More Covid-19 Relief Is Now Available Regarding Perfecting Foreign Priority Claims by Tina Wang and Agatha H. Liu, February 19, 2021

Almost a year since the COVID-19 outbreak, the pandemic continues to disrupt business operations, including operations at intellectual property (IP) offices around the world. For example, some foreign IP offices are not issuing paper-certified copies of foreign patent applications because of the pandemic.

For many IP offices, including the United States Patent and Trademark Office (USPTO), when a domestic patent application claims priority to a foreign patent application, a copy of the foreign patent application certified by the foreign IP office is required by the domestic IP office. The certified copy generally can be (A) submitted to the domestic IP office in original paper form by the applicant of the domestic patent application, or (B) electronically retrieved by the domestic IP office from a digital repository, such as through an electronic priority document exchange (PDX) program. Therefore, the non-issuing of a paper-certified copy causes a problem when the applicant needs to perfect the foreign priority claim by obtaining a paper-certified copy of the foreign patent application from a foreign IP office that does not participate in the PDX or a similar program.

For example, the German Patent and Trade Mark Office (DPMA) and the African Regional IP Office (ARIPO), which do not participate in a PDX program with the USPTO, may not be providing paper documents due to current closure or delaying paper correspondence until further notice in response to the pandemic. For further Intellectual Property Notebook information regarding the PDX, refer to this USPTO resource, for example. For further information regarding the operational status of IP offices throughout the world, refer to this WIPO resource, for example.

As of January 28, 2020, the USPTO is suspending the requirement in 37 CFR 1.55(f) and 1.55(g) for filing certified copies of foreign patent applications filed in foreign IP offices that do not participate in a PDX program with the USPTO, under certain conditions. The suspension provides a solution to the problem noted above, to potentially eliminate a source of concern for applicants of patent applications.

Please find below a list of frequently asked questions and answers regarding the suspension of the certified copy requirement. If you have additional questions or require assistance with your intellectual property matters, please do not hesitate to contact our office.


Q: What is a PDX program?

A: A PDX program allows for electronic transmissions of priority documents between the USPTO and foreign IP offices. The USPTO retrieves foreign priority applications via two modes of document exchange: (A) exchanges with the European Patent Office via Direct Bilateral Exchange and (B) exchanges with participating offices via the World Intellectual Property Organization Digital Access Service (WIPO DAS) Exchange.


Q: Is the suspension of the certified copy requirement available for an application filed in a foreign IP office that participates in a PDX program with the USPTO? Intellectual Property Notebook

A: No, the suspension is not available as the USPTO is able to retrieve priority documents via a PDX program.


Q: What is the timing requirement in 37 CFR 1.55(f) and 1.55(g) for filing a certified copy of a foreign patent application (which can now be relaxed via the suspension of the certified copy requirement)?

A: Although there are exceptions, generally, for original patent applications filed on or after March 16, 2013 and for national stage applications filed under 35 U.S.C. 371 on or after December 18, 2013, priority claims and certified foreign priority documents must be filed within sixteen (16) months of foreign priority dates (“general priority claim deadline”), which is often four months from the actual filing date. If a certified copy of a foreign patent application is not timely filed, then the certified copy of the foreign patent application must be accompanied by a petition including a showing of good and sufficient cause for the delay and by a petition fee.


Q: What are the conditions under which the certified copy requirement can be suspended?

A: There are several criteria that an applicant of a patent application (“Applicant”) must meet for the USPTO to suspend the certified copy requirement:

  1. Applicant must have filed, via the electronic filing system (EFS) or other means, by the general priority claim deadline noted above (e.g., 16 months from the foreign priority date): (A) an “interim copy” of the foreign patent application, which is clearly labeled as such, and (B) a separate cover sheet identifying the foreign patent application number, country (or IP office), and filing date, and Intellectual Property Notebookstating that the interim copy is a true copy of the original application as filed in the foreign country (or IP office).
  2. Applicant must have, prior to payment of the issue fee for the patent application,requested a certified copy of the foreign priority document from the foreign IP office but is unable to file it on or before paying the issue fee because the foreign IP office was unable to process the request as a result of the COVID-19 pandemic.
  3. Applicant must file a request for suspension of the requirement for submission of the certified copy no later than the date of payment of the issue fee. The
    request must include a statement certifying meeting the first and second criteria
    above. The USPTO has conveniently provided Form PTO/SB/453 to make the
    request.

Q: How is the request for suspension of the certified copy requirement submitted?

A: The request can be submitted via EFS-web using the document description “Relief in Emergency Situations Determined by Dir” (Doc Code PET.RELIEF). The request can also be mailed, directed to Mail Stop Petition, Commissioner for Patents,P.O. Box 1450, Alexandria, VA 22313-1450.


Q: What happens when the request for suspension of the certified copy requirement is granted by the USPTO? Intellectual Property Notebook

A: Upon granting the request for suspension of the certified copy requirement, then the UPSTO proceeds to issue the patent with the foreign priority claim on the front page of the patent.


Q: Is a certified copy still required even if the USPTO has granted the request?

A: Yes, a certified copy must eventually be filed. Applicant must (A) comply with the requirement for obtaining a paper certified copy within two (2) months of the foreign IP office resuming processing requests for paper certified copies, and (B) submit the paper certified copy within one (1) month after the date of the paper certified copy is issued. The burden is on Applicant to ensure that the certified copy is filed within this time period. If the certified copy is submitted after this time period, then a petition including a showing of good and sufficient cause. As your counsel, we assist in tracking the processing schedules of foreign IP offices and otherwise ensuring compliance with all relevant rules.

Disclaimer: This article is purely a public resource of general information that is intended, but not guaranteed, to be correct and complete. It is not intended to be a source of solicitation or legal advice and is for informational and entertainment purposes only. The information is not intended to create, and receipt does not constitute, an attorney-client relationship. The laws of different jurisdictions may be implicated, and facts and circumstances can vary widely. Therefore, the reader should not rely or act upon any information in this article, but should instead seek legal counsel for individualized legal advice. For more information, please contact a firm attorney through www.hickmanbecker.com.