Timing and Priority
If you have already filed an application in a country other than the U.S., a U.S. application may be filed based on this foreign application. The U.S. application must be filed before either the foreign application issues as a patent or 12 months from the filing date of the foreign application, whichever is later. After that time, a U.S. application is barred!
In order to receive the filing date of the foreign application, the U.S. application must be filed within 12 months of the filing date of the foreign application. The U.S. application then receives the priority date of the original, foreign application and can overcome prior art references with a later effective date. If filed outside of that time period, the U.S. application will receive the date that it is filed in the U.S.
Documents Necessary to Receive a Filing Date
To be accorded a filing date, all that must be filed is a full Specification with figures and claims. The application need not be in English to receive a filing date.
To avoid a surcharge, the following documents must also be supplied at the time of filing: Inventors’ Declaration, certified translation (if the application is in a foreign language) with translation processing fee ($130) and filing fees.
If these documents are not filed along with the Specification, a surcharge of $135 is assessed ($270 for large entities) and the USPTO will set forth a date by which these documents must be filed.
If a foreign priority claim will be made to the earlier foreign application, this claim must be inserted into the Specification of the U.S. application by amendment within four months of the U.S. filing date or 16 months after the foreign filing date, whichever is later.
Documentation Translation, etc.
If you wish to file an assignment of the application from the inventors to another entity, the foreign assignment may be filed along with a signed translation or a new assignment can be filed in English. The Declaration must be signed by the inventors and should be in English, unless the inventors cannot read English, in which case the Declaration should be in their native language along with a certified translation of the Declaration.
Alternatives to Claiming Priority to a Foreign Application
An alternative to filing a foreign application and then later filing a nonprovisional U.S. patent application claiming priority to the earlier foreign application is to apply for a U.S. provisional application at the same time that you file your foreign application. A provisional application can be filed in a foreign language without a translation (and is therefore very inexpensive) and gives you a U.S. filing date. This early U.S. filing date can be essential in defeating the patent applications of your competitors in the U.S.
When you file a nonprovisional U.S. application, you will have to provide a certified translation of your foreign language provisional application. However, your nonprovisional application will get the filing date of your provisional application for the purposes of its use as a prior art document against other pending applications. In contrast, a nonprovisional application based on a foreign application receives only its U.S. filing date- not its foreign priority date.
Filing a provisional applicaiton in the U.S. therefore cuts a year off the time competitors have to file applications for inventions that overlap with the invention you are trying to protect.
Another alternative is to file a PCT (Patent Cooperation Treaty, i.e., international) application designating the United States. Your PCT can be based either on your foreign application or on a concurrently filed U.S. provisional application (recommended for the reasons given above). This procedure is recommended if you forsee filing applications in more than two countries, as the PCT process is simpler to comply with for filing in multiple countries and gives you the benefit of an international search report.
Any questions? Did I leave anything out? Let me know in the comments.
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