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213    Right of Priority of Foreign Application [R-07.2015]

Under certain conditions and on fulfilling certain requirements, an application for patent filed in the United States may be entitled to the benefit of the filing date of a prior application filed in a foreign country. The conditions are specified in 35 U.S.C. 119(a)-(d) and (f), 172, 365(a) and (b), and 386(a) and (b), and 37 CFR 1.55.

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

  • (a) An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within 12 months from the earliest date on which such foreign application was filed. The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7) , pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application in this country within the 12-month period was unintentional.
  • (b)
    • (1) No application for patent shall be entitled to this right of priority unless a claim is filed in the Patent and Trademark Office, identifying the foreign application by specifying the application number on that foreign application, the intellectual property authority or country in or for which the application was filed, and the date of filing the application, at such time during the pendency of the application as required by the Director.
    • (2) The Director may consider the failure of the applicant to file a timely claim for priority as a waiver of any such claim. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed claim under this section.
    • (3) The Director may require a certified copy of the original foreign application, specification, and drawings upon which it is based, a translation if not in the English language, and such other information as the Director considers necessary. Any such certification shall be made by the foreign intellectual property authority in which the foreign application was filed and show the date of the application and of the filing of the specification and other papers.
  • (c) In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country instead of the first filed foreign application, provided that any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority.
  • (d) Applications for inventors’ certificates filed in a foreign country in which applicants have a right to apply, at their discretion, either for a patent or for an inventor’s certificate shall be treated in this country in the same manner and have the same effect for purpose of the right of priority under this section as applications for patents, subject to the same conditions and requirements of this section as apply to applications for patents, provided such applicants are entitled to the benefits of the Stockholm Revision of the Paris Convention at the time of such filing.

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  • (f) Applications for plant breeder’s rights filed in a WTO member country (or in a foreign UPOV Contracting Party) shall have the same effect for the purpose of the right of priority under subsections (a) through (c) of this section as applications for patents, subject to the same conditions and requirements of this section as apply to applications for patents.

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37 CFR 1.55 Claim for foreign priority.

  • (a) In general. An applicant in a nonprovisional application may claim priority to one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) and (b), and 386(a) and (b) and this section.
  • (b) Time for filing subsequent application. The nonprovisional application must be:
    • (1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or
    • (2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.
  • (c) Delayed filing of subsequent application. If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional. A petition to restore the right of priority under this paragraph filed on or after May 13, 2015, must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application. Any petition to restore the right of priority under this paragraph must include:
    • (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b) , or 386(a) or (b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
    • (2) The petition fee as set forth in § 1.17(m); and
    • (3) A statement that the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
  • (d) Time for filing priority claim—
    • (1) Application under 35 U.S.C. 111(a). The claim for priority must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application in an original application filed under 35 U.S.C. 111(a), except as provided in paragraph (e) of this section. The claim for priority must be presented in an application data sheet (§ 1.76(b)(6)) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. The time periods in this paragraph do not apply if the later-filed application is:
      • (i) An application for a design patent; or
      • (ii) An application filed under 35 U.S.C. 111(a) before November 29, 2000.
    • (2) Application under 35 U.S.C. 371. The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371, except as provided in paragraph (e) of this section.
  • (e) Delayed priority claim. Unless such claim is accepted in accordance with the provisions of this paragraph, any claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) not presented in the manner required by paragraph (d) or (m) of this section during pendency and within the time period provided by paragraph (d) of this section (if applicable) is considered to have been waived. If a claim for priority is considered to have been waived under this section, the claim may be accepted if the priority claim was unintentionally delayed. A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) must be accompanied by:
    • (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
    • (2) A certified copy of the foreign application, unless previously submitted or an exception in paragraph (h), (i), or (j) of this section applies;
    • (3) The petition fee as set forth in § 1.17(m); and
    • (4) A statement that the entire delay between the date the priority claim was due under this section and the date the priority claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
  • (f) Time for filing certified copy of foreign application—
    • (1) Application under 35 U.S.C. 111(a). A certified copy of the foreign application must be filed within the later of four months from the actual filing date of the application, or sixteen months from the filing date of the prior foreign application, in an original application under 35 U.S.C. 111(a) filed on or after March 16, 2013, except as provided in paragraphs (h), (i), and (j) of this section. The time period in this paragraph does not apply in a design application.
    • (2) Application under 35 U.S.C. 371. A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371. If a certified copy of the foreign application is not filed during the international stage in an international application in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f)1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior foreign application, except as provided in paragraphs (h), (i), and (j) of this section.
    • (3) If a certified copy of the foreign application is not filed within the time period specified [in] paragraph (f)(1) of this section in an application under 35 U.S.C. 111(a) or within the period specified in paragraph (f)(2) of this section in an international application entering the national stage under 35 U.S.C. 371, and an exception in paragraph (h), (i), or (j) of this section is not applicable, the certified copy of the foreign application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in § 1.17(g).
  • (g) Requirement for filing priority claim, certified copy of foreign application, and translation in any application.
    • (1) The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and § 1.323.
    • (2) The Office may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in this section:
      • (i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
      • (ii) When necessary to overcome the date of a reference relied upon by the examiner; or
      • (iii) When deemed necessary by the examiner.
    • (3) An English language translation of a non-English language foreign application is not required except:
      • (i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
      • (ii) When necessary to overcome the date of a reference relied upon by the examiner; or
      • (iii) When specifically required by the examiner.
    • (4) If an English language translation of a non-English language foreign application is required, it must be filed together with a statement that the translation of the certified copy is accurate.
  • (h) Certified copy in another U.S. patent or application. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application will be considered satisfied in a reissue application if the patent for which reissue is sought satisfies the requirement of this section for a certified copy of the foreign application and such patent is identified as containing a certified copy of the foreign application. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application will also be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and such prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.
  • (i) Foreign intellectual property office participating in a priority document exchange agreement. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application to be filed within the time limit set forth therein will be considered satisfied if:
    • (1) The foreign application was filed in a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office), or a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy;
    • (2) The claim for priority is presented in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and the applicant provides the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application;
    • (3) The copy of the foreign application is received by the Office from the participating foreign intellectual property office, or a certified copy of the foreign application is filed, within the period specified in paragraph (g)(1) of this section; and
    • (4) The applicant files in a separate document a request that the Office obtain a copy of the foreign application from a participating intellectual property office that permits the Office to obtain such a copy where, although the foreign application was not filed in a participating foreign intellectual property office, a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy. The request must identify the participating intellectual property office and the subsequent application by the application number, day, month, and year of its filing in which a copy of the foreign application was filed. The request must be filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f)1.491(a)), or four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or the request must be accompanied by a petition under paragraph (e) or (f) of this section.
  • (j) Interim copy. The requirement in paragraph (f) of this section for a certified copy of the foreign application to be filed within the time limit set forth therein will be considered satisfied if:
    • (1) A copy of the original foreign application clearly labeled as "Interim Copy," including the specification, and any drawings or claims upon which it is based, is filed in the Office together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority);
    • (2) The copy of the foreign application and separate cover sheet are filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f)1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or with a petition under paragraph (e) or (f) of this section; and
    • (3) A certified copy of the foreign application is filed within the period specified in paragraph (g)(1) of this section.
  • (k) Requirements for certain applications filed on or after March 16, 2013.If a nonprovisional application filed on or after March 16, 2013, other than a nonprovisional international design application, claims priority to a foreign application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the nonprovisional application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior foreign 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 nonprovisional application. 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 § 1.56(c) that the 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.
  • (l) Inventor's certificates. An applicant in a nonprovisional application may under certain circumstances claim priority on the basis of one or more applications for an inventor's certificate in a country granting both inventor's certificates and patents. To claim the right of priority on the basis of an application for an inventor's certificate in such a country under 35 U.S.C. 119(d), the applicant, when submitting a claim for such right as specified in this section, must include an affidavit or declaration. The affidavit or declaration must include a specific statement that, upon an investigation, he or she is satisfied that to the best of his or her knowledge, the applicant, when filing the application for the inventor’s certificate, had the option to file an application for either a patent or an inventor’s certificate as to the subject matter of the identified claim or claims forming the basis for the claim of priority.
  • (m) Time for filing priority claim and certified copy of foreign application in an international design application designating the United States. In an international design application designating the United States, the claim for priority may be made in accordance with the Hague Agreement and the Hague Agreement Regulations. In a nonprovisional international design application, the priority claim, unless made in accordance with the Hague Agreement and the Hague Agreement Regulations, must be presented in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. In a nonprovisional international design application, the priority claim and certified copy must be furnished in accordance with the time period and other conditions set forth in paragraph (g) of this section.
  • (n) Applications filed before September 16, 2012. Notwithstanding the requirement in paragraphs (d)(1), (e)(1), and (i)(2) of this section that any priority claim be presented in an application data sheet (§ 1.76), this requirement in paragraphs (d)(1), (e)(1), and (i)(2) of this section will be satisfied by the presentation of such priority claim in the oath or declaration under § 1.63 in a nonprovisional application filed under 35 U.S.C. 111(a) before September 16, 2012, or resulting from an international application filed under 35 U.S.C. 363 before September 16, 2012. The provisions of this paragraph do not apply to any priority claim submitted for a petition under paragraph (c) of this section to restore the right of priority to a foreign application.
  • (o) Priority under 35 U.S.C. 386(a) or (b). The right of priority under 35 U.S.C. 386(a) or (b) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.
  • (p) Time periods in this section. The time periods set forth in this section are not extendable, but are subject to 35 U.S.C. 21(b) (and § 1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).

Implementation of Public Law 112-211, 126 Stat. 1527 (titles I and title II of the Patent Law Treaties Implementation Act (PLTIA)), necessitated changes to the procedural requirements relating to claims for priority to an earlier-filed foreign application and to the submission of a certified copy of the priority document. The conditions for claiming priority to an earlier-filed foreign application are summarized below:

  • (A) The foreign application must be one filed in “a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States or in a WTO member country.” See MPEP § 213.01.
  • (B) The foreign application must have been filed by the same applicant as the applicant in the United States, or by his or her legal representatives or assigns. Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common. See MPEP § 213.02.
  • (C) The application, or its earliest parent United States application under 35 U.S.C. 120, must have been filed in a “recognized” country (see MPEP § 213.01) within 12 months from the date of the earliest foreign filing unless the right of priority has been restored (see MPEP § 213.03). However, the period of 12 months specified in this section is 6 months in the case of designs pursuant to 35 U.S.C. 172. See MPEP §§ 1504.10 and 2920.05(d).
  • (D) The foreign application must be for the same invention as the application in the United States.
  • (E) For an original application filed under 35 U.S.C. 111(a) (other than a design application), the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. This time period is not extendable. See MPEP § 214.01.
  • (F) For applications entering the national stage under 35 U.S.C. 371 from an international application, the claim for priority must be made and a certified copy of the foreign application must be filed within the time limit set forth in the PCT Articles and Regulations.
  • (G) For a nonprovisional international design application, the priority claim, unless made in accordance with the Hague Agreement and the Hague Agreement Regulations, must be presented in an application data sheet during the pendency of the application. See 37 CFR 1.55(m). In addition, the right of priority under 35 U.S.C. 386(a) or (b) with respect to an international design application can only be claimed in a nonprovisional, international, or international design application filed on or after May 13, 2015. See 37 CFR 1.55(o).
  • (H) In the case where the basis of the claim is an application for an inventor's certificate, the requirements of 37 CFR 1.55(l) must also be met. See MPEP § 213.05.
  • (I) A certified copy of the foreign application must be filed within the time period set forth in 37 CFR 1.55. See MPEP § 215.02et seq. for applications filed on or after March 16, 2013, and MPEP § 215.03 for applications filed before March 16, 2013. The claim for priority and the certified copy of the foreign application must, in any event, be filed within the pendency of the application and before the patent is granted. See MPEP § 213.04.
  • (J) If a nonprovisional application (other than a nonprovisional international design application) filed on or after March 16, 2013, claims priority to a foreign application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date (as defined in 35 U.S.C. 100(i)) on or after March 16, 2013, the applicant must provide a statement to that effect within a specified time period. See 37 CFR 1.55(k) and MPEP § 210, subsection III.

Applicant may be informed of possible priority rights under 35 U.S.C. 119(a)-(d) and (f) by using the wording of form paragraph 2.18.

¶ 2.18    Right of Priority Under 35 U.S.C. 119(a)-(d) and (f)

Applicant is advised of possible benefits under 35 U.S.C. 119(a)-(d) and (f), wherein an application for patent filed in the United States may be entitled to claim priority to an application filed in a foreign country.

213.01   Recognized Countries and Regional Patent Offices of Foreign Filing [R-07.2015]

The right to rely on a foreign application is known as the right of priority in international patent law and this phrase has been adopted in the U.S. statute. The right of priority originated in a multilateral treaty of 1883, to which the United States adhered in 1887, known as the Paris Convention for the Protection of Industrial Property (Paris Convention). The treaty is administered by the World Intellectual Property Organization (WIPO) at Geneva, Switzerland. This treaty has been revised several times, the latest revision in effect being written in Stockholm in July 1967 (copy at Appendix P of this Manual). Articles 13-30 of the Stockholm Revision became effective on September 5, 1970. Articles 1-12 of the Stockholm Revision became effective on August 25, 1973. One of the many provisions of the Paris Convention requires each of the adhering countries to accord the right of priority to the nationals of the other countries and the first United States statute relating to this subject was enacted to carry out this obligation. A foreign country may also provide for this right by reciprocal legislation.

I.LIST OF RECOGNIZED COUNTRIES

Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a)-(d) has been recognized. The table indicates whether a basis for priority is that the state is party to the Patent Cooperation Treaty (PCT) or the Paris Convention for the Protection of Industrial Property (Paris), or a member of the World Trade Organization (WTO). See 35 U.S.C. 119(a). See www.wipo.int/export/sites/www/pct/ en/texts/pdf/pct_paris_wto.pdf for the most current version of the table reproduced below. See also http://www.wto.org/english/thewto_e /whatis_e/tif_e/org6_e.htm for a current list of WTO member countries along with their dates of membership. Applications for plant breeder’s rights filed in WTO member countries and foreign UPOV contracting parties may be relied upon for priority pursuant to 35 U.S.C. 119(f). See MPEP §§ 1612 and 1613.

States Party to PCT, Paris Convention, and Members of WTO Page 1
States Party to PCT, Paris Convention and Members of WTO Page 2
States Party to PCT, Paris Convention, and Members of WTO Page 3

Note that the United States and Taiwan signed an agreement on priority for patent and trademark applications on April 10, 1996, and as of that date Taiwan is a country for which the right of priority is recognized in the United States. Taiwan became a member of the WTO on January 1, 2002.

If any applicant asserts the benefit of the filing date of an application filed in a country not on this list, the examiner should contact the Office of External Affairs to determine if there has been any change in the status of that country. It should be noted that the right is based on the country of the foreign filing and not upon the citizenship of the applicant.

II.RIGHT OF PRIORITY BASED UPON AN INTERNATIONAL APPLICATION FILED UNDER THE PATENT COOPERATION TREATY

35 U.S.C. 365  Right of priority; benefit of the filing date of a prior application.

  • (a) In accordance with the conditions and requirements of subsections (a) through (d) of section 119, a national application shall be entitled to the right of priority based on a prior filed international application which designated at least one country other than the United States.
  • (b) In accordance with the conditions and requirements of section 119(a) and the treaty and the Regulations, an international application designating the United States shall be entitled to the right of priority based on a prior foreign application, or a prior international application designating at least one country other than the United States. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed claim for priority under the treaty and the Regulations, and to accept a priority claim that pertains to an application that was not filed within the priority period specified in the treaty and Regulations, but was filed within the additional 2-month period specified under section 119(a) or the treaty and Regulations.

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35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States. Of course, the conditions prescribed by 35 U.S.C. 119(a)-(d), which deals with the right of priority based on earlier filed foreign applications, must be complied with.

35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application. The international application upon which the claim of priority is based can either have been filed in the United States or a foreign country; however, it must contain the designation of at least one country other than, or in addition to, the United States.

As far as the actual place of filing is concerned, for the purpose of 35 U.S.C. 365(a) and (b) and 35 U.S.C. 119(a)-(d) and (f), an international application designating a country is considered to be a national application regularly filed in that country on the international filing date irrespective of whether it was physically filed in that country, in another country, or in an intergovernmental organization acting as Receiving Office for a country.

III.RIGHT OF PRIORITY BASED UPON AN INTERNATIONAL DESIGN APPLICATION

35 U.S.C. 386  Right of priority.

  • (a) NATIONAL APPLICATION.—In accordance with the conditions and requirements of subsections (a) through (d) of section 119 and section 172, a national application shall be entitled to the right of priority based on a prior international design application that designated at least 1 country other than the United States.
  • (b) PRIOR FOREIGN APPLICATION.—In accordance with the conditions and requirements of subsections (a) through (d) of section 119 and section 172 and the treaty and the Regulations, an international design application designating the United States shall be entitled to the right of priority based on a prior foreign application, a prior international application as defined in section 351(c) designating at least 1 country other than the United States, or a prior international design application designating at least 1 country other than the United States.

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Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States. Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States. The provisions of 35 U.S.C. 386(a) and (b) apply to nonprovisional applications, international applications (PCT) and international design applications filed on or after May 13, 2015, and patents issued therefrom. See 37 CFR 1.55(o) and MPEP §§ 213et seq. and 1504.10.

See MPEP § 2920.05(d) for additional information pertaining to the right of priority based upon an international design application.

IV.RIGHT OF PRIORITY (35 U.S.C. 119(a)-(d), 365(a)-(b), AND 386(a)-(b)) BASED ON A FOREIGN APPLICATION FILED UNDER A BILATERAL OR MULTILATERAL TREATY

Under Article 4A of the Paris Convention for the Protection of Industrial Property, a right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design filed under the national law of a foreign country adhering to the Convention, or on a foreign application filed under a bilateral or multilateral treaty concluded between two or more such countries. Examples of such treaties pertaining to the protection of designs are The Hague Agreement Concerning the International Registration of Industrial Designs, the Benelux Designs Convention, and the Office for Harmonization in the Internal Market (OHIM) as created under European Union law. Treaties pertaining to utility and/or plant patents include The Convention on the Grant of European Patents (which established the European Patent Office), the Patent Cooperation Treaty, and the International Convention for the Protection of New Varieties of Plants (UPOV).

In addition to the list of recognized countries set forth in subsection I, above, applicants may claim priority under 35 U.S.C. 119(a)-(d) to applications filed in foreign regional patent offices having member states who are contracting states under the Patent Cooperation Treaty (PCT). These include the African Regional Intellectual Property Organization (ARIPO), the Eurasian Patent Office (EAPO), the European Patent Office (EPO), and the African Intellectual Property Organization (known under the acronym OAPI for its French name, Organisation Africaine de la Propriété Intellectuelle).

213.02   Formal Requirements Relating to Foreign Priority Application [R-07.2015]

I.IDENTIFICATION OF FOREIGN APPLICATION

For original applications filed under 35 U.S.C. 111(a), the claim for foreign priority must identify the foreign application for which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. For international applications entering the national stage as to the Unites States, see MPEP § 213.06. For international design applications designating the United States, see MPEP § 2920.05(d).

For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, the claim for priority must be presented in an application data sheet. See 37 CFR 1.55(d)(1). Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and 37 CFR 1.55. In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT. See 37 CFR 1.55(d)(2). Note that it is permissible, but not required, to present the claim for priority in an application data sheet in an international application entering the national stage under 35 U.S.C. 371. For international design applications designating the United States, the claim for priority must be presented in an application data sheet unless the priority claim was made in accordance with the Hague Agreement and the Hague Agreement Regulations. See 37 CFR 1.55(m).

For applications filed prior to September 16, 2012, the claim to priority need be in no special form, and may be made by a person authorized to sign correspondence under 37 CFR 1.33(b). No special language is required in making the claim for priority, and any expression which can be reasonably interpreted as claiming the benefit of the foreign application is accepted as the claim for priority. For applications filed prior to September 16, 2012, the claim for priority must appear in the oath or declaration under 37 CFR 1.63 or in an application data sheet (37 CFR 1.76). See 37 CFR 1.55(n).

For applications filed on or after September 21, 2004, a claim under 37 CFR 1.55 for priority of a prior-filed foreign application that was present on the filing date of the application is considered an incorporation by reference of the prior-filed foreign priority application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b). The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when all or a portion of the specification and/or drawing(s) is (are) inadvertently omitted from an application. See MPEP §§ 201.06(c) and 217. However, applicants are encouraged to provide an explicit incorporation by reference statement to the prior-filed foreign priority application(s) for which priority is claimed under 37 CFR 1.55 if applicants do not wish the incorporation by reference to be limited to inadvertently omitted material pursuant to 37 CFR 1.57(b). See 37 CFR 1.57(c). Thus, the incorporation by reference statement can be relied upon to permit the entering of a portion of the foreign priority application into the U.S. application when a portion of the foreign priority application has been inadvertently omitted from the U.S. application, or to permit the correction of translation error in the U.S. application where the foreign priority application is in a non-English language. See MPEP § 217 for additional information regarding 37 CFR 1.57(b), and MPEP § 608.01(p) for information regarding incorporation by reference statements. For information regarding 37 CFR 1.57(a) and filing by reference to a previously filed application, see MPEP § 601.01(a), subsection III.

II.THE SAME INVENTOR OR AT LEAST ONE COMMON JOINT INVENTOR

Pursuant to 35 U.S.C. 119(a), the foreign application must have been filed by the same applicant as the applicant in the United States, or by his or her legal representatives or assigns. Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common. For example, a right of priority does not exist in the case of an application of sole inventor A in the foreign country and sole inventor B in the United States, even though the two applications may be owned by the same party. The application in the foreign country may have been filed by the assignee, or by the legal representative or agent of the inventor, rather than by the inventor, but in such cases the name of the inventor is usually given in the foreign application on a paper filed therein. Joint inventors A and B in a nonprovisional application filed in the United States Patent and Trademark Office may properly claim the benefit of an application filed in a foreign country by A and another application filed in a foreign country by B, i.e., A and B may each claim the benefit of their foreign filed applications. See MPEP § 602.09.

III.TRANSITION APPLICATION STATEMENT

If a nonprovisional application filed on or after March 16, 2013, claims priority to a foreign application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date (as defined in 35 U.S.C. 100(i)) on or after March 16, 2013, the applicant must provide a statement to that effect within a specified time period. See 37 CFR 1.55(k) and MPEP § 210, subsection III. Nonprovisional international design applications are excluded from the transition provision of 37 CFR 1.55(k), as such applications can only be filed on or after May 13, 2015.

213.03   Time for Filing U.S. Nonprovisional Application [R-07.2015]

The United States nonprovisional application must be filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, unless the right of priority has been restored, or the nonprovisional application must be entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of an application that was filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, unless the right of priority has been restored. See 37 CFR 1.55(c) and subsection III, below. This twelve-month period is subject to 35 U.S.C. 21(b) (and 37 CFR 1.7(a)) and PCT Rule 80.5, and the six month period is subject to 35 U.S.C. 21(b), 37 CFR 1.7(a), and Hague Agreement Rule 4(4).

35 U.S.C. 21(b) and 37 CFR 1.7(a) provide that when the day, or the last day, for taking an action (e.g., filing a nonprovisional application within twelve months of the date on which the foreign application was filed) or paying a fee in the Office falls on Saturday, Sunday, or a federal holiday within the District of Columbia, the action may be taken, or fee paid, on the next succeeding secular or business day. PCT Rule 80.5 has similar provisions relating to the expiration of any period during which any document or fee in an international application must reach a national Office or intergovernmental organization. Hague Agreement Rule 4(4) provides that if the period expires on a day on which the International Bureau or the office concerned is not open to the public, the period shall expire on the first subsequent day on which the International Bureau or the office concerned is open to the public.

In computing this 12 months (or six months in the case of a design application), the first day is not counted; thus, if an application was filed in Canada on January 3, 1983, the U.S. nonprovisional application may be filed on January 3, 1984. The Paris Convention specifies in Article 4C(2) that “the day of filing is not counted in this period.” (This is the usual method of computing periods, for example a 6-month period for reply to an Office action dated January 2 does not expire on July 1, but the reply may be made on July 2.) If the last day of the 12 months is a Saturday, Sunday, or federal holiday within the District of Columbia, the U.S. non-provisional application is in time if filed on the next succeeding business day; thus, if the foreign application was filed on September 4, 1981, the U.S. nonprovisional application is in time if filed on September 7, 1982, since September 4, 1982, was a Saturday and September 5, 1982 was a Sunday and September 6, 1982 was a federal holiday. In view of 35 U.S.C. 21, and the Paris Convention which provides “if the last day of the period is an official holiday, or a day on which the Office is not open for the filing of applications in the country where protection is claimed, the period shall be extended until the first following working day” (Article 4C(3)), if the 12 months expires on Saturday, the U.S. application may be filed on the following Monday. Note Ex parte Olah, 131 USPQ 41 (Bd. App. 1960). See, e.g., Dubost v. U.S. Patent and Trademark Office, 777 F.2d 1561, 1562, 227 USPQ 977, 977 (Fed. Cir. 1985).

I.FILING OF PAPERS DURING UNSCHEDULED CLOSINGS OF THE U.S. PATENT AND TRADEMARK OFFICE

37 CFR 1.9(h) provides that the definition of “Federal holiday within the District of Columbia” includes an official closing of the Office. When the entire U.S. Patent and Trademark Office is officially closed for business for an entire day, for reasons due to adverse weather or other causes, the Office will consider each such day a “Federal holiday within the District of Columbia” under 35 U.S.C. 21. Any action or fee due on such a day may be taken, or fee paid, on the next succeeding business day the Office is open. In addition, 37 CFR 1.6(a)(1) provides “[t]he U.S. Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia” to clarify that any day that is a Saturday, Sunday or federal holiday within the District of Columbia is a day that the U.S. Patent and Trademark Office is not open for the filing of applications within the meaning of Article 4C(3) of the Paris Convention. Note further that in accordance with 37 CFR 1.6(a)(2), even when the Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or federal holiday within the District of Columbia, correspondence deposited as Priority Mail Express® with the USPS in accordance with 37 CFR 1.10 or filed via EFS-Web will be considered filed on the date of its deposit, regardless of whether that date is a Saturday, Sunday or federal holiday within the District of Columbia (under 35 U.S.C. 21(b) or 37 CFR 1.7).

When the U.S. Patent and Trademark Office is open for business during any part of a business day between 8:30 a.m. and 5:00 p.m., papers are due on that day even though the Office may be officially closed for some period of time during the business day because of an unscheduled event. The procedures of 37 CFR 1.10 may be used for filing applications. Information regarding whether or not the Office is officially closed on any particular day may be obtained by calling 1-800-PTO-9199 or (571) 272-1000.

II.FIRST FOREIGN APPLICATION

The 12 months is from earliest foreign filing except as provided in 35 U.S.C. 119(c). If an inventor has filed an application in France on October 4, 1981, and an identical application in the United Kingdom on March 3, 1982, and then files in the United States on February 2, 1983, the inventor is not entitled to the right of priority at all; the inventor would not be entitled to the benefit of the date of the French application since this application was filed more than twelve months before the U.S. application, and the inventor would not be entitled to the benefit of the date of the United Kingdom application since this application is not the first one filed. Ahrens v. Gray, 1931 C.D. 9, 402 O.G. 261 (Bd. App. 1929). If the first foreign application was filed in a country which is not recognized with respect to the right of priority, it is disregarded for this purpose. 35 U.S.C. 119(c) extends the right of priority to “subsequent” foreign applications if one earlier filed had been withdrawn, abandoned, or otherwise disposed of, under certain conditions.

The United Kingdom and a few other countries have a system of “post-dating” whereby the filing date of an application is changed to a later date. This “post-dating” of the filing date of the application does not affect the status of the application with respect to the right of priority; if the original filing date is more than one year prior to the U.S. filing no right of priority can be based upon the application. See In re Clamp, 151 USPQ 423 (Comm’r Pat. 1966).

If an applicant has filed two foreign applications in recognized countries, one outside the year and one within the year, and the later application discloses additional subject matter, a claim in the U.S. application specifically limited to the additional disclosure would be entitled to the date of the second foreign application since this would be the first foreign application for that subject matter.

III.RESTORING THE RIGHT OF PRIORITY

Effective December 18, 2013, title II of the Patent Law Treaties Implementation Act (PLTIA) provides for restoration of the right of priority under 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) or (b). As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional. Thus, an application may now validly claim priority under 35 U.S.C. 119(a) through (d) and (f), 172, 365(a)35 U.S.C. 365(a) or (b), or 386(a) or (b) to a foreign application filed up to fourteen months earlier (or eight months earlier in the case of a design application). As a result of title I of the PLTIA, 37 CFR 1.55(c) was amended effective May 13, 2015, to provide that restoration of the right of priority is available for priority claims under 35 U.S.C. 386(a) or (b). In addition, 37 CFR 1.55(c) was amended to provide that a petition to restore the right of priority filed on or after May 13, 2015, must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application.

A petition under 37 CFR 1.55(c) requires:

  • (A) the priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) in an application data sheet, identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing (unless previously submitted in an application data sheet);
  • (B) the petition fee as set forth in 37 CFR 1.17(m); and
  • (C) a statement that the delay in filing the subsequent application within the twelve-month period (or six-month period in the case of a design application) set forth in 37 CFR 1.55(b) was unintentional.

The Director may require additional information where there is a question whether the delay was unintentional.

Where the subsequent application is not a nonprovisional application, the Office may not have an application file established for the subsequent application. This would occur, for example, where an international application designating the United States was filed in a foreign Receiving Office and the applicant filed a continuation of an international application under 35 U.S.C. 111(a) rather than entering the national stage under 35 U.S.C. 371. Thus, in this situation, the petition under 37 CFR 1.55(c) may be filed in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application. However, the statement required under 37 CFR 1.55(c)(3) must still relate to the unintentional delay in filing the subsequent application, i.e., the international application.

If a petition under 37 CFR 1.55(c) to restore the right of priority is granted, a further petition under 37 CFR 1.55(c) is not required in an application entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of the subsequent application for which the right of priority was restored.

It should be noted that although an application may now validly claim priority under 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) or (b), or 386(a) or (b) to a foreign application filed up to fourteen months earlier (or eight months earlier in the case of a design application) in view of the restoration provision of 37 CFR 1.55(c), an application subject to examination under pre-AIA first to invent laws (rather than the first inventor to file provisions of the AIA) would still be subject to the 12-month statutory time periods in pre-AIA 35 U.S.C. 102(b) and (d) which are measured from the U.S. filing date. Thus, the application may still be subject to a rejection under pre-AIA 35 U.S.C. 102(b) or (d) despite the priority claim. See MPEP §§ 2133 and 2135 et seq.

213.04   Requirement to File Priority Claim and Certified Copy During Pendency of Application [R-07.2015]

37 CFR 1.55 Claim for foreign priority.

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  • (g) Requirement for filing priority claim, certified copy of foreign application, and translation in any application.
    • (1) The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and § 1.323.
    • (2) The Office may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in this section:
      • (i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
      • (ii) When necessary to overcome the date of a reference relied upon by the examiner; or
      • (iii) When deemed necessary by the examiner.
    • (3) An English language translation of a non-English language foreign application is not required except:
      • (i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
      • (ii) When necessary to overcome the date of a reference relied upon by the examiner; or
      • (iii) When specifically required by the examiner.
    • (4) If an English language translation of a non-English language foreign application is required, it must be filed together with a statement that the translation of the certified copy is accurate.

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37 CFR 1.55(g) sets forth the requirements for filing a priority claim, certified copy of foreign application, and translation that are applicable in all applications. 37 CFR 1.55(g)(1) specifies that the claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under 37 CFR 1.55(e) or (f), or with a petition accompanied by the fee set forth in 37 CFR 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application. These provisions do not in any way supersede the timing requirements elsewhere in 37 CFR 1.55 for filing a claim for priority and the certified copy of the foreign application. 37 CFR 1.55(g)(1) simply indicates that the claim for priority and the certified copy of the foreign application must be filed in or received by the Office within the pendency of the application in all situations, unless an appropriate petition is filed.

If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.

In the following situations, the Office may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in 37 CFR 1.55 (see 37 CFR 1.55(g)(2)), or that an English translation of a non-English language foreign application be filed (see 37 CFR 1.55(g)(3)):

  • (1) When the application is involved in an interference (see 37 CFR 41.202) or derivation (see 37 CFR part 42) proceeding;
  • (2) When necessary to overcome the date of a reference relied upon by the examiner; or
  • (3) When deemed necessary by the examiner.

If an English language translation of a non-English language foreign application is required, it must be filed together with a statement that the translation of the certified copy is accurate.

213.05   Right of Priority Based Upon an Application for an Inventor’s Certificate [R-07.2015]

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

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  • (d) Applications for inventors’ certificates filed in a foreign country in which applicants have a right to apply, at their discretion, either for a patent or for an inventor’s certificate shall be treated in this country in the same manner and have the same effect for purpose of the right of priority under this section as applications for patents, subject to the same conditions and requirements of this section as apply to applications for patents, provided such applicants are entitled to the benefits of the Stockholm Revision of the Paris Convention at the time of such filing.

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37 CFR 1.55 Claim for foreign priority.

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  • (l) Inventor's certificates. An applicant in a nonprovisional application may under certain circumstances claim priority on the basis of one or more applications for an inventor’s certificate in a country granting both inventor’s certificates and patents. To claim the right of priority on the basis of an application for an inventor’s certificate in such a country under 35 U.S.C. 119(d), the applicant when submitting a claim for such right as specified in this section, must include an affidavit or declaration. The affidavit or declaration must include a specific statement that, upon an investigation, he or she is satisfied that to the best of his or her knowledge, the applicant, when filing the application for the inventor’s certificate, had the option to file an application for either a patent or an inventor’s certificate as to the subject matter of the identified claim or claims forming the basis for the claim of priority.

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37 CFR 1.55(l) contains the provisions relating to claiming priority to inventor's certificates. An inventor’s certificate may form the basis for rights of priority under 35 U.S.C. 119(d) only when the country in which it is filed gives to applicants, at their discretion, the right to apply, on the same invention, either for a patent or for an inventor’s certificate. The affidavit or declaration specified under 37 CFR 1.55(l) is only required for the purpose of ascertaining whether, in the country where the application for an inventor’s certificate originated, this option generally existed for applicants with respect to the particular subject matter of the invention involved. The requirements of 35 U.S.C. 119(d) and 37 CFR 1.55(l) are not intended, however, to probe into the eligibility of the particular applicant to exercise the option in the particular priority application involved.

It is recognized that certain countries that grant inventors’ certificates also provide by law that their own nationals who are employed in state enterprises may only receive inventors’ certificates and not patents on inventions made in connection with their employment. This will not impair their right to be granted priority in the United States based on the filing of the inventor’s certificate.

Accordingly, affidavits or declarations filed pursuant to 37 CFR 1.55(l) need only show that in the country in which the original inventor’s certificate was filed, applicants generally have the right to apply at their own option either for a patent or an inventor’s certificate as to the particular subject matter of the invention. Priority rights on the basis of an inventor’s certificate application will be honored only if the applicant had the option or discretion to file for either an inventor’s certificate or a patent on his or her invention in his or her home country. Certain countries which grant both patents and inventor’s certificates issue only inventor’s certificates on certain subject matter, generally pharmaceuticals, foodstuffs, and cosmetics.

To ensure compliance with the treaty and statute, 37 CFR 1.55(l) provides that at the time of claiming priority to an inventor’s certificate, the applicant or his or her attorney must submit an affidavit or declaration stating that the applicant when filing his or her application for the inventor’s certificate had the option either to file for a patent or an inventor’s certificate as to the subject matter forming the basis for the claim of priority.

213.06   Claiming Priority and Filing a Certified Copy in a National Stage Application (35 U.S.C. 371) [R-07.2015]

37 CFR 1.55 Claim for foreign priority.

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  • (d) Time for filing priority claim—
    • *****
    • (2) Application under 35 U.S.C. 371. The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371, except as provided in paragraph (e) of this section.

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  • (f) Time for filing certified copy of foreign application—
    • *****
    • (2) Application under 35 U.S.C. 371. A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371. If a certified copy of the foreign application is not filed during the international stage in an international application in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f)1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior foreign application, except as provided in paragraphs (h), (i), and (j) of this section.

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PCT Rule 4

The Request (Contents)

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4.10 Priority Claim

  • (a) Any declaration referred to in Article 8(1) (“priority claim”) may claim the priority of one or more earlier applications filed either in or for any country party to the Paris Convention for the Protection of Industrial Property or in or for any Member of the World Trade Organization that is not party to that Convention. Any priority claim shall be made in the request; it shall consist of a statement to the effect that the priority of an earlier application is claimed and shall indicate:
    • (i) the date on which the earlier application was filed;
    • (ii) the number of the earlier application;
    • (iii) where the earlier application is a national application, the country party to the Paris Convention for the Protection of Industrial Property or the Member of the World Trade Organization that is not party to that Convention in which it was filed;
    • (iv) where the earlier application is a regional application, the authority entrusted with the granting of regional patents under the applicable regional patent treaty;
    • (v) where the earlier application is an international application, the receiving Office with which it was filed.
  • (b) In addition to any indication required under paragraph (a)(iv) or (v):
    • (i) where the earlier application is a regional application or an international application, the priority claim may indicate one or more countries party to the Paris Convention for the Protection of Industrial Property for which that earlier application was filed;
    • (ii) where the earlier application is a regional application and at least one of the countries party to the regional patent treaty is neither party to the Paris Convention for the Protection of Industrial Property nor a Member of the World Trade Organization, the priority claim shall indicate at least one country party to that Convention or one Member of the Organization for which that earlier application was filed.
  • (c) For the purposes of paragraphs (a) and (b), Article 2(vi) shall not apply.
  • (d) If, on September 29, 1999, paragraphs (a) and (b) as amended with effect from January 1, 2000, are not compatible with the national law applied by a designated Office, those paragraphs as in force until December 31, 1999, shall continue to apply after that date in respect of that designated Office for as long as the said paragraphs as amended continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by October 31, 1999. The information received shall be promptly published by the International Bureau in the Gazette.

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PCT Rule 17

The Priority Document

17.1. Obligation to Submit Copy of Earlier National or International Application

  • (a) Where the priority of an earlier national or international application is claimed under Article 8, a copy of that earlier application, certified by the authority with which it was filed (“the priority document”), shall, unless that priority document has already been filed with the receiving Office together with the international application in which the priority claim is made, and subject to paragraphs (b) and (b-bis), be submitted by the applicant to the International Bureau or to the receiving Office not later than 16 months after the priority date, provided that any copy of the said earlier application which is received by the International Bureau after the expiration of that time limit shall be considered to have been received by that Bureau on the last day of that time limit if it reaches it before the date of international publication of the international application.
  • (b) Where the priority document is issued by the receiving Office, the applicant may, instead of submitting the priority document, request the receiving Office to prepare and transmit the priority document to the International Bureau. Such request shall be made not later than 16 months after the priority date and may be subjected by the receiving Office to the payment of a fee.

  • (c) If the requirements of none of the three preceding paragraphs are complied with, any designated Office may, subject to paragraph (d), disregard the priority claim, provided that no designated Office shall disregard the priority claim before giving the applicant an opportunity to furnish the priority document within a time limit which shall be reasonable under the circumstances.
  • (d) No designated Office shall disregard the priority claim under paragraph (c) if the earlier application referred to in paragraph (a) was filed with it in its capacity as national Office or if the priority document is, in accordance with the Administrative Instructions, available to it from a digital library.

17.2. Availability of Copies

  • (a) Where the applicant has complied with Rule 17.1(a), (b) or (b-bis), the International Bureau shall, at the specific request of the designated Office, promptly but not prior to the international publication of the international application, furnish a copy of the priority document to that Office. No such Office shall ask the applicant himself to furnish it with a copy. The applicant shall not be required to furnish a translation to the designated Office before the expiration of the applicable time limit under Article 22. Where the applicant makes an express request to the designated Office under Article 23(2) prior to the international publication of the international application, the International Bureau shall, at the specific request of the designated Office, furnish a copy of the priority document to that Office promptly after receiving it.
  • (b) The International Bureau shall not make copies of the priority document available to the public prior to the international publication of the international application.
  • (c) Where the international application has been published under Article 21, the International Bureau shall furnish a copy of the priority document to any person upon request and subject to reimbursement of the cost unless, prior to that publication:
    • (i) the international application was withdrawn,
    • (ii) the relevant priority claim was withdrawn or considered, under Rule 26bis.2(b), not to have been made.

37 CFR 1.451 The priority claim and priority document in an international application.

  • (a) The claim for priority must, subject to paragraph (d) of this section, be made on the Request (PCT Rule 4.10) in a manner complying with sections 110 and 115 of the Administrative Instructions.
  • (b) Whenever the priority of an earlier United States national application or international application filed with the United States Receiving Office is claimed in an international application, the applicant may request in a letter of transmittal accompanying the international application upon filing with the United States Receiving Office or in a separate letter filed in the United States Receiving Office not later than 16 months after the priority date, that the United States Patent and Trademark Office prepare a certified copy of the prior application for transmittal to the International Bureau (PCT Article 8 and PCT Rule 17). The fee for preparing a certified copy is set forth in § 1.19(b)(1).
  • (c) If a certified copy of the priority document is not submitted together with the international application on filing, or, if the priority application was filed in the United States and a request and appropriate payment for preparation of such a certified copy do not accompany the international application on filing or are not filed within 16 months of the priority date, the certified copy of the priority document must be furnished by the applicant to the International Bureau or to the United States Receiving Office within the time limit specified in PCT Rule 17.1(a).
  • (d) The applicant may correct or add a priority claim in accordance with PCT Rule 26bis.1.

37 CFR 1.55(d)(2) and (f)(2) pertain to the time for filing a priority claim and the time for filing a certified copy of a foreign application in an international application entering the national stage under 35 U.S.C. 371.

In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made and a certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT with limited exceptions. See MPEP §§ 214.02 and 215.02. Note that it is permissible, but not required, to present the claim for priority in an application data sheet in an international application entering the national stage under 35 U.S.C. 371.

An international application which seeks to establish the right of priority must comply with the conditions and requirements as prescribed by the Treaty and the PCT Regulations, in order to avoid rejection of the claim to the right of priority. Reference is especially made to the requirement of making a declaration of the claim of priority at the time of filing of the international application (Article 8(1) of the Treaty and Rule 4.10 of the PCT Regulations) or correcting or adding a priority claim (PCT Rule 26bis.1) and the requirement of either filing a certified copy of the priority document with the international application, or submitting a certified copy of the priority document to the International Bureau at a certain time (Rule 17 of the PCT Regulations). The submission of the priority document to the International Bureau is only required in those instances where priority is based on an earlier filed foreign national application. With respect to the requirements of 37 CFR 1.55 as they pertain to applications entering the national stage under 35 U.S.C. 371, if the applicant submitted a certified copy of the foreign priority document in compliance with PCT Rule 17 during the international phase, the International Bureau will forward a copy of the certified priority document to each Designated Office that has requested a copy of the foreign priority document and the copy received from the International Bureau is acceptable to establish that applicant has filed a certified copy of the priority document. See MPEP § 1893.03(c). If, however, the International Bureau is unable to forward a copy of the certified priority document because the applicant failed to submit a certified copy of the foreign priority document during the international phase, the applicant will need to provide a certified copy of the priority document or have the Office retrieve the priority application in accordance with the priority document exchange program during the national stage to fulfill the requirements of 37 CFR 1.55.

If the priority document is an earlier national application and did not accompany the international application when filed with the Receiving Office, an applicant must submit such document to the International Bureau not later than 16 months after the priority date. However, should an applicant request early processing of his or her international application in accordance with Article 23(2) of the Treaty, the priority document may not be available to the Office at that time (Rule 17.2(a) of the PCT Regulations). Applicants are encouraged to check the Patent Application Information Retrieval (PAIR) system to verify that the certified copy has been received from the International Bureau. The formal requirements for obtaining the right of priority under 35 U.S.C. 365 differ somewhat from those imposed by 35 U.S.C. 119(a)-(d) and (f), however, the substantive right of priority is the same, in that it is derived from Article 4 of the Paris Convention for the Protection of Industrial Property (Article 8(2) of the Treaty).

35 U.S.C. 365(c) recognizes the benefit of the filing date of an earlier application under 35 U.S.C. 120. Any international application designating the United States, whether filed with a Receiving Office in this country or abroad, and even though other countries may have also been designated, has the effect of a regular national application in the United States, as of the international filing date. As such, any later filed national application, or international application designating the United States, may claim the benefit of the filing date of an earlier international application designating the United States, if the requirements and conditions of 35 U.S.C. 120 are fulfilled. Under the same circumstances, the benefit of the earlier filing date of a national application may be obtained in a later filed international application designating the United States. See MPEP § 211.01(c).

In those instances, where the applicant relies on an international application designating, but not originating in, the United States the Director may require submission of a copy of such application together with an English translation, since in some instances, and for various reasons, a copy of that international application or its translation might not otherwise be filed in the U.S. Patent and Trademark Office.

213.07   Claiming Priority and Filing a Certified Copy in a Nonprovisional International Design Application [R-07.2015]

37 CFR 1.55 Claim for foreign priority.

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  • (m) Time for filing priority claim and certified copy of foreign application in an international design application designating the United States. In an international design application designating the United States, the claim for priority may be made in accordance with the Hague Agreement and the Hague Agreement Regulations. In a nonprovisional international design application, the priority claim, unless made in accordance with the Hague Agreement and the Hague Agreement Regulations, must be presented in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. In a nonprovisional international design application, the priority claim and certified copy must be furnished in accordance with the time period and other conditions set forth in paragraph (g) of this section.

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  • (o) Priority under 35 U.S.C. 386(a) or (b). The right of priority under 35 U.S.C. 386(a) or (b) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.

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Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States. Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States. The provisions of 35 U.S.C. 386(a) and (b) apply to nonprovisional applications, international applications (PCT) and international design applications filed on or after May 13, 2015, and patents issued therefrom. See 37 CFR 1.55(o).

See MPEP § 2920.05(d) for additional information pertaining to the right of priority based upon an international design application.

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Last Modified: 11/04/2015 11:01:45