IP Alerts

IP Alert
IP Alert: Change in Practice Regarding Correction of Foreign Priority Claims

October 7, 2015

On October 6, 2015, the United States Patent & Trademark Office (USPTO) published a notice in the Federal Register concerning correction of foreign priority claims. This notice is principally of interest to U.S. attorneys who prosecute applications for foreign clients, an area in which Fitch Even maintains a vibrant practice.

Per yesterday’s notice, as of November 5, 2015, the USPTO will require any correction to a foreign priority claim after the time period for filing a priority claim to be made via a petition to accept an unintentionally delayed claim for foreign priority under Rule 55(e). Notably, this new requirement is significantly more expensive than the existing procedure, which allows a simple correction without the requirement for a petition.

In light of this new requirement, attorneys are encouraged to review any priority claim carefully for accuracy at the time of making the claim. For domestic claims of benefit, a similar petition requirement under Rule 78 has applied and will continue to apply.

For more information, please contact Fitch Even partner Stephen S. Favakeh.

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