12 - Unintentionally delayed foreign priority claims

Deciding Office:  Office of Petitions

The criteria for a petition related to unintentionally delayed priority claims are set forth in 37 CFR 1.55 and MPEP   214.

  • A petition under 37 CFR 1.55 (e)  to accept an unintentionally delayed priority claim requires:

(1) the claim submitted with the petition must identify

  • the prior foreign application for which priority is claimed, as well as
  • any foreign application for the same subject matter and having a filing date before that of the application for which priority is claimed, by the
    • application number,
    • country (or intellectual property authority), and
    • the filing date, and
  • be included in an Application Data Sheet (37 CFR 1.76(b)(6)), 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 set forth in § 1.17(m); and

(4) a statement that the entire delay between the date the claim was due under 37 CFR 1.55(d) 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 nonprovisional application must be filed within 12 months (six months in the case of a design application) of the filing date of the foreign application, or be entitled to claim the benefit under 35 U.S.C. 120, 121, or 365(c) of an application that was not filed later than twelve months (six months in the case of a design application) of the filing date of the foreign application.

  • A petition under 37 CFR 1.55(c) to restore the right of priority to a prior application

A right of priority may be restored upon petition pursuant to 37 CFR 1.55(c) if the nonprovisional application was filed after 12 months (six months in the case of a design application) of the filing date of the foreign application but within 2 months of this period.

A petition under 37 CFR 1.55(c) to restore the right of priority to a prior application requires:

(1) the claim submitted with the petition must identify

  • the prior foreign application for which priority is claimed, as well as
  • any foreign application for the same subject matter and having a filing date before that of the application for which priority is claimed, by the
    • application number,
    • country (or intellectual property authority), and
    • the filing date, and be included in an Application Data Sheet (37 CFR 1.76(b)(6)), unless previously submitted;

(2) the petition fee set forth in § 1.17(m); and

(3) a statement that the delay in filing the subsequent application within the period 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).

Fees:

For the proper petition fee required for a petitions related to unintentionally delayed priority claims, please consult the current USPTO fee schedule on the Fees and payments page for code 1454/2454/3454 (Large Entity/Small Entity/Micro Entity) under the Patent Petition Fees.

How to file:

This petition may be filed using any of these delivery methods.

For the relevant patent laws and rules applicable to for petitions related to unintentionally delayed priority claims, please see:

  • 37 CFR 1.17, Patent application and reexamination processing fees;
  • 37 CFR 1.55, Claim for foreign priority;
  • MPEP § 211, Claiming the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e); and
  • MPEP §  214, Formal requirements of claim for foreign priority.

Forms:

No form available. Submit a signed request that includes information listed in Requirements of a petition.

For further assistance, please contact the Petitions Help Desk between 8:30 AM - 5 PM (EDT).