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|Top of Notices (328) December 29, 2020||US PATENT AND TRADEMARK OFFICE||Print This Notice 1481 CNOG 1999|
|Certificates of Correction||Referenced Items (326, 327, 328, 329)|
(328) Using Certificate of Correction to Perfect Claim for Priority Under 35 USC 119 Under 35 USC 119, an applicant may assert a right of priority and claim the benefit of an earlier filing date in a foreign country. In this regard, 35 USC 119 states: No application for patent shall be entitled to this right or priority unless a claim therefor and a certified copy of the original foreign application, specification and drawings upon which it is based are filed in the Patent and Trademark Office before the patent is granted. . . . The failure to perfect a claim to foreign priority benefits prior to issuance of the patent may be cured by filing a reissue application; Brenner v. State of Israel,158 USPQ 584 (CA DC 1968). However, under certain conditions, this failure may also be cured by filing a Certificate of Correction request under 35 USC 255 and 37 CFR 1.323. For example, in the case of In re Van Esdonk, 187 USPQ 671 (Comr. 1975), the Commissioner granted a request to issue a Certificate of Correction in order to perfect a claim to foreign priority benefits. In that case, 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 USC 119 had been satisfied. Accordingly, the Commissioner held that the "applicants' perfection of a priority claim under 35 USC 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 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 USC 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 USC 119 for subject matter common to the foreign, parent, and continuing applications. In summary, a Certificate of Correction under 35 USC 255 and 37 CFR 1.323 may be requested and issued in order to perfect a claim to foreign priority benefits in a patented continuing application if the requirements of 35 USC 119 had been satisfied in the parent application prior to issuance of the patent and the requirements of 37 CFR 1.55(a) are met. However, a claim to foreign priority benefits cannot be perfected via a Certificate of Correction if the requirements of 35 USC 119 had not been satisfied in the patented application, or its parent, prior to issuance and the requirements 37 CFR 155(a) are not met. In this latter circumstance, the claim to foreign priority benefits can be perfected only by way of a reissue application in accordance with the rationale set forth in Brenner v. State of Israel, supra. July 25, 1986 RENE D. TEGTMEYER Assistant Commissioner for Patents [1169 OG 38]