One year into the COVID-19 pandemic, and its affects still are impacting patent prosecution, especially as it relates to the difficulty of obtaining paper copies of official documents. While the USPTO rarely requires originals of executed documents, it does require certified copies of foreign priority applications. Recognizing the difficulty (or impossibility) of obtaining certified copies under present circumstances, the USPTO recently announced an option to request suspension of the requirement to file a certified copy of a foreign priority application by the time the issue fee is paid.
The USPTO announcement came in a notice published on its website, not in a Federal Register Notice. The requirement to file a certified copy of a foreign priority application is based on 37 CFR § 1.55(f) and 1.55(g). The ability to request relief from the requirement to file a certified copy by the time the issue fee is paid is available only if the foreign priority application is not available via a multilateral priority document exchange program.
To be eligible to seek relief, an applicant must have requested a certified copy from the foreign intellectual property office prior to payment of the issue fee in the U.S. application at issue, but be unable to file it by the issue fee payment date “because the foreign intellectual property office was unable to process the request as a result of the COVID-19 outbreak.” The applicant also must have filed an “interim copy” (i.e., non-certified copy) of the priority application in accordance with 37 CFR § 1.55(j).
To request relief, the applicant must file “a request for suspension of the requirement for submission of the certified copy” no later than the date of payment of the issue fee, with one of two required statements, depending on whether the U.S. application is a PCT national stage application or not. For both types of applications, the applicant must state:
The USPTO suggests using new Form PTO/SB/453 for this purpose.
Importantly, the notice states that a certified copy still must be submitted “[o]nce the foreign intellectual property office resumes processing requests for paper certified copies.”
In particular, the notice states:
Once the foreign intellectual property office resumes processing requests for paper certified copies, the patentee must:
(1) comply with the requirements of the foreign intellectual property office for obtaining a paper certified copy (which may include submitting a new request for a paper certified copy) within two months after the date the foreign intellectual property office resumes processing requests for paper certified copies; and
(2) submit the paper certified copy to the USPTO within one month after the date the paper certified copy is issued from the foreign intellectual property office.
The burden is on the patentee to ensure that the certified copy is filed within this time period.
If these requirements are met, a petition for delayed submission of a certified copy will not be required.
This means applicants who obtain relief under this program will have to monitor the status of the foreign intellectual property office and act promptly once it resumes processing requests for paper certified copies—and hope the certified copy is received promptly after it is “issued.”
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