Posts Tagged: "foreign priority"

Change in the Electronic Retrieval Method for Priority Documents between USPTO and KIPO

Effective December 1, 2018, electronic retrieval of priority documents between the United States Patent and Trademark Office (USPTO) and the Korean Intellectual Property Office (KIPO) will be managed via the World Intellectual Property Organization (WIPO) Digital Access Service (DAS), in accordance with the WIPO DAS agreement established on April 20, 2009. The certified copy requirement is considered satisfied when a foreign priority document is retrieved electronically via the WIPO DAS service during pendency of the U.S. application. There is no fee for this service and participation for a particular application is voluntary.

USPTO changes method for correcting foreign priority claims

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.

Foreign Priority Applications at the USPTO

Japan is also the country with the greatest number of foreign priority patent applications at the USPTO. With almost 1.1 million total foreign priority filings and over 389,000 foreign priority filings with the USPTO for utility patents since 2005, Japan is second only to domestic US patent applicants in terms of volume. While quantity does not always mean quality, Japanese filers are also the most successful in front of the USPTO with nearly 78% of patent applications allowed overall and nearly 79% of utility patent applications allowed since 2005.

USPTO Proposes New Rules to Implement Patent Law Treaty

The notable changes in the PLTIA to implement the PLT can be generally broken down into four major categories, although there are all kinds of nuance as you probably could have guessed. Nevertheless, the categories are: (1) Changes pertaining to a patent application filing date; (2) changes pertaining to the revival of abandoned applications and acceptance of delayed maintenance fee payments; (3) changes pertaining to the restoration of the right of priority application to a foreign application or the benefit of a provisional application; and (4) changes to require that an application be in condition for examination within eight months of filing or lose patent term adjustment.

The AIA is the First Universally Equal Patent Law in the World

The AIA is the tough patent law for the U.S. because of the following reasons: (1) U.S. applicants cannot get benefit of the standard and absolute grace periods on the earliest effective filing date in a foreign countries whereas foreign applicant can get benefit of their own standard grace period (usually six months) and complete benefit of AIA’s standard and absolute grace periods in the U.S. on the earliest effective filing date. (2) U.S. patents claiming foreign priority becomes stronger prior art under AIA §102 (d). (3) Prior art of public use and on sale is now worldwide activity.