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214    Formal Requirements of Claim for Foreign Priority [R-07.2015]

Under the statute (35 U.S.C. 119(b)), an applicant who wishes to secure the right of priority must comply with certain formal requirements within a time specified. If these requirements are not complied with the right of priority is lost and cannot thereafter be asserted.

The maximum time limit specified in the statute is that the claim for priority and the priority papers must be filed before the patent is granted, but the statute gives the Director authority to set this time limit at an earlier time during the pendency of the application. As a result of implementation of Public Law 112-211, 126 Stat. 1527 (titles I and title II of the Patent Law Treaties Implementation Act (PLTIA)), 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 were revised. The procedural requirements and the time relating to claims for priority of an earlier filed foreign application are set forth in 37 CFR 1.55. See MPEP § 214.01 for procedural requirements pertaining to filing a claim for priority. See MPEP §§ 215.02-215.03 for timing requirements for submitting a certified copy of the priority application. See MPEP § 213.06 for claiming foreign priority and filing a certified copy of the priority document in a national stage application and MPEP § 213.07 for claiming foreign priority and filing a certified copy of the priority document in a nonprovisional international design application.

Where a claim for priority under 35 U.S.C. 119(b) has not been made in a parent application, the claim for priority may be made in a continuing application provided the parent application has been filed within 12 months from the date of the earliest foreign filing (6 months for design applications). See In re Tangsrud, 184 USPQ 746 (Comm’r Pat. 1973). Where the requirements for perfecting priority under 35 U.S.C. 119(a)-(d) or (f) have not been met before the issuance of patent, see 37 CFR 1.55(g) and MPEP § 216.01 for an explanation of when the deficiencies are correctable by a certificate of correction or reissue.

It should be particularly noted that the certified copy must be filed in all cases even though it may not be necessary during the pendency of the application to overcome the date of any reference. The statute also gives the Director authority to require a translation of the foreign documents if not in the English language and such other information as the Director may deem necessary. See MPEP § 213.04 for additional information.

214.01   Time for Filing Priority Claim [R-07.2015]

37 CFR 1.55 Claim for foreign priority.

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  • (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.

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37 CFR 1.55(d)(1) sets forth the time periods for filing a priority claim in an application filed under 35 U.S.C. 111(a). See 37 CFR 1.55(d)(2) and MPEP § 213.06 for the time period for claiming priority in an application entering the national stage. The time periods set forth in 37 CFR 1.55(d) do not apply to design applications.

For original applications filed under 35 U.S.C. 111(a), the requirements of the statute are that the applicant must (a) file a claim for the right of priority and (b) identify the original foreign application by specifying the application number of the foreign application, the intellectual property authority or country in which the application was filed and the date of filing of the application. 35 U.S.C. 119(b)(1) specifies that the claim for priority and the required identification information must be filed at such time during the pendency of the application as set by the Director. For applications other than design applications, the Director has by rule set this time period as 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. See 37 CFR 1.55(d)(1). This time period is not extendable. In an application that entered the national stage from an international application after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and the Regulations under the PCT. See 37 CFR 1.55(d)(2) and MPEP § 213.06. In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g). See also MPEP §§ 1504.10 and 2920.05(d) for additional information pertaining to priority claims in design applications.

Claims for foreign priority not presented within the time period specified in 37 CFR 1.55 are considered to have been waived. If a claim for priority under 35 U.S.C. 119(a) - (d) or (f), 365(a) or (b), or386(a) or (b) is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it includes the required identification information and is accompanied by a grantable petition to accept the unintentionally delayed claim for priority. See MPEP § 214.02 for the treatment of unintentionally delayed priority claims.

For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, 37 CFR 1.55(d)(1) requires the claim for priority to be presented in an application data sheet. For applications filed under 35 U.S.C. 111(a) prior to September 16, 2012, unless provided in an application data sheet, the oath or declaration under 37 CFR 1.63 must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing. See 37 CFR 1.55(n).

214.02   Unintentionally Delayed Priority Claims [R-07.2015]

37 CFR 1.55 Claim for foreign priority.

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  • (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.

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Where a priority claim under 37 CFR 1.55(g) was not timely made, 37 CFR 1.55(g) allows the priority claim and the certified copy required under 37 CFR 1.55 to be filed pursuant to a petition under 37 CFR 1.55(e) even if the application is not pending (e.g., a patented application). Thus, a petition under 37 CFR 1.55(e) may be filed along with request for a certificate of correction after patent grant. See MPEP § 216.01.

If a claim for foreign priority is presented after the time period set in 37 CFR 1.55, the claim may be accepted if the priority claim was unintentionally delayed. In all applications, a grantable petition to accept an unintentionally delayed claim for priority must include: (1) the claim (i.e., the claim required by 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b) and 37 CFR 1.55) for priority to the prior foreign application, unless previously submitted; (2) a certified copy of the foreign application, unless previously submitted or an exception in 37 CFR 1.55(h), (i), or (j) applies; (3) the petition fee set forth in 37 CFR 1.17(m); and (4) a statement that the entire delay between the date the claim was due and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

37 CFR 1.55(e)(2) requires that a petition to accept a delayed claim for priority be accompanied by a certified copy of the foreign application, unless previously submitted or an exception in 37 CFR 1.55(h), (i), or (j) applies. 37 CFR 1.55(h) contains provisions relating to when the requirement for a certified copy will be considered satisfied based on a certified copy filed in another U.S. patent or application (see also MPEP § 215, subsection III); 37 CFR 1.55(i) contains provisions relating to the priority document exchange agreement (see also MPEP §§ 215.01 and 215.02(a)); and 37 CFR 1.55(j) contains provisions relating to the filing of an interim copy of a foreign application (see also MPEP § 215.02(b)).

Priority claims and certified copies of foreign applications filed after payment of the issue fee and before the patent grant will be placed in the application file but will not be reviewed.

Before May 13, 2015, no procedures were established for accepting an unintentionally delayed priority claim in a design application. Effective May 13, 2015, 37 CFR 1.55(e) provides for the filing of a petition for acceptance of an unintentionally delayed priority claim in a design application where the foreign priority claim was not submitted during the pendency of the design application. Thus, a petition under 37 CFR 1.55(e) may be filed along with request for a certificate of correction after patent grant in utility, plant, and design applications. See MPEP § 216.01.

214.03   Office Acknowledgement of Priority Claims [R-07.2015]

I.UNTIMELY CLAIM FOR PRIORITY

If the foreign priority claim in an original application filed under 35 U.S.C. 111(a) (other than a design application) is submitted after the time period set in 37 CFR 1.55 and without a petition under 37 CFR 1.55, the examiner may use form paragraph 2.21.01 to notify applicant that the foreign priority claim will not be entered

¶ 2.21.01    35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) Foreign Priority Claim is Untimely

The foreign priority claim filed on [1] was not entered because the foreign priority claim was not filed during the time period set forth in 37 CFR 1.55. For original applications filed under 35 U.S.C. 111(a) (other than a design application) on or after November 29, 2000, the time period is 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. In addition, if the application was filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet. See 37 CFR 1.55(d)(1). For national stage applications 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). If applicant desires priority under 35 U.S.C. 119(a)-(d), (f), 365(a) or (b), or 386(a) based upon a prior foreign application, applicant must file a petition for an unintentionally delayed priority claim under 37 CFR 1.55(e). The petition must be accompanied by (1) the priority claim under 35 U.S.C. 119(a)-(d), (f), 365(a) or (b), or 386(a) in accordance with 37 CFR 1.55 identifying the prior foreign application to which priority is claimed, unless previously submitted; (2) a certified copy of the foreign application, unless previously submitted or an exception under 37 CFR 1.55 applies; (3) the petition fee under 37 CFR 1.17(m); and (4) a statement that the entire delay between the date the claim was due under 37 CFR 1.55 and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

Examiner Note:

  • 1. Use this form paragraph only for original applications filed under 35 U.S.C. 111(a) on or after November 29, 2000 and for national stage applications under 35 U.S.C. 371. DO NOT use for design applications.
  • 2. In bracket 1, insert the date the amendment or paper containing the foreign priority claim was filed.
II.NO IRREGULARITIES AND PRIORITY CLAIM TIMELY

When the claim for foreign priority and the certified copy of the foreign application are received within the time period set forth in 37 CFR 1.55, if applicable, they are entered into the application file history. Assuming that the papers are timely and regular in form and that there are no irregularities in dates, the examiner in the next Office action will advise the applicant that the papers have been received on form PTOL-326 or by use of form paragraph 2.26.

¶ 2.26    Claimed Foreign Priority - Certified Copy Filed

Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.

Where the foreign priority papers have been filed in a parent application, use form paragraph 2.27.

¶ 2.27    Acknowledge Certified Copy of Foreign Priority Paper in Parent

Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119(a) -(d). The certified copy has been filed in parent Application No. [1], filed on [2].

Examiner Note:

  • 1. For problems with foreign priority, see form paragraphs 2.18 to 2.24.
  • 2. In bracket 1, insert series code and serial no. of parent.
III.FOREIGN APPLICATION FILED MORE THAN A YEAR BEFORE EARLIEST EFFECTIVE U.S. FILING

Where the earlier foreign application was filed more than 12 months prior to the U.S. application and priority has not been restored under PCT Rule 26bis.3 for an international application or upon a granted petition under 37 CFR 1.55(c), use form paragraph 2.23.

¶ 2.23    Foreign Filing More Than 12 Months Earlier, No Petition to Restore Priority Granted

Acknowledgment is made of applicant's claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) based upon an application filed in [1] on [2]. The claim for priority cannot be based on said application, because the subsequent nonprovisional or international application designating the United States was filed more than twelve months thereafter and no petition under 37 CFR 1.55 or request under PCT Rule 26bis.3 to restore the right of priority has been granted.

Applicant may wish to file a petition under 37 CFR 1.55(c) to restore the right of priority if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional. A petition to restore the right of priority must include: (1) the priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) 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); (2) the petition fee set forth in 37 CFR 1.17(m); and (3) a statement that the delay in filing the subsequent application within the twelve-month period was unintentional. The petition to restore the right of priority 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. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

Examiner Note:

  • 1. Use this form paragraph only for original applications filed under 35 U.S.C. 111(a) on or after November 29, 2000 and for national stage applications under 35 U.S.C. 371. DO NOT use for design applications.
  • 2. In bracket 1, insert the country name.
  • 3. In bracket 2, insert the filing date of the foreign application.
IV.SOME FOREIGN APPLICATIONS FILED MORE THAN A YEAR BEFORE U.S. FILING

For example, where a British provisional specification was filed more than a year before a U.S. application, but the British complete application was filed within the year, and certified copies of both were submitted, language similar to the following should be used: “Receipt is acknowledged of papers filed on September 18, 1979, purporting to comply with the requirements of 35 U.S.C. 119(a)-(d). It is not seen how the claim for priority can be based on the British specification filed January 23, 1978, because the instant application was filed more than one year thereafter. However, the printed heading of the patent will note the claimed priority date based on the complete specification; i.e., November 1, 1978, for such subject matter as was not disclosed in the provisional specification.”

V.APPLICATION IN ISSUE

When the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the foreign priority claim or certified copy will be placed in the file record but there will be no review of the papers and the patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the foreign priority claim or certified copy considered after publication of the patent. In addition, for original applications filed under 35 U.S.C. 111(a) or international applications entering the national stage under 35 U.S.C. 371, a grantable petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55 must be filed with the certificate of correction. See MPEP § 216.01.

214.04   Proper Identification of Priority Application in Foreign Priority Claim [R-07.2015]

To ensure an accurate and complete citation of a foreign priority application, applicants should review the list of the various intellectual property offices and the recommended presentation of a foreign application number for each, which can be found in the tables of the online WIPO Handbook on Industrial Property Information and Documentation (www.wipo.int/standards/en/), Part 7: Examples and Industrial Property Offices Practices (www.wipo.int/standards/en/part_07.html), including Part 7.2.1: Presentation of Application Numbers (www.wipo.int/standards/en/pdf/07-02-01.pdf).The tables should enable applicants, examiners and others to extract from the various formats the minimum required data which comprises a proper citation. The “Minimum Significant Part of the Number” identified in the tables should be used in United States Patent and Trademark Office records. Proper identification of priority applications is essential to establishing accurate and complete relationships among various patent documents, especially in the context of electronic priority document exchange programs (see MPEP § 215.01).

The tables set forth below include only a partial list of recommended presentations of foreign application numbers. A complete updated list of the recommended presentation of a foreign application number based on the numbering system used by the foreign intellectual property office is maintained by the WIPO and can be found in the online WIPO Handbook on Industrial Property Information and Documentation as explained above.

COUNTRIES OR ORGANIZATIONS HAVING ANNUAL SERIES OF APPLICATION NUMBERS, in effect on November 11, 2001
COUNTRIES OR ORGANIZATIONS HAVING ANNUAL SERIES OF APPLICATION NUMBERS, in effect on November 11, 2001
COUNTRIES OR ORGANIZATIONS HAVING ANNUAL SERIES OF APPLICATION NUMBERS, in effect on November 11, 2001
COUNTRIES OR ORGANIZATIONS HAVING ANNUAL SERIES OF APPLICATION NUMBERS, in effect on November 11, 2001
COUNTRIES OR ORGANIZATIONS HAVING ANNUAL SERIES OF APPLICATION NUMBERS, in effect on November 11, 2001

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