USPTO changes method for correcting foreign priority claims

Earlier today the United States Patent and Trademark Office (USPTO) published a short Federal Register notice titled Change in Practice Regarding Correction of Foreign Priority Claims.

It has been possible to correct a claim of foreign priority. Previously it has been 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 reason for this disparate treatment 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. Therefore, a petition was not required to make a correction to a claim of foreign priority.

The America Invents Act (AIA) changed a great many things relating to patent law, dramatically changing the definition of what is prior art. While many have focused on the move away from first to invent and to first to file as the major change, in the real world the largest change to patent law relates to the date on which a foreign filed patent application is prior art for subsequent applicants. Those familiar with patent law will recall that prior to the AIA the date of an earlier foreign filed patent application was not a prior art date under pre-AIA 35 U.S.C 102(e). After the AIA it is possible, if not likely, that a foreign reference will be prior art as of the foreign filing date.

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In technical terms, the AIA eliminated the so-called Hilmer doctrine. Under the Hilmer doctrine, pre-AIA 35 U.S.C. 102(e) limited the effective filing date for U.S. patents (and published applications) as prior art to their earliest U.S. filing date. In contrast, AIA 35 U.S.C. 102(d) provides that if the U.S. patent, U.S. patent application publication, or WIPO published application claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest such application that describes the subject matter. Therefore, if the subject matter relied upon is described in the application to which there is a priority or benefit claim, a U.S. patent, a U.S. patent application publication, or WIPO published application is effective as prior art as of the filing date of the earliest such foreign patent application, regardless of where filed.

As a result, because the AIA does make foreign priority claims relevant, the USPTO will now require that any correction of the identification of the foreign application (by application number, country, 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. Once the petition is granted in a pending application there will be a publication of a corrected patent application publication reflecting the accurate foreign priority claim information.

This change in the method for correcting foreign priority will take 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.