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216    Entitlement to Priority [R-07.2015]

When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner generally makes no examination of the papers except to see that they contain no obvious formal defects and correspond in number, date and country to the application identified in the application data sheet for an application filed on or after September 16, 2012, or oath or declaration or application data sheet for an application filed prior to September 16, 2012. In addition, for original applications filed under 35 U.S.C. 111(a) (other than design applications) and international applications entering the national stage under 35 U.S.C. 371, the examiner should make sure that the claim for foreign priority is timely. Examiners may use form paragraph 2.21.01 to notify applicant that the foreign priority claim is untimely. See also MPEP § 214.03.

The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof. The only times during ex parte prosecution that the examiner considers the merits of an applicant’s claim of priority is when a reference is found with an effective date between the date of the foreign filing and the date of filing in the United States and when an interference situation is under consideration. If at the time of making an action the examiner has found such an intervening reference, he or she simply rejects whatever claims may be considered unpatentable thereover, without paying any attention to the priority date (assuming the certified copy of the priority papers has not yet been filed). The applicant in his or her reply may argue the rejection if it is of such a nature that it can be argued, or present the foreign papers for the purpose of overcoming the date of the reference. If the applicant argues the reference, the examiner, in the next action in the application, may specifically require the foreign papers to be filed in addition to repeating the rejection if it is still considered applicable, or he or she may merely continue the rejection.

Form paragraph 2.19 may be used in this instance.

¶ 2.19    Overcome Rejection by Translation

Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. See MPEP §§ 215 and 216.

Examiner Note:

This paragraph should follow a rejection based on an intervening reference.

In those cases where the applicant files the certified copy of the foreign application for the purpose of overcoming the effective date of a reference, a translation is required if the certified copy is not in the English language. When the examiner requires the filing of the certified copy, the translation should also be required at the same time. This translation must be filed together with a statement that the translation of the certified copy is accurate. When the necessary certified copy and translation are filed to overcome the date of the reference, the examiner’s action, if he or she determines that the applicant is not entitled to the priority date, is to repeat the rejection on the reference, stating the reasons why the applicant is not considered entitled to the date. If it is determined that the applicant is entitled to the date, the rejection is withdrawn in view of the priority date.

If the certified copy, and translation if necessary, is already in the file when the examiner finds a reference with the intervening effective date, the examiner will study the certified copy, if it is in the English language, to determine if the applicant is entitled to the priority date. If the applicant is found to be entitled to the priority date, the reference is not relied upon as prior art, but may be cited to applicant on form PTO-892. If the applicant is found not entitled to the date, the unpatentable claims are rejected on the reference with an explanation. If the certified copy is not in the English language and there is no translation, the examiner may reject the unpatentable claims and at the same time require an English translation for the purpose of determining the applicant’s right to rely on the foreign filing date.

The foreign application may have been filed by and in the name of the assignee or legal representative or agent of the inventor, as applicant. In such cases, if the certified copy of the foreign application corresponds with the one identified in an application data sheet, or for applications filed prior to September 16, 2012, in an application data sheet or in the oath or declaration filed under 37 CFR 1.63 (see 37 CFR 1.55(n)) and no discrepancies appear, it may be assumed that the nonprovisional application is entitled to claim priority to the foreign application. If the nonprovisional application and the certified copy of the foreign application do not name the same inventor or do not have at least one joint inventor in common, the priority date should be refused until the inconsistency is resolved. See also MPEP § 213.02.

The most important aspect of the examiner’s action pertaining to a right of priority is the determination of the identity of invention between the U.S. and the foreign applications. The foreign application may be considered in the same manner as if it had been filed in this country on the same date that it was filed in the foreign country, and the applicant is ordinarily entitled to any claims based on such foreign application that he or she would be entitled to under U.S. laws and practice. The foreign application must be examined for the question of sufficiency of the disclosure under 35 U.S.C. 112 as well as to determine if there is a basis for the claims sought.

In applications filed from the United Kingdom there may be submitted a certified copy of the “provisional specification,” which may also in some cases be accompanied by a copy of the “complete specification.” The nature and function of the United Kingdom provisional specification is described in an article in the Journal of the Patent Office Society of November 1936, pages 770-774. According to United Kingdom law the provisional specification need not contain a complete disclosure of the invention in the sense of 35 U.S.C. 112, but need only describe the general nature of the invention, and neither claims nor drawings are required. Consequently, in considering such provisional specifications, the question of completeness of disclosure is important. If it is found that the United Kingdom provisional specification is insufficient for lack of disclosure, reliance may then be had on the complete specification and its date, if one has been presented, the complete specification then being treated as a different application than the provisional specification. In some instances, the specification and drawing of the foreign application may have been filed at a date subsequent to the filing of the petition in the foreign country. Even though the petition is called the application and the filing date of this petition is the filing date of the application in a particular country, the date accorded here is the date on which the specification and drawing were filed.

A nonprovisional application may be found entitled to the filing date of the foreign application with respect to some claims and not with respect to others. In addition, an applicant may rely on two or more different foreign applications and may be entitled to the filing date of one of them with respect to certain claims and to another with respect to other claims.

216.01   Perfecting Claim for Priority Under 35 U.S.C. 119(a)-(d) or (f) After Issuance of a Patent [R-07.2015]

35 U.S.C. 119  Benefit of Earlier Filing Date; Right of Priority.

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  • (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.

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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.
  • (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.

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The failure to perfect a claim to foreign priority prior to issuance of the patent may be cured via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, provided the requirements of 37 CFR 1.55 are met, or by filing a reissue application.

I.PERFECTING PRIORITY CLAIM VIA CERTIFICATE OF CORRECTION

Effective May 13, 2015, 37 CFR 1.55(g) provides that the claim for priority and the certified copy of the foreign application must be filed within the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. 37 CFR 1.55(g) eliminates the need in many instances to file a reissue application in order to perfect a claim for foreign priority. Specifically,

  • (A) Where the priority claim required under 37 CFR 1.55 was timely filed in the application but was not included on the patent because the requirement under 37 CFR 1.55 for a certified copy was not satisfied, the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a grantable petition under 37 CFR 1.55(f) or, in the case of a design application, a grantable petition under 37 CFR 1.55(g). In this situation, a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim is not needed. A grantable petition under 37 CFR 1.55(f) or (g) must include the fee set forth in 37 CFR 1.17(g) and a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application; and
  • (B) Where a priority claim under 37 CFR 1.55 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).

37 CFR 1.55(h) provides that the requirement for a certified copy of the foreign application will 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 the prior-filed nonprovisional application is identified as containing a certified copy of the foreign application. Thus, applicant may request a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 where the prior-filed nonprovisional application is identified as containing a certified copy of the foreign application and where the priority claim was timely made in the application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) and the certified copy of the foreign application was timely filed in the parent application.

As an example of when a request to issue a certificate of correction may be used in order to perfect a claim to foreign priority benefits, see In re Van Esdonk, 187 USPQ 671 (Comm’r Pat. 1975). In In re Van Esdonk, a claim to foreign priority benefits had not been filed in the application prior to issuance of the patent. However, the application was a continuation of an earlier application in which the requirements of 35 U.S.C. 119(a)-(d) or (f) had been satisfied. Accordingly, the Commissioner held that the “applicants’ perfection of a priority claim under 35 U.S.C. 119 in the parent application will satisfy the statute with respect to their continuation application.”

Although In re Van Esdonk involved the patent of a continuation application filed under former 37 CFR 1.60, it is proper to apply the holding of that case in similar factual circumstances to any patented application having benefits under 35 U.S.C. 120. This is primarily because a claim to foreign priority benefits in a continuing application, where the claim has been perfected in the parent application, constitutes in essence a mere affirmation of the applicant’s previously expressed desire to receive benefits under 35 U.S.C. 119(a)-(d) or (f) for subject matter common to the foreign, parent, and continuing applications.

In summary, a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 may be requested and issued in order to perfect a claim for foreign priority benefit in a patent if (1) the requirements of 35 U.S.C. 119(a)-(d) or (f) had been satisfied in the patented application or in a parent application prior to issuance of the patent, and (2) the requirements of 37 CFR 1.55 are met.

II.PERFECTING PRIORITY CLAIM VIA REISSUE

As an alternative to requesting a certificate of correction, a claim to foreign priority benefits can be perfected by way of a reissue application in accordance with the rationale set forth in Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968). In circumstances where a claim to foreign priority benefits cannot be perfected via a certificate of correction because the requirements of 35 U.S.C. 119(a)-(d) or (f) had not been satisfied in the patented application, or its parent, prior to issuance, and the requirements of 37 CFR 1.55 are not met, the claim to foreign priority benefits can be perfected only by way of a reissue application. Note that 37 CFR 1.55(h) provides that the requirement 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 for a certified copy of the foreign application and such patent is identified as containing a certified copy of the foreign application.

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