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210    Priority to, or the Benefit of, the Filing Date of a Prior-Filed Application [R-11.2013]

Under certain conditions and on fulfilling certain requirements, a later-filed application for patent filed in the United States may claim the benefit of, or priority to, a prior application filed in the United States (see 35 U.S.C. 119(e), 120, and 365(c); see also 37 CFR 1.78) or in a foreign country (see 35 U.S.C. 119(a)-(d) and (f) and 365(a) and (b); see also 37 CFR 1.55).

As a result of recent changes to the applicable laws and rules, the procedural requirements and time frames for claiming priority to, or the benefit of, an earlier-filed application may vary based on the filing date of the later-filed nonprovisional application.

Note that effective December 18, 2013, The Patent Law Treaties Implementation Act of 2012 (PLTIA) amends the patent laws to implement the provisions of the Patent Law Treaty (PLT) in title II; corresponding revisions to title 37 of the Code of Federal Regulations will also become effective on December 18, 2013. Notable changes to the law and rules will include the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application.

I.   REQUIREMENTS OF 37 CFR 1.78 (CLAIMING THE BENEFIT OF AN EARLIER DOMESTIC APPLICATION)

The following is an overview of the substantive changes to 37 CFR 1.78 resulting from implementation of Public Law 112-29, 125 Stat. 284 (Leahy Smith America Invents Act (AIA)). See MPEP § 211 et seq. for the detailed requirements for claiming (and entitlement to), the benefit of an earlier-filed application under 35 U.S.C. 119(e), 120, 121, or 365(c).

Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed domestic application, the later-filed application must contain a specific reference to the earlier-filed application. 35 U.S.C. 119(e), 120.

The inventor’s oath or declaration provisions of Public Law 112-29, sec. 4, 125 Stat. 284 (the Leahy-Smith America Invents Act) and the rules related thereto became effective September 16, 2012. In implementing these provisions the Office revised 37 CFR 1.78 to require that a benefit claim under 35 U.S.C. 119(e), 120, 121, or 365(c) must be in the application data sheet (37 CFR 1.76). Thus for all applications filed on or after September 16, 2012, the specific reference to the prior application must be in the application data sheet; for applications filed prior to September 16, 2012, the specific reference to the prior application must be in an application data sheet or in the first sentence(s) of the specification.

In implementing the first inventor to file provisions of Public Law 112-29, sec. 3, 125 Stat. 284 (the Leahy-Smith America Invents Act), the Office reorganized and revised 37 CFR 1.78 effective March 16, 2013. The following is a summary of the provisions of 37 CFR 1.78 as reorganized.

  • (A) 37 CFR 1.78(a) contains provisions relating to claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application;
  • (B) 37 CFR 1.78(b) contains provisions relating to delayed claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application;
  • (C) 37 CFR 1.78(c) contains provisions relating to claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed nonprovisional or international application;
  • (D) 37 CFR1.78(d) contains provisions relating to delayed claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed nonprovisional or international application;
  • (E) 37 CFR1.78(e) contains provisions relating to applications containing patentably indistinct claims;
  • (F) 37 CFR 1.78(f) contains provisions relating to applications or patents under reexamination naming different inventors and containing patentably indistinct claims; and
  • (G) 37 CFR 1.78(g) provides that the time periods set forth in § 1.78 are not extendable.

37 CFR 1.78(a)(6) and (c)(6) set forth provisions that are only applicable to nonprovisional applications filed on or after March 16, 2013 that claim the benefit of the filing date of a provisional or nonprovisional application filed prior to March 16, 2013. Specifically, the paragraphs require that if the later filed application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect within the time periods set forth in the rule. An applicant is not required to provide such a statement if the applicant reasonably believes on the basis of information already known to the individuals designated in 37 CFR 1.56(c) that the later filed nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013. An applicant is also not required to provide such a statement if the application claims the benefit of an earlier application in which a statement that the earlier application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013 has been filed. See MPEP § 211.01 for additional information.

II.   REQUIREMENTS OF 37 CFR 1.55 (CLAIMING PRIORITY TO AN EARLIER FOREIGN APPLICATION)

The following is an overview of the substantive changes to 37 CFR 1.55 resulting from implementation of Public Law 112-29, 125 Stat. 284 (Leahy Smith America Invents Act (AIA)). See MPEP §§ 213 et seq. for the detailed requirements for claiming (and entitlement to), priority to of an earlier filed foreign application under 35 U.S.C. 119(a)-(d) or (f) or 35 U.S.C. 365(a) or (b) for applications filed on or after March 16, 2013. See MPEP §§ 213 et seq. for the detailed requirements for claiming the benefit of an earlier foreign application in an application filed before March 16, 2013.

Whether an application was filed before, on, or after March 16, 2013, 35 U.S.C. 119(b)(1) requires a claim for priority identifying the foreign application. For applications filed before September 16, 2012, 37 CFR 1.55 and 1.63 required the claim for priority to be identified on an application data sheet or in the oath or declaration.

The inventor’s oath or declaration provisions of Public Law 112-29, sec. 4, 125 Stat. 284 (the Leahy-Smith America Invents Act) and the rules related thereto became effective September 16, 2012. In implementing these provisions the Office revised 37 CFR 1.55 to require that priority claims under 35 U.S.C. 119(a)-(d) and (f) and 365(a) and (b) must be presented in the application data sheet (37 CFR 1.76). Thus for all applications filed on or after September 16, 2012, the claim for priority to the prior application must be presented in the application data sheet; for applications filed prior to September 16, 2012, the claim for priority to the foreign application must be identified in an application data sheet or in the oath or declaration.

In implementing the first inventor to file provisions of Public Law 112-29, sec. 3, 125 Stat. 284 (the Leahy-Smith America Invents Act), the Office reorganized and revised 37 CFR 1.55 effective March 16, 2013. The following is a summary of the provisions of 37 CFR 1.55 as reorganized.

III.   REQUIREMENT FOR A STATEMENT UNDER 37 CFR 1.55 OR 1.78 FOR FIRST INVENTOR TO FILE TRANSITION APPLICATIONS

The first inventor to file provisions of Public Law 112-29, sec. 3, 125 Stat. 284 (the Leahy-Smith America Invents Act) and the rules related thereto became effective March 16, 2013. These provisions apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time—

  • (A) a claim to a claimed invention that has an effective filing date as defined under section 100(i) of title 35, United States Code, that is on or after March 16, 2013; or
  • (B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim. See 35 U.S.C. 100 (note).

As a result, the effective filing date of each claimed invention determines whether an application is subject to examination under 35 U.S.C. 102 and 103 as effective on March 16, 2013 or under 35 U.S.C. 102 and 103 in effect on March 15, 2013 (i.e., pre-AIA 35 U.S.C. 102 or 103).

The effective filing date for a claimed invention in a patent or application (except in an application for reissue or reissued patent) is set forth in 35 U.S.C. 100(i)(1) as:

  • (A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or
  • (B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, or 365(c).

For an application for reissue or a reissued patent, the effective filing date for a claimed invention, as set forth in 35 U.S.C. 100(i)(2), is determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.

In implementing the first inventor to file provision of the AIA, the Office added a statement requirement to 37 CFR 1.55 and 1.78 for transition applications. See 37 CFR 1.55(j) and 1.78(c)(6).

A.   Transition Applications

Transition applications are nonprovisional applications that:

  • (A) are filed on or after March 16, 2013; and
  • (B) claim foreign priority to, or domestic benefit of, an application filed before March 16, 2013. Transition applications are either pre-AIA first-to-invent applications or AIA first-inventor-to-file applications depending on the effective filing date of claimed invention.

The statement provisions of 37 CFR 1.55 and 1.78 require that if the later-filed transition application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect. The statement must be provided within the later of four months from the actual filing date of the later-filed application, four months from the date of entry into the national stage as set forth in 37 CFR 1.491 in an international application, sixteen months from the filing date of the prior-filed application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the later-filed application.

For a nonprovisional application filed on or after March 16, 2013 that claims priority to, or the benefit of, the filing date of a an earlier filed application, the applicant would not be required to provide any statement if:

  • (A) The nonprovisional application discloses only subject matter also disclosed in a priority or domestic benefit application filed prior to March 16, 2013; or
  • (B) the nonprovisional application claims only priority to, or the benefit of, the filing date of an application filed on or after March 16, 2013.

An applicant is not required to provide such a statement under 37 CFR 1.78 in a continuing transition application if the application claims the benefit of a nonprovisional application in which such a statement under 37 CFR 1.55 or 1.78 has been filed. See 37 CFR 1.78(c)(6)(i).

An applicant is not required to provide such a statement under 37 CFR 1.55 or 1.78 if the applicant reasonably believes on the basis of information already known to the individuals designated in 37 CFR 1.56(c) that the later-filed transition application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.

Applicant is not required to identify how many or which claims in the transition application have an effective filing date on or after March 16, 2013, or identify the subject matter in the transition application not also disclosed in the priority or benefit application. Applicant is only required to state that there is a claim in the transition application that has an effective filing date on or after March 16, 2013. The Office may issue a requirement for information under 37 CFR 1.105 if an applicant takes conflicting positions on whether an application contains, or contained at any time, a claim to a claimed invention having an effective filing date on or after March 16, 2013. For example, the Office may require the applicant to identify where there is written description support under 35 U.S.C. 112(a) in the pre-AIA application for each claim to a claimed invention if an applicant provides the statement under 37 CFR 1.78(a)(6), but later argues that the application should have been examined as a pre-AIA application because the application does not actually contain a claim to a claimed invention having an effective filing date on or after March 16, 2013.

B.   Application Data Sheet and Filing Receipt

The application data sheet (ADS, Form PTO/AIA/14) and the transmittal letter for 35 U.S.C. 371 national stage filing (Form PTO- 1390) are available for an applicant to make the 37 CFR 1.55/1.78 statement by marking a check box on the forms. The presence or absence of the 37 CFR 1.55/1.78 statement is reflected on the filing receipt. If applicant receives a filing receipt with incorrect information regarding the 37 CFR 1.55/1.78 statement, applicant may request a corrected filing receipt. Therefore, applicants should carefully and promptly review their filing receipts in order to ensure that their applications will be examined under the correct statutory framework.

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Last Modified: 03/27/2014 10:10:33