By James R. Major, D.Phil.
In the United States, a patent application can claim priority of a foreign application or can claim the benefit of another U.S. application. For several years, the deadline for making a domestic benefit claim has been relatively short. The USPTO accepted delayed domestic benefit claims but there was a hefty fee for doing so. However, there was no fee for accepting delayed foreign priority claims.
On October 6, 2015, the USPTO issued a notice, which you can see here, saying that, as of November 5, 2015, the rule regarding delayed domestic benefit claims would be extended to delayed foreign priority claims. So now, both domestic benefit and foreign priority claims are on the same footing. This seems sensible. However, there are issues applicants need to consider.
Many people’s first thought of a patent is as an offensive weapon for use against an infringer. But, applications have defensive uses, too. For example, if a company wants to block the possibility of a competitor receiving a patent on a technology, the company may file a U.S. application, wait for the application to publish, and then abandon the case. Under the first-inventor-to-file provisions of the America Invents Act, the effective filing date of the publication is the filing date of the application. But, what if the company choses to file a foreign application to make a foreign priority claim?
Under the America Invents Act, the effective filing date of the publication would be the filing date of the foreign application. However, this seems to assume that the foreign priority claim is proper. What would happen if there was a typographical error in the foreign application number on the front of the publication? There’s no telling what a court would do, but our suspicion is that the court would not grant the claim of priority, meaning that the earliest filing date would be the filing of the U.S. application. If the competitor filed an application after the filing date of the foreign application but before the filing date of the U.S. application, the company has effectively gifted the technology to the competitor. All because of a typo. And, typos can matter. See Encyclopaedia Britannica, Inc. v. Alpine Electronics of Am., Inc., 609 F.3d 1345 (Fed. Cir. 2010).
As a practical matter, practitioners should check and double-check filing receipts of cases making foreign priority claims. But, what is a foreign application number supposed to look like? This is not an easy question to answer, given that nearly all countries have a patent system and there’s no international standard for application numbers. The Manual of Patent Examining Procedure provides a guide but the support of counsel with international experience could be invaluable.
Dr. Major represents clients in the biotechnology, chemical and pharmaceutical fields. Reach him at firstname.lastname@example.org or at (646) 783-6757. You may also e-mail the firm at email@example.com.
This article may be deemed attorney advertising under applicable state laws. It provides general information and it is not intended to be, nor should it be taken to be, legal advice.
About Lucas & Mercanti, LLP: The firm provides comprehensive intellectual property legal services to clients in various fields, including pharmaceuticals, chemicals, electronics, medical devices, telecommunications, manufacturing, and life sciences. We represent start-ups, mid-size companies, multi-national conglomerates, and academic and research institutions, contributing to their success by understanding the science behind their innovations, by representing them proactively, and by being efficient and easy to work with.