Deciding Office: Office of Petitions
The criteria for a petition to restore the benefit of a provisional application or to restore the priority to a foreign application are set forth in 37 CFR 1.78 and MPEP § 211 and 37 CFR 1.55 and MPEP § 213, respectively.
In general, these are the steps for filing:
A petition to restore the right of priority to a prior-filed provisional application:
If the subsequent nonprovisional application has a filing date which is after the expiration of the twelve-month period set forth in 37 CFR 1.78 (a)(1)(i) but within two months from the expiration of the period set forth in paragraph 37 CFR 1.78 (a)(1)(i), the benefit of the provisional application may be restored upon petition, if the delay in filing the subsequent nonprovisional application was unintentional.
A petition to restore the benefit of a provisional application under this paragraph filed on or after May 13, 2015, must be filed in the subsequent application, and any petition to restore the benefit of a provisional application under this paragraph must include:
(i) The reference required by 35 U.S.C. 119(e) to the prior-filed provisional application in an application data sheet (§ 1.76(b)(5)) identifying it by provisional application number (consisting of series code and serial number), unless previously submitted;
(ii) The petition fee as set forth in § 1.17(m); and
(iii) A statement that the delay in filing the subsequent nonprovisional application within the twelve-month period set forth in paragraph 37 CFR 1.78 (a)(1)(i) was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
A petition to restore the right of priority to a prior-filed foreign 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-filed foreign application requires:
(1) The priority claim, which 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 37 CFR 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 petition related to restoration of benefit of a provisional application or priority to a foreign application, 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 petitions related to restoration of benefit of a provisional application or priority to a foreign application, please see:
- 37 CFR 1.17, Patent application and reexamination processing fees;
- 37 CFR 1.55, Claim for foreign priority;
- 37 CFR 1.78, Claiming benefit of earlier filing date and cross-references to other applications;
- MPEP § 211, Claiming the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e);
- MPEP § 213, Right of Priority of Foreign Application; and
- MPEP § 214, Formal requirements of claim for foreign priority.
Forms:
Use form PTO/SB/459 for a petition to restore benefit of a provisional application or priority to a foreign application under 37 CFR 1.78(b) or 37 CFR 1.55(c).
For further assistance, please contact the Petitions Help Desk from 8:30 a.m. to 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.