Week of April 10, 2017

Bracket Corp., a French company, filed a patent application in France in 2014. The invention had been very successful so the company was thinking of filing in several other countries. The company had a meeting with their patent representative to form a strategy going forward. The meeting resulted in their deciding to file an application in the U.S. no later than 12 months after the French filing date. The representative set the deadline in his office “deadline” software. Around two months before the deadline the company had been in turmoil since most of their top executives had been killed in an airplane accident over the Atlantic. The representative was told not to worry about any foreign applications in the near future. It is now 13 months after the filing of the application in France. What should the representative do?

(A) Get the authorization from the company and file the U.S. application claiming the benefit of the French application.
(B) Get the authorization from the company and file the U.S. application claiming the benefit of the French application, along with a petition under 37 CFR 1.55(c).
(C) No benefit for priority of the French application is possible since the delay was intentional.
(D) The company may file their application in the U.S. with no benefit claim.
(E) Both (C) and (D) correct.

 

 

ANSWER: (E).

See MPEP 213.03, subsection III, first and second paragraphs:

“Effective December 18, 2013, title II of the Patent Law Treaties Implementation Act (PLTIA) provides for restoration of the right of priority under 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) or (b). As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.

“A petition under 37 CFR 1.55(c) requires:

“(A) the priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) in an application data sheet, identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing (unless previously submitted in an application data sheet);

“(B) the petition fee as set forth in 37 CFR 1.17(m); and

“(C) a statement that the delay in filing the subsequent application within the twelve-month period (or six-month period in the case of a design application) set forth in 37 CFR 1.55(b) was unintentional.”

 

Questions prepared by David E. Meeks, Esq. © 2017 Institute for Patent Studies, Inc. All rights reserved.