USPTO changes method for correcting foreign priority claims

By Gene Quinn
October 6, 2015

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.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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Discuss this

There are currently 4 Comments comments.

  1. Edward Heller October 6, 2015 8:36 pm

    Gene, 119(b)(2) regards the failure to make a claim for benefit a waiver subject to “procedures” for accepting an unintentionally delayed claim.

    102(d) does not require a claim to be made at all for their to be prior art effect, just that the application be “entitled” to claim. In other words, the claim itself, and whether it is effective for priority purposes, seems irrelevant.

    So, I do not understand the PTO new rules for “correcting” a benefit claim. By statute, the patent or application will have a prior art effect as of any foreign application to which it was entitled to claim priority regardless of whether the claim was made, was waived, and whether or not the priority claim was effective in Wertheim sense.

  2. Rookie Need Help October 7, 2015 3:45 am

    Could anywhere here explain, in plain English, how this is going to affect patent practices?

  3. Fred October 7, 2015 11:21 am

    …so the PTO can charge the $1700 fee for correction of foreign priority claims now, too….

  4. Edward Heller October 7, 2015 3:40 pm

    Fred, cynical. But it seems the PTO simply wants published applications to contain accurate priority/benefit information. They seem to believe that imposing harsh penalties to correct typos in the priority claim will somehow incentivize applicants to be more careful — ignoring the fact that these typos can be corrected by a certificate of correction even after the patent has issued.

    They also seem to not understand that the priority application is prior art regardless of the typos under 102(d).

    Entirely an abuse of process.