Wednesday, March 7, 2007

2001 Requirements for Claiming Benefit of Prior-Filed Application

The U.S. Patent and Trademark Office revised the rules of practice relating to the requirements for claiming the benefit of the filing date of a prior-filed application, in view of provisions of the American Inventors Protection Act relating to 18 month publication. The provisions were effective December 28, 2001.

The changes can be found here:

These rule changed amended 37 C.F.R. Sections 1.55 and 1.78 to revise the requirements for claiming the benefit of a prior-filed application in a PCT application; revised the time period and requirements for filing an English language translation of a non-English language provisional; and indicated that the time period requirements to implement the provisions of the AIPA did not apply to applications filed before November 29, 2000 or to design patent applications.

Among other things, 1.78 was amended to make its provisions applicable to international applications that designated the U.S. However, the reference requirement (that an application claiming the benefit of a prior-filed application or international application must contain a reference to the prior-filed application) did not apply to an international application that does not enter national stage processing in the U.S.

1.55 was amended to make clear that a petition to accept a delayed claim for priority must also be accompanied by the claim for priority.