MPEP § 1417 — Claim for Priority Under 35 U.S.C. 119(a)-(d) (Annotated Rules)
§1417 Claim for Priority Under 35 U.S.C. 119(a)-(d)
This page consolidates and annotates all enforceable requirements under MPEP § 1417, 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.
Claim for Priority Under 35 U.S.C. 119(a)-(d)
This section addresses Claim for Priority Under 35 U.S.C. 119(a)-(d). Primary authority: 35 U.S.C. 119(a), 37 CFR 1.76, and 37 CFR 1.63. Contains: 4 requirements, 1 guidance statement, 1 permission, and 1 other statement.
Key Rules
Foreign Priority Claim Requirements
A claim for priority to an earlier filing date in a foreign country under 35 U.S.C. 119(a)-(d) must be made in a reissue application, even though such a claim was previously made in the application for the original patent to be reissued. However, no additional certified copy of the foreign application is necessary. See MPEP § 215. For reissue applications filed on or after September 16, 2012, the foreign priority information for the priority claim must be presented in an application data sheet (ADS) under 37 CFR 1.76. For applications filed prior to September 16, 2012, unless provided in an application data sheet, pre-AIA 37 CFR 1.63 requires that the oath or declaration must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing. See MPEP § 214.01.
A reissue was granted in Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where the only ground urged was failure to file a certified copy of the original foreign application to obtain the right of foreign priority under 35 U.S.C. 119(a)-(d) before the patent was granted. In Brenner, the claim for priority had been made in the prosecution of the original patent, and it was only necessary to submit a certified copy of the priority document in the reissue application to perfect priority (the claim for priority must be repeated in the reissue application). Reissue is also available to correct the "error" in failing to take any steps to obtain the right of foreign priority under 35 U.S.C. 119(a) -(d) before the original patent was granted. See Fontijn v. Okamoto, 518 F.2d 610, 622, 186 USPQ 97, 106 (CCPA 1975) (“a patent may be reissued for the purpose of establishing a claim to priority which was not asserted, or which was not perfected during the prosecution of the original application”). In a situation where it is necessary to make a priority claim in a reissue application that was not made in the original patent, the reissue applicant will have to file a petition for an unintentionally delayed priority claim under 37 CFR 1.55(e) in addition to filing a reissue application. See MPEP § 214.02. See MPEP § 1481.03 for correction of a benefit claim via a certificate of correction.
AIA Effective Dates
A claim for priority to an earlier filing date in a foreign country under 35 U.S.C. 119(a)-(d) must be made in a reissue application, even though such a claim was previously made in the application for the original patent to be reissued. However, no additional certified copy of the foreign application is necessary. See MPEP § 215. For reissue applications filed on or after September 16, 2012, the foreign priority information for the priority claim must be presented in an application data sheet (ADS) under 37 CFR 1.76. For applications filed prior to September 16, 2012, unless provided in an application data sheet, pre-AIA 37 CFR 1.63 requires that the oath or declaration must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing. See MPEP § 214.01.
A claim for priority to an earlier filing date in a foreign country under 35 U.S.C. 119(a)-(d) must be made in a reissue application, even though such a claim was previously made in the application for the original patent to be reissued. However, no additional certified copy of the foreign application is necessary. See MPEP § 215. For reissue applications filed on or after September 16, 2012, the foreign priority information for the priority claim must be presented in an application data sheet (ADS) under 37 CFR 1.76. For applications filed prior to September 16, 2012, unless provided in an application data sheet, pre-AIA 37 CFR 1.63 requires that the oath or declaration must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing. See MPEP § 214.01.
Foreign Priority Claims
The examiner should note that foreign priority information on the front page of the patent will not be carried forward to the reissue from the original patent. Therefore, it is important that the bibliographic data (bib-data) sheet accurately list the application number, country (or intellectual property authority), day, month, and year of each foreign application to which the U.S. application is claiming priority. If there is a discrepancy between the bib-data sheet and the front page of the original patent, the examiner should notify the applicant in the next Office action of such discrepancy and advise the applicant to take appropriate corrective action (e.g., request a corrected filing receipt, file application data sheet in accordance with 37 CFR 1.76(c)). The examiner must also indicate in the Office action and on the bib-data sheet whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met.
A reissue was granted in Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where the only ground urged was failure to file a certified copy of the original foreign application to obtain the right of foreign priority under 35 U.S.C. 119(a)-(d) before the patent was granted. In Brenner, the claim for priority had been made in the prosecution of the original patent, and it was only necessary to submit a certified copy of the priority document in the reissue application to perfect priority (the claim for priority must be repeated in the reissue application). Reissue is also available to correct the "error" in failing to take any steps to obtain the right of foreign priority under 35 U.S.C. 119(a) -(d) before the original patent was granted. See Fontijn v. Okamoto, 518 F.2d 610, 622, 186 USPQ 97, 106 (CCPA 1975) (“a patent may be reissued for the purpose of establishing a claim to priority which was not asserted, or which was not perfected during the prosecution of the original application”). In a situation where it is necessary to make a priority claim in a reissue application that was not made in the original patent, the reissue applicant will have to file a petition for an unintentionally delayed priority claim under 37 CFR 1.55(e) in addition to filing a reissue application. See MPEP § 214.02. See MPEP § 1481.03 for correction of a benefit claim via a certificate of correction.
Corrective Office Action
The examiner should note that foreign priority information on the front page of the patent will not be carried forward to the reissue from the original patent. Therefore, it is important that the bibliographic data (bib-data) sheet accurately list the application number, country (or intellectual property authority), day, month, and year of each foreign application to which the U.S. application is claiming priority. If there is a discrepancy between the bib-data sheet and the front page of the original patent, the examiner should notify the applicant in the next Office action of such discrepancy and advise the applicant to take appropriate corrective action (e.g., request a corrected filing receipt, file application data sheet in accordance with 37 CFR 1.76(c)). The examiner must also indicate in the Office action and on the bib-data sheet whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met.
Types of Office Actions
The examiner should note that foreign priority information on the front page of the patent will not be carried forward to the reissue from the original patent. Therefore, it is important that the bibliographic data (bib-data) sheet accurately list the application number, country (or intellectual property authority), day, month, and year of each foreign application to which the U.S. application is claiming priority. If there is a discrepancy between the bib-data sheet and the front page of the original patent, the examiner should notify the applicant in the next Office action of such discrepancy and advise the applicant to take appropriate corrective action (e.g., request a corrected filing receipt, file application data sheet in accordance with 37 CFR 1.76(c)). The examiner must also indicate in the Office action and on the bib-data sheet whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met.
Ordering Certified Copies
A reissue was granted in Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where the only ground urged was failure to file a certified copy of the original foreign application to obtain the right of foreign priority under 35 U.S.C. 119(a)-(d) before the patent was granted. In Brenner, the claim for priority had been made in the prosecution of the original patent, and it was only necessary to submit a certified copy of the priority document in the reissue application to perfect priority (the claim for priority must be repeated in the reissue application). Reissue is also available to correct the "error" in failing to take any steps to obtain the right of foreign priority under 35 U.S.C. 119(a) -(d) before the original patent was granted. See Fontijn v. Okamoto, 518 F.2d 610, 622, 186 USPQ 97, 106 (CCPA 1975) (“a patent may be reissued for the purpose of establishing a claim to priority which was not asserted, or which was not perfected during the prosecution of the original application”). In a situation where it is necessary to make a priority claim in a reissue application that was not made in the original patent, the reissue applicant will have to file a petition for an unintentionally delayed priority claim under 37 CFR 1.55(e) in addition to filing a reissue application. See MPEP § 214.02. See MPEP § 1481.03 for correction of a benefit claim via a certificate of correction.
Petition for Delayed Priority Claim
A reissue was granted in Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where the only ground urged was failure to file a certified copy of the original foreign application to obtain the right of foreign priority under 35 U.S.C. 119(a)-(d) before the patent was granted. In Brenner, the claim for priority had been made in the prosecution of the original patent, and it was only necessary to submit a certified copy of the priority document in the reissue application to perfect priority (the claim for priority must be repeated in the reissue application). Reissue is also available to correct the "error" in failing to take any steps to obtain the right of foreign priority under 35 U.S.C. 119(a) -(d) before the original patent was granted. See Fontijn v. Okamoto, 518 F.2d 610, 622, 186 USPQ 97, 106 (CCPA 1975) (“a patent may be reissued for the purpose of establishing a claim to priority which was not asserted, or which was not perfected during the prosecution of the original application”). In a situation where it is necessary to make a priority claim in a reissue application that was not made in the original patent, the reissue applicant will have to file a petition for an unintentionally delayed priority claim under 37 CFR 1.55(e) in addition to filing a reissue application. See MPEP § 214.02. See MPEP § 1481.03 for correction of a benefit claim via a certificate of correction.
Citations
| Primary topic | Citation |
|---|---|
| AIA Effective Dates Corrective Office Action Foreign Priority Claim Requirements Foreign Priority Claims Ordering Certified Copies Petition for Delayed Priority Claim Types of Office Actions | 35 U.S.C. § 119(a) |
| AIA Effective Dates Foreign Priority Claim Requirements | 37 CFR § 1.55 |
| Foreign Priority Claim Requirements Foreign Priority Claims Ordering Certified Copies Petition for Delayed Priority Claim | 37 CFR § 1.55(e) |
| AIA Effective Dates Foreign Priority Claim Requirements | 37 CFR § 1.63 |
| AIA Effective Dates Foreign Priority Claim Requirements | 37 CFR § 1.76 |
| Corrective Office Action Foreign Priority Claims Types of Office Actions | 37 CFR § 1.76(c) |
| Foreign Priority Claim Requirements Foreign Priority Claims Ordering Certified Copies Petition for Delayed Priority Claim | MPEP § 1481.03 |
| AIA Effective Dates Foreign Priority Claim Requirements | MPEP § 214.01 |
| Foreign Priority Claim Requirements Foreign Priority Claims Ordering Certified Copies Petition for Delayed Priority Claim | MPEP § 214.02 |
| AIA Effective Dates Foreign Priority Claim Requirements | MPEP § 215 |
| Foreign Priority Claim Requirements Foreign Priority Claims Ordering Certified Copies Petition for Delayed Priority Claim | See Fontijn v. Okamoto, 518 F.2d 610, 622, 186 USPQ 97, 106 (CCPA 1975) |
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 § 1417 — Claim for Priority Under 35 U.S.C. 119(a)-(d)
Source: USPTO1417 Claim for Priority Under 35 U.S.C. 119(a)-(d) [R-07.2022]
I. PRIORITY UNDER 35 U.S.C. 119(a)-(d) WAS PERFECTED IN THE ORIGINAL PATENTA claim for priority to an earlier filing date in a foreign country under 35 U.S.C. 119(a)-(d) must be made in a reissue application, even though such a claim was previously made in the application for the original patent to be reissued. However, no additional certified copy of the foreign application is necessary. See MPEP § 215. For reissue applications filed on or after September 16, 2012, the foreign priority information for the priority claim must be presented in an application data sheet (ADS) under 37 CFR 1.76. For applications filed prior to September 16, 2012, unless provided in an application data sheet, pre-AIA 37 CFR 1.63 requires that the oath or declaration must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing. See MPEP § 214.01.
The examiner should note that foreign priority information on the front page of the patent will not be carried forward to the reissue from the original patent. Therefore, it is important that the bibliographic data (bib-data) sheet accurately list the application number, country (or intellectual property authority), day, month, and year of each foreign application to which the U.S. application is claiming priority. If there is a discrepancy between the bib-data sheet and the front page of the original patent, the examiner should notify the applicant in the next Office action of such discrepancy and advise the applicant to take appropriate corrective action (e.g., request a corrected filing receipt, file application data sheet in accordance with 37 CFR 1.76(c)). The examiner must also indicate in the Office action and on the bib-data sheet whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met.
II. PRIORITY UNDER 35 U.S.C. 119(a)-(d) IS NEWLY PERFECTED IN THE REISSUE APPLICATIONA reissue was granted in Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where the only ground urged was failure to file a certified copy of the original foreign application to obtain the right of foreign priority under 35 U.S.C. 119(a)-(d) before the patent was granted. In Brenner, the claim for priority had been made in the prosecution of the original patent, and it was only necessary to submit a certified copy of the priority document in the reissue application to perfect priority (the claim for priority must be repeated in the reissue application). Reissue is also available to correct the “error” in failing to take any steps to obtain the right of foreign priority under 35 U.S.C. 119(a) -(d) before the original patent was granted. See Fontijn v. Okamoto, 518 F.2d 610, 622, 186 USPQ 97, 106 (CCPA 1975) (“a patent may be reissued for the purpose of establishing a claim to priority which was not asserted, or which was not perfected during the prosecution of the original application”). In a situation where it is necessary to make a priority claim in a reissue application that was not made in the original patent, the reissue applicant will have to file a petition for an unintentionally delayed priority claim under 37 CFR 1.55(e) in addition to filing a reissue application. See MPEP § 214.02. See MPEP § 1481.03 for correction of a benefit claim via a certificate of correction.