1417 Claim for Benefit Under 35 U.S.C. 119(a)-(d) [R-5]
PRIORITY UNDER 35 U.S.C. 119(a)-(d) WAS PERFECTED IN THE ORIGINAL PATENT
A “claim” for the benefit of an earlier filing date in a foreign country under 35 U.S.C. 119(a)-(d) must be made in a reissue application, even though such a claim was previously made in the application for the original patent to be reissued. However, no additional certified copy of the foreign application is necessary. The procedure is similar to that for “Continuing Applications” in MPEP § 201.14(b).
In addition, 37 CFR 1.63 requires that in any application in which a claim for foreign priority is made pursuant to 37 CFR 1.55, the oath or declaration must identify the foreign application for patent or inventors’ certificate on which priority is claimed unless supplied on an application data sheet (37 CFR 1.76), and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying:
- (A) the application number of the foreign application;
- (B) the foreign country or intellectual property authority; and
- (C) the day, month, and year of the filing of the foreign application.
The examiner should note that the heading on printed copies of the patent will not be carried forward to the reissue from the original patent. Therefore, it is important that the bibliographic data sheet (or the front face of the reissue file wrapper for series 08/ and earlier paper applications) be endorsed by the examiner under “FOREIGN APPLICATIONS.” For an IFW reissue file, a copy of the bibliographic data sheet should be printed from the IFW file history. The printed copy should be annotated by the examiner and then the annotated copy should be scanned into the IFW.
PRIORITY UNDER 35 U.S.C. 119(a)-(d) IS NEWLY PERFECTED IN THE REISSUE APPLICATION
A reissue was granted in Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where the only ground urged was failure to file a certified copy of the original foreign application to obtain the right of foreign priority under 35 U.S.C. 119(a)-(d) before the patent was granted. In Brenner, the claim for priority had been made in the prosecution of the original patent, and it was only necessary to submit a certified copy of the priority document in the reissue application to perfect priority (the claim for priority must be repeated in the reissue application). Reissue is also available to correct the "error" in failing to take any steps to obtain the right of foreign priority under 35 U.S.C. 119(a)-(d) before the original patent was granted. > See Fontijn v. Okamoto, 518 F.2d 610, 622, 186 USPQ 97, 106 (CCPA 1975) (“a patent may be reissued for the purpose of establishing a claim to priority which was not asserted, or which was not perfected during the prosecution of the original application”) < In a situation where it is necessary to submit for the first time both the claim for priority and the certified copy of the priority document in the reissue application and the patent to be reissued resulted from a utility or plant application filed on or after November 29, 2000, the reissue applicant will have to file a petition for an unintentionally delayed priority claim under 37 CFR 1.55(c) in addition to filing a reissue application. See MPEP § 201.14(a).