Strategic Plan > Index to Action Papers > Technical Correction in 35 U.S.C. § 119(e)(1)

Action:

The USPTO should eliminate the requirement that an unintentionally delayed priority claim to an earlier filed provisional application under 35 U.S.C. § 119(e) only be accepted by the Office during the pendency of the non-provisional application.

Background Information:

Currently, the practice under § 119(e) for accepting an unintentionally delayed priority claim to an earlier filed provisional application is inconsistent with the practices under      §§ 119(a)-(d) and § 120.  The USPTO cannot accept unintentionally delayed priority claims under § 119(e) if the application that is claiming the benefit is no longer pending.  On the other hand, the USPTO may accept unintentionally delayed priority/continuity claims under  §§ 119(a)-(d) and § 120 even if the application that is claiming the benefit of an earlier filed application is no longer pending.  Thus, the inconsistency causes a trap for applicants that cannot be remedied under the current statute.

The proposed amendment to § 119(e)(1) would provide consistent procedures for accepting unintentionally delayed priority/continuity claims.  Applicants would avoid losing the right to claim an earlier filed provisional application.  For example, if the non-provisional application has been issued as a patent, applicants may correct the patent by submitting a request for a certificate of correction, or an amendment to the specification made via a reissue application, accompanied by a petition to accept an unintentionally delayed priority claim.

USPTO Recommended Course of Action: 

USPTO will consider seeking the deletion of the phase "during the pendency of the application" in the last sentence of § 119(e)(1), as proposed.  See attachment for statutory changes.

Proof of Concept (POC): 

POC is not recommended for this initiative.  This proposal has received widespread approval from the user community and was not the subject of commentary suggesting that a pilot or further study of the proposal should be done.  Further, conducting a pilot of the proposal is not viable given the need for a statutory revision in order to implement the proposal. 

Timing: 

This statutory initiative is intended to be part of the second phase of legislation supporting the 21^st Century Strategic Plan or it may be introduced with any legislation submitted to implement unity of invention. 

TECHNICAL CORRECTION IN 35 U.S.C. § 119(e)(1)

Attachment:  Proposed Changes to 35 U.S.C. § 119(e)(1)

Section 119(e)(1) is proposed to be amended to read as follows:

35 U.S.C. § 119           Benefit of earlier filing date; right of priority

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(e)(1) An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a provisional application filed under section 111(b) of this title, by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) of this title, if the application for patent filed under section 111(a) or section 363 of this title is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application.  No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director.  The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection.  The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this subsection

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