[Patentpractice] USPTO Priority Document Shenanigans

Wed Jun 25 20:27:39 UTC 2025

The priority claim could have been perfected in a Certificate of Correction.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Suzannah K. Sundby via Patentpractice
Sent: Wednesday, June 25, 2025 4:10 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Suzannah K. Sundby <suzannah at canadylortz.com>
Subject: Re: [Patentpractice] USPTO Priority Document Shenanigans

Whew.

It could have been super ugly... especially if you are past the 6 year date and had to cough up the benefit year fee because the priority claim was not perfected.

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Scott Nielson via Patentpractice
Sent: Wednesday, June 25, 2025 4:04 PM
To: Oppedahl List [Patent Practice] <patentpractice at oppedahl-lists.com>
Cc: Scott Nielson <scnielson at outlook.com>
Subject: Re: [Patentpractice] USPTO Priority Document Shenanigans

In case anyone cares, a few calls to the USPTO this morning resolved the issue. The foreign priority application is now in the file as of this afternoon. One weird twist is that it was added with the "mail room date" being the original filing date of the US national phase. The problem with this is that a copy of the foreign priority application was not provided to WIPO until a couple months after the filing date of the US national phase (the cover sheet on the certified copy says WIPO received it on a date that is two months after the US filing date). Another side effect of back dating it this way is that it makes it look like the examiner correctly checked the box in all the office actions confirming the foreign priority application was present and incorrectly checked the box in the notice of allowance saying it was not.

Oh well. It's in the file now and everything is taken care of.

Scott Nielson

801-660-4400

________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Scott Nielson via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Sent: Tuesday, June 24, 2025 6:16 PM
To: Oppedahl List [Patent Practice] <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Scott Nielson <scnielson at outlook.com<mailto:scnielson at outlook.com>>
Subject: [Patentpractice] USPTO Priority Document Shenanigans

Looking for input about the following situation (this is for a friend/colleague, not my case):
1. A PCT app was filed claiming priority to a non-US app (foreign priority application).
2. A US national phase of the PCT app was filed well before the 30 month date (with the box on the transmittal checked requesting immediate examination) and two months before WIPO retrieved a copy of the foreign priority application.
3. WIPO successfully and timely retrieved a copy of the foreign priority application and entered it into the file of the international application. The international application includes all the relevant documents indicating the foreign priority document was timely and successfully retrieved.
4. The USPTO did not include a copy of the foreign priority application in the US national phase because the foreign priority application was not part of the file at WIPO when the US national phase app was filed. See MPEP 1893.03(c) (The International Bureau may not forward a copy of the priority document because the certified priority document was not furnished in compliance with PCT Rule 17.1(a), (b)  or (b-bis) or applicant requested examination to begin pursuant to 35 U.S.C. 371(f)  prior to availability of the priority document from the International Bureau.)

During prosecution of the US national phase application, in every office action (four total), the examiner checked the box acknowledging the foreign priority claim and that a copy of the foreign application is present in the file.

In the notice of allowance, the examiner checked the box indicating that a copy of the foreign priority application is NOT present in the file (a copy of the foreign priority application is not, in fact, present).

The issue fee has been paid and the application is scheduled to grant in one week. A final review of the application revealed the switcheroo in the notice of allowance regarding the presence of the foreign priority document.

The question now is what to do.

I see two options, but I'm curious about other opinions.

First, beg the PCT Help Desk to quickly retrieve a copy of the foreign priority application from the international phase. Plead for mercy by noting the examiner's repeated screw-ups and that it is arguably not late under 37 CFR 1.55(f)(2), which says:
(2) Application under 35 U.S.C. 371. A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371. If a certified copy of the foreign application is not filed during the international stage in an international application in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f)  (§ 1.491(a) ), four months from the date of the initial submission under 35 U.S.C. 371  to enter the national stage, or sixteen months from the filing date of the prior foreign application, except as provided in paragraphs (h), (i), and (j) of this section.
It is not late, and therefore a petition is not required, because the foreign priority document was filed in the international phase within the time limit set in the PCT. The USPTO may try to interpret this section to require that the foreign priority document be filed in the international phase before national phase entry, but that interpretation seems like a stretch.

Second, file a petition to withdraw from issuance accompanied by an RCE with an IDS listing some references identified through a quick search and then make the same arguments above and/or file a petition under 37 CFR 1.55(f)(3) for late filing of the foreign priority application.

Scott Nielson

801-660-4400
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