAS). This triggers an attempt by the USPTO to attempt to obtain the document, as is stated in the ADS: “When priority is claimed to a foreign application that is eligible for retrieval under the priority document exchange program (PDX) the information will be used by the Office to automatically attempt retrieval pursuant to 37 CFR 1.55(i)(1) and (2).” But the ultimate responsibility rests with the applicant for ensuring that the USPTO receives the priority application in a timely fashion.

It should be noted that it is also possible to perfect a priority claim after issuance of a patent using a certificate of correction or by pursuing reissue of the patent, see MPEP 216.01, but a far better approach is to assure that the priority claim is properly perfected before (and hopefully long before) a patent issues.

Although Coach Vince Lombardi may have been wrong about perfection (as least as applied perfection of foreign priority claims for patent applications), another quote of his without question is applicable to patent law: “You don't do things right once in a while. You do things right all the time.” Details matter, and at Renner Otto we pay attention to the details in our practice, in the representation of our clients.

At Renner Otto, the oldest intellectual property firm in Cleveland, we specialize in assisting our clients as they develop efficient Intellectual Property strategies that are tailored to their business’s needs. Our attorneys are knowledgeable on a wide range of domestic and international IP issues, and we partner with Firms around the world to better serve our clients.

Someone from the Renner Otto team would be happy to discuss this topic or any related Intellectual Property matters.

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