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1828    Priority Claim and Document [R-07.2015]

An applicant who claims the priority of one or more earlier national, regional or international applications for the same invention must indicate on the Request, at the time of filing, the country in or for which it was filed, the date of filing, and the application number. See PCT Article 8 and PCT Rule 4.10 for priority claim particulars and PCT Rule 90bis.3 for withdrawal of priority claims. Note that under PCT Rule 4.10, an applicant may claim the priority of an application filed in or for a State which is a Member of the World Trade Organization (WTO), even if that State is not party to the Paris Convention for the Protection of Industrial Property (Paris Convention). However, a PCT Contracting State that is not a Member of the WTO would not be obliged to recognize the effects of such a priority claim.

The applicant may correct or add a priority claim by a notice submitted to the Receiving Office or the International Bureau (IB) within 16 months from the priority date, or where the priority date is changed, within 16 months from the priority date so changed, whichever period expires first, provided that a notice correcting or adding a priority claim may in any event be submitted until the expiration of 4 months from the international filing date. PCT Rule 26bis.1 and 37 CFR 1.451 and 1.465. For a withdrawal of a priority claim, see MPEP § 1859.

Under the PCT procedure, the applicant may file the certified copy of the earlier filed national application together with the international application in the receiving Office for transmittal with the record copy, or alternatively the certified copy may be submitted by the applicant to the IB or the receiving Office not later than 16 months from the priority date or, if the applicant has requested early processing in any designated Office, not later than the time such processing or examination is requested. The IB will normally furnish copies of the certified copy to the various designated Offices so that the applicant will not normally be required to submit certified copies to each designated Office. If the earlier filed application was filed with the U.S. Patent and Trademark Office, the applicant may request the U.S. Receiving Office (RO/US) to prepare, and transmit to the IB, a certified copy of the earlier application. The request (Form PCT/RO/101) contains a box which can be checked requesting that the receiving Office prepare the certified copy. In international applications filed in the RO/US on or after August 31, 2007, the RO/US will electronically transmit the certified copy of the earlier application if the applicant has made a request in accordance with PCT Rule 17.1(b) and 37 CFR 1.451(b). Further, in such international applications filed on or after August 31, 2007, the USPTO has waived the fee set out in 37 CFR 1.19(b)(1)(iii)(A) for electronically providing a copy of the patent application as filed. If the earlier application is made available to the International Bureau via a digital library, applicant may request the International Bureau to obtain a copy of the earlier application from the digital library. The International Bureau will electronically obtain the copy of the earlier application if the applicant has made a request in accordance with PCT Rule 17.1(b-bis).

Transmission may be delayed or prevented when no inventor common to the priority application is named in the international application. Further, transmission of the priority document will not occur until its national security review is complete.

For use of the priority document in a U.S. national application which entered the national stage from an international application after compliance with 35 U.S.C. 371, see MPEP § 1893.03(c).

1828.01   Restoration of the Right of Priority [R-07.2015]

37 CFR 1.452 Restoration of right of priority

  • (a) If the international application has an international filing date which is later than the expiration of the priority period as defined by PCT Rule 2.4 but within two months from the expiration of the priority period, the right of priority in the international application may be restored upon request if the delay in filing the international application within the priority period was unintentional.
  • (b) A request to restore the right of priority in an international application under paragraph (a) of this section must be filed not later than two months from the expiration of the priority period and must include:
    • (1) A notice under PCT Rule 26bis.1(a) adding the priority claim, if the priority claim in respect of the earlier application is not contained in the international application;
    • (2) The petition fee as set forth in § 1.17(m); and
    • (3) A statement that the delay in filing the international application within the priority period was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
  • (c) If the applicant makes a request for early publication under PCT Article 21(2)(b), any requirement under paragraph (b) of this section filed after the technical preparations for international publication have been completed by the International Bureau shall be considered as not having been submitted in time.

On April 1, 2007, the regulations to the PCT were amended to allow applicants with applications which were filed on or after that date and which were also filed after the expiration of the 12 month priority period but within two months of the expiration of the priority period, to request that the right of priority be restored, provided that the failure to file the application within the priority period was in spite of due care or unintentional. See PCT Rule 26 bis.3. Grantable requests for restoration of the right of priority must be filed within two months from the date of expiration of the priority period as defined by new PCT Rule 2.4, and must be accompanied by: (i) the requisite fee as set forth in § 1.17(m); (ii) a notice under PCT Rule 26 bis.1(a) adding the priority claim, if the priority claim in respect of the earlier application is not contained in the international application; and (iii) a statement that the delay in filing the international application within the priority period was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. If the applicant makes a request for early publication under PCT Article 21(2)(b), any of requirements (i), (ii), or (iii) above which are filed after the technical preparations for international publication have been completed by the International Bureau shall be considered as not having been submitted in time.

The International Bureau has indicated that it intends to decide these matters under both the in spite of due care and unintentional standards. Therefore, in view of the fact that the USPTO only decides these matters under the unintentional standard, applicants may wish to consider filing directly with the International Bureau as receiving Office instead of the United States Receiving Office in the situation where applicant desires to request restoration of the right of priority under the in spite of due care standard. Applicants may also request that an application be forwarded to the International Bureau for processing in its capacity as a receiving Office in accordance with PCT Rule 19.4(a)(iii) in situations where applicants, after the international application has been filed, realize that the application was filed after the expiration of the 12 month priority period but within two months of the expiration of the priority period, and where applicant desires to request restoration of the right of priority under the in spite of due care standard. However, the United States Receiving Office may decline to forward the international application to the International Bureau under PCT Rule 19.4(a)(iii) if substantial processing of the international application by the United States Receiving Office has occurred. Applications filed with, or forwarded to, the International Bureau must have a foreign filing license.

It should be noted that restoration of a right of priority to a prior application by the United States Receiving Office, or by any other receiving Office, under the provisions of PCT Rule 26 bis.3, will not entitle applicants to a right of priority to such prior application in a national stage application in any office that has notified the International Bureau under PCT Rule 26bis.3(j) and 49ter.1(g) of an incompatibility with its national law. A full listing of the national offices that will not accept the restoration of the right of priority in the national stage may be found on WIPO’s website at www.wipo.int/pct/en/texts/reservations/res_incomp.html. In the United States, a right of priority that has been restored under PCT Rule 26bis.3 during the international stage will be effective in the U.S. national stage. See MPEP § 1893.03(c).

It should also be noted that regardless of the PCT Rule 26bis.3(j) and 49ter.1(g) status of any particular office, the priority date will still govern all PCT time limits, including the thirty-month period for filing national stage papers and fees under 37 CFR 1.495. PCT Article 2(ix), which defines “priority date” for purposes of computing time limits, contains no limitation that the priority claim be valid.

1828.02   Continuation or Continuation-in-Part Indication in the Request [R-07.2015]

PCT Rule 4.

The Request (Contents)

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4.11 Reference to Continuation or Continuation-in-Part, or Parent Application or Grant

  • (a) If:
    • (ii) the applicant intends to make an indication under Rule 49bis.1(d) of the wish that the international application be treated, in any designated State, as an application for a continuation or a continuation-in-part of an earlier application; the request shall so indicate and shall indicate the relevant parent application or parent patent or other parent grant.

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The Supplemental Box of the Request form should be used where the applicant has an earlier pending United States nonprovisional application or international application designating the U.S. and wishes the later-filed international application to be treated as a continuation or continuation-in-part of such earlier application. To properly identify the parent application, the specific reference must identify the parent application by application number and indicate the relationship to the parent application (i.e., “continuation” or “continuation-in-part”). The specific reference must also indicate the filing date of the parent application if the parent application is an international application. See 37 CFR 1.78(d)(2).

The inclusion of a proper reference to the parent application in the PCT Request form or the presence of such reference on the front page of the published international application will satisfy the requirement in 37 CFR 1.78 for the presentation of a benefit claim in an application data sheet. See 37 CFR 1.76(g). In such cases, a reference to the parent application in an application data sheet would not be required in the national stage application. Furthermore, inclusion of a proper reference to the parent application in the PCT Request form is also beneficial where applicant chooses to file a continuing application claiming benefit under 35 U.S.C. 365(c) to the international application (i.e., a bypass application) rather than entering the U.S. national phase under 35 U.S.C. 371. See MPEP § 211.02, which indicates the right to rely on a prior application may be waived by an applicant if a reference to the prior application is not included in the later-filed application.

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Last Modified: 11/04/2015 11:01:44