The USPTO is changing the method for correcting foreign priority claims to comport with the fact that the America Invents Act (AIA) makes foreign priority claims relevant in the treatment of prior art. In particular, one of the changes to patent law under the AIA relates to the date on which a foreign filed patent application is considered prior art. Prior to the AIA, the date of an earlier foreign filed patent application was not a prior art date under pre-AIA 35 U.S.C. 102(e). However, after AIA, it is probable that a foreign filed patent application will be considered prior art as of the foreign filing date.
Under pre-AIA 35 U.S.C. 102(e), the effective filing date for U.S. patents (and published applications) as prior art was limited to their earliest U.S. filing date. Now, however, AIA 35 U.S.C. 102(d) states that if the U.S. patent, U.S. patent application publication, or WIPO published application claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest foreign application claiming the same subject matter.
Thus, the USPTO will now require that any correction of the identification of the foreign application (by application number, country (or intellectual property authority), and filing date) in a foreign priority claim after the time period for filing a priority or benefit claim be via a petition to accept an unintentionally delayed priority claim. Upon the grant of the petition in a pending application, the USPTO will now publish a corrected patent application publication reflecting the accurate foreign priority claim information.