MPEP § 213.04 — Requirement to File Priority Claim and Certified Copy During Pendency of Application (Annotated Rules)
§213.04 Requirement to File Priority Claim and Certified Copy During Pendency of Application
This page consolidates and annotates all enforceable requirements under MPEP § 213.04, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Requirement to File Priority Claim and Certified Copy During Pendency of Application
This section addresses Requirement to File Priority Claim and Certified Copy During Pendency of Application. Primary authority: 35 U.S.C. 119(b), 37 CFR 1.55(g), and 37 CFR 1.55(g)(1). Contains: 3 requirements, 1 permission, and 2 other statements.
Key Rules
Design Claim Form
37 CFR 1.55(g) sets forth the requirements for filing a priority claim, certified copy of foreign application, and translation that are applicable in all applications. 37 CFR 1.55(g)(1) specifies that 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 37 CFR 1.55(e) or (f), or with a petition accompanied by the fee set forth in 37 CFR 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. These provisions do not in any way supersede the timing requirements elsewhere in 37 CFR 1.55 for filing a claim for priority and the certified copy of the foreign application. 37 CFR 1.55(g)(1) simply indicates that the claim for priority and the certified copy of the foreign application must be filed in or received by the Office within the pendency of the application in all situations, unless an appropriate petition is filed.
37 CFR 1.55(g) sets forth the requirements for filing a priority claim, certified copy of foreign application, and translation that are applicable in all applications. 37 CFR 1.55(g)(1) specifies that 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 37 CFR 1.55(e) or (f), or with a petition accompanied by the fee set forth in 37 CFR 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. These provisions do not in any way supersede the timing requirements elsewhere in 37 CFR 1.55 for filing a claim for priority and the certified copy of the foreign application. 37 CFR 1.55(g)(1) simply indicates that the claim for priority and the certified copy of the foreign application must be filed in or received by the Office within the pendency of the application in all situations, unless an appropriate petition is filed.
37 CFR 1.55(g) sets forth the requirements for filing a priority claim, certified copy of foreign application, and translation that are applicable in all applications. 37 CFR 1.55(g)(1) specifies that 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 37 CFR 1.55(e) or (f), or with a petition accompanied by the fee set forth in 37 CFR 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. These provisions do not in any way supersede the timing requirements elsewhere in 37 CFR 1.55 for filing a claim for priority and the certified copy of the foreign application. 37 CFR 1.55(g)(1) simply indicates that the claim for priority and the certified copy of the foreign application must be filed in or received by the Office within the pendency of the application in all situations, unless an appropriate petition is filed.
37 CFR 1.55(g) sets forth the requirements for filing a priority claim, certified copy of foreign application, and translation that are applicable in all applications. 37 CFR 1.55(g)(1) specifies that 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 37 CFR 1.55(e) or (f), or with a petition accompanied by the fee set forth in 37 CFR 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. These provisions do not in any way supersede the timing requirements elsewhere in 37 CFR 1.55 for filing a claim for priority and the certified copy of the foreign application. 37 CFR 1.55(g)(1) simply indicates that the claim for priority and the certified copy of the foreign application must be filed in or received by the Office within the pendency of the application in all situations, unless an appropriate petition is filed.
Correction of Applicant's Mistake
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 37 CFR 1.323.
Foreign Priority Claim Requirements
In the following situations, the Office may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in 37 CFR 1.55 (see 37 CFR 1.55(g)(2)), or that an English translation of a non-English language foreign application be filed (see 37 CFR 1.55(g)(3)):
- (1) When the application is involved in an interference (see 37 CFR 41.202) or derivation (see 37 CFR part 42) proceeding;
- (2) When necessary to overcome the date of a reference relied upon by the examiner; or
- (3) When deemed necessary by the examiner.
Ordering Certified Copies
If an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) and it must be filed together with a statement that the translation of the certified copy is accurate.
Citations
| Primary topic | Citation |
|---|---|
| Design Claim Form | 35 U.S.C. § 119(b) |
| Correction of Applicant's Mistake | 35 U.S.C. § 255 |
| Design Claim Form | 37 CFR § 1.17(g) |
| Correction of Applicant's Mistake | 37 CFR § 1.323 |
| Design Claim Form Foreign Priority Claim Requirements | 37 CFR § 1.55 |
| Design Claim Form | 37 CFR § 1.55(e) |
| Design Claim Form | 37 CFR § 1.55(g) |
| Design Claim Form | 37 CFR § 1.55(g)(1) |
| Foreign Priority Claim Requirements | 37 CFR § 1.55(g)(2) |
| Foreign Priority Claim Requirements | 37 CFR § 1.55(g)(3) |
| Foreign Priority Claim Requirements | 37 CFR § 41.202 |
| Design Claim Form | PCT Rule 17 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 213.04 — Requirement to File Priority Claim and Certified Copy During Pendency of Application
Source: USPTO213.04 Requirement to File Priority Claim and Certified Copy During Pendency of Application [R-07.2022]
37 CFR 1.55 Claim for foreign priority.
*****
- (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.
- (2) The Office may require that the claim
for priority and the certified copy of the foreign application be filed
earlier than otherwise provided in this section:
- (i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
- (ii) When necessary to overcome the date of a reference relied upon by the examiner; or
- (iii) When deemed necessary by the examiner.
- (3) An English language translation of a
non-English language foreign application is not required except:
- (i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
- (ii) When necessary to overcome the date of a reference relied upon by the examiner; or
- (iii) When specifically required by the examiner.
- (4) If an English language translation of a non-English language foreign application is required, it must be filed together with a statement that the translation of the certified copy is accurate.
*****
37 CFR 1.55(g) sets forth the requirements for filing a priority claim, certified copy of foreign application, and translation that are applicable in all applications. 37 CFR 1.55(g)(1) specifies that 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 37 CFR 1.55(e) or (f), or with a petition accompanied by the fee set forth in 37 CFR 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. These provisions do not in any way supersede the timing requirements elsewhere in 37 CFR 1.55 for filing a claim for priority and the certified copy of the foreign application. 37 CFR 1.55(g)(1) simply indicates that the claim for priority and the certified copy of the foreign application must be filed in or received by the Office within the pendency of the application in all situations, unless an appropriate petition is filed.
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 37 CFR 1.323.
In the following situations, the Office may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in 37 CFR 1.55 (see 37 CFR 1.55(g)(2)), or that an English translation of a non-English language foreign application be filed (see 37 CFR 1.55(g)(3)):
- (1) When the application is involved in an interference (see 37 CFR 41.202) or derivation (see 37 CFR part 42) proceeding;
- (2) When necessary to overcome the date of a reference relied upon by the examiner; or
- (3) When deemed necessary by the examiner.
If an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) and it must be filed together with a statement that the translation of the certified copy is accurate.