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.

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 12 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 (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 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(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).

Additional information:

The United States Patent and Trademark Office (USPTO) requires additional information concerning whether a delay in seeking acceptance of a delayed priority claim was unintentional where the petition to accept such priority claim is filed more than two years after the date the priority claim was due. See Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and Patents Based on Unintentional Delay, 85 FR 12222 (March 2, 2020).  

MPEP § 711.03(c)(II)(C)-(F) contains additional guidance on the information required to establish that the entire 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 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:

Use form PTO/SB/458 for a petition to accept an unintentionally delayed foreign priority claim under 37 CFR 1.55(e).

For further assistance, please contact the Petitions Help Desk between 8:30 a.m. - 5 p.m. ET.

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The Federal Register is the authoritative source and should be consulted if a need arises to verify the authenticity of the language for any CFR citation. Because fee schedule changes may not be reflected in the most recent version of the MPEP, please consult the USPTO Fee Schedule to determine current fee amounts.