MPEP § 214.02 — Unintentionally Delayed Priority Claims (Annotated Rules)
§214.02 Unintentionally Delayed Priority Claims
This page consolidates and annotates all enforceable requirements under MPEP § 214.02, 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.
Unintentionally Delayed Priority Claims
This section addresses Unintentionally Delayed Priority Claims. Primary authority: 35 U.S.C. 119(a), 37 CFR 1.55(g), and 37 CFR 1.55. Contains: 4 requirements, 4 permissions, and 3 other statements.
Key Rules
Unintentional Delay Standard
If a claim for foreign priority is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it is accompanied by a grantable petition to accept the unintentionally delayed claim for priority. In addition, a petition to accept an unintentionally delayed claim for foreign priority is necessary to correct any error in a foreign priority claim if the correction is sought after expiration of the time period set forth in 37 CFR 1.55.
If a claim for foreign priority is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it is accompanied by a grantable petition to accept the unintentionally delayed claim for priority. In addition, a petition to accept an unintentionally delayed claim for foreign priority is necessary to correct any error in a foreign priority claim if the correction is sought after expiration of the time period set forth in 37 CFR 1.55.
In all applications, a grantable petition to accept an unintentionally delayed claim for priority must include: (1) the claim (i.e., the claim required by 35 U.S.C. 119(a) – (d) or (f), 365(a) or (b), or 386(a) or (b) and 37 CFR 1.55) for priority to the prior foreign application, unless previously submitted; (2) a certified copy of the foreign application, unless previously submitted or an exception in 37 CFR 1.55(h), (i), or (j) 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 and the date the claim was filed was unintentional. While the Director may require additional information whenever there is a question of whether the delay was unintentional, a person filing a petition to accept a delayed priority claim more than two years after the date the foreign priority claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. This requirement is in addition to the requirement to provide a statement that the entire delay was unintentional in 37 CFR 1.55(e). See Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and Patents Based on Unintentional Delay, 85 FR 12222-24 (March 2, 2020). See also MPEP § 711.03(c) for further discussion of the “unintentional” delay standard.
In all applications, a grantable petition to accept an unintentionally delayed claim for priority must include: (1) the claim (i.e., the claim required by 35 U.S.C. 119(a) – (d) or (f), 365(a) or (b), or 386(a) or (b) and 37 CFR 1.55) for priority to the prior foreign application, unless previously submitted; (2) a certified copy of the foreign application, unless previously submitted or an exception in 37 CFR 1.55(h), (i), or (j) 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 and the date the claim was filed was unintentional. While the Director may require additional information whenever there is a question of whether the delay was unintentional, a person filing a petition to accept a delayed priority claim more than two years after the date the foreign priority claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. This requirement is in addition to the requirement to provide a statement that the entire delay was unintentional in 37 CFR 1.55(e). See Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and Patents Based on Unintentional Delay, 85 FR 12222-24 (March 2, 2020). See also MPEP § 711.03(c) for further discussion of the “unintentional” delay standard.
Design Claim Form
Before May 13, 2015, no procedures were established for accepting an unintentionally delayed priority claim in a design application. Effective May 13, 2015, 37 CFR 1.55(e) provides for the filing of a petition for acceptance of an unintentionally delayed priority claim in a design application where the foreign priority claim was not submitted during the pendency of the design application. Thus, a petition under 37 CFR 1.55(e) may be filed along with request for a certificate of correction after patent grant in utility, plant, and design applications. See MPEP § 216.01.
Before May 13, 2015, no procedures were established for accepting an unintentionally delayed priority claim in a design application. Effective May 13, 2015, 37 CFR 1.55(e) provides for the filing of a petition for acceptance of an unintentionally delayed priority claim in a design application where the foreign priority claim was not submitted during the pendency of the design application. Thus, a petition under 37 CFR 1.55(e) may be filed along with request for a certificate of correction after patent grant in utility, plant, and design applications. See MPEP § 216.01.
Before May 13, 2015, no procedures were established for accepting an unintentionally delayed priority claim in a design application. Effective May 13, 2015, 37 CFR 1.55(e) provides for the filing of a petition for acceptance of an unintentionally delayed priority claim in a design application where the foreign priority claim was not submitted during the pendency of the design application. Thus, a petition under 37 CFR 1.55(e) may be filed along with request for a certificate of correction after patent grant in utility, plant, and design applications. See MPEP § 216.01.
Ordering Certified Copies
Where a priority claim under 37 CFR 1.55(g) was not timely made, 37 CFR 1.55(g) allows the priority claim and the certified copy required under 37 CFR 1.55 to be filed pursuant to a petition under 37 CFR 1.55(e) even if the application is not pending (e.g., a patented application). Thus, a petition under 37 CFR 1.55(e) may be filed along with request for a certificate of correction after patent grant. See MPEP § 216.01.
37 CFR 1.55(e)(2) requires that a petition to accept a delayed claim for priority be accompanied by a certified copy of the foreign application, unless previously submitted or an exception in 37 CFR 1.55(h), (i), or (j) applies. 37 CFR 1.55(h) contains provisions relating to when the requirement for a certified copy will be considered satisfied based on a certified copy filed in another U.S. patent or application (see also MPEP § 215, subsection III); 37 CFR 1.55(i) contains provisions relating to the priority document exchange agreement (see also MPEP §§ 215.01 and 215.02(a)); and 37 CFR 1.55(j) contains provisions relating to the filing of an interim copy of a foreign application (see also MPEP § 215.02(b)). If a grantable petition under 37 CFR 1.55(e) is filed, a further petition to accept the delayed filing of the certified copy is not required.
Petition for Delayed Priority Claim
In all applications, a grantable petition to accept an unintentionally delayed claim for priority must include: (1) the claim (i.e., the claim required by 35 U.S.C. 119(a) – (d) or (f), 365(a) or (b), or 386(a) or (b) and 37 CFR 1.55) for priority to the prior foreign application, unless previously submitted; (2) a certified copy of the foreign application, unless previously submitted or an exception in 37 CFR 1.55(h), (i), or (j) 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 and the date the claim was filed was unintentional. While the Director may require additional information whenever there is a question of whether the delay was unintentional, a person filing a petition to accept a delayed priority claim more than two years after the date the foreign priority claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. This requirement is in addition to the requirement to provide a statement that the entire delay was unintentional in 37 CFR 1.55(e). See Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and Patents Based on Unintentional Delay, 85 FR 12222-24 (March 2, 2020). See also MPEP § 711.03(c) for further discussion of the “unintentional” delay standard.
In all applications, a grantable petition to accept an unintentionally delayed claim for priority must include: (1) the claim (i.e., the claim required by 35 U.S.C. 119(a) – (d) or (f), 365(a) or (b), or 386(a) or (b) and 37 CFR 1.55) for priority to the prior foreign application, unless previously submitted; (2) a certified copy of the foreign application, unless previously submitted or an exception in 37 CFR 1.55(h), (i), or (j) 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 and the date the claim was filed was unintentional. While the Director may require additional information whenever there is a question of whether the delay was unintentional, a person filing a petition to accept a delayed priority claim more than two years after the date the foreign priority claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. This requirement is in addition to the requirement to provide a statement that the entire delay was unintentional in 37 CFR 1.55(e). See Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and Patents Based on Unintentional Delay, 85 FR 12222-24 (March 2, 2020). See also MPEP § 711.03(c) for further discussion of the “unintentional” delay standard.
Foreign Priority Claim Requirements
37 CFR 1.55(e)(2) requires that a petition to accept a delayed claim for priority be accompanied by a certified copy of the foreign application, unless previously submitted or an exception in 37 CFR 1.55(h), (i), or (j) applies. 37 CFR 1.55(h) contains provisions relating to when the requirement for a certified copy will be considered satisfied based on a certified copy filed in another U.S. patent or application (see also MPEP § 215, subsection III); 37 CFR 1.55(i) contains provisions relating to the priority document exchange agreement (see also MPEP §§ 215.01 and 215.02(a)); and 37 CFR 1.55(j) contains provisions relating to the filing of an interim copy of a foreign application (see also MPEP § 215.02(b)). If a grantable petition under 37 CFR 1.55(e) is filed, a further petition to accept the delayed filing of the certified copy is not required.
Electronic Priority Document Exchange (PDX)
37 CFR 1.55(e)(2) requires that a petition to accept a delayed claim for priority be accompanied by a certified copy of the foreign application, unless previously submitted or an exception in 37 CFR 1.55(h), (i), or (j) applies. 37 CFR 1.55(h) contains provisions relating to when the requirement for a certified copy will be considered satisfied based on a certified copy filed in another U.S. patent or application (see also MPEP § 215, subsection III); 37 CFR 1.55(i) contains provisions relating to the priority document exchange agreement (see also MPEP §§ 215.01 and 215.02(a)); and 37 CFR 1.55(j) contains provisions relating to the filing of an interim copy of a foreign application (see also MPEP § 215.02(b)). If a grantable petition under 37 CFR 1.55(e) is filed, a further petition to accept the delayed filing of the certified copy is not required.
Citations
| Primary topic | Citation |
|---|---|
| Petition for Delayed Priority Claim Unintentional Delay Standard | 35 U.S.C. § 119(a) |
| Petition for Delayed Priority Claim Unintentional Delay Standard | 37 CFR § 1.17(m) |
| Ordering Certified Copies Petition for Delayed Priority Claim Unintentional Delay Standard | 37 CFR § 1.55 |
| Design Claim Form Electronic Priority Document Exchange (PDX) Foreign Priority Claim Requirements Ordering Certified Copies Petition for Delayed Priority Claim Unintentional Delay Standard | 37 CFR § 1.55(e) |
| Electronic Priority Document Exchange (PDX) Foreign Priority Claim Requirements Ordering Certified Copies | 37 CFR § 1.55(e)(2) |
| Ordering Certified Copies | 37 CFR § 1.55(g) |
| Electronic Priority Document Exchange (PDX) Foreign Priority Claim Requirements Ordering Certified Copies Petition for Delayed Priority Claim Unintentional Delay Standard | 37 CFR § 1.55(h) |
| Electronic Priority Document Exchange (PDX) Foreign Priority Claim Requirements Ordering Certified Copies | 37 CFR § 1.55(i) |
| Electronic Priority Document Exchange (PDX) Foreign Priority Claim Requirements Ordering Certified Copies | 37 CFR § 1.55(j) |
| Electronic Priority Document Exchange (PDX) Foreign Priority Claim Requirements Ordering Certified Copies | MPEP § 215 |
| Electronic Priority Document Exchange (PDX) Foreign Priority Claim Requirements Ordering Certified Copies | MPEP § 215.01 |
| Electronic Priority Document Exchange (PDX) Foreign Priority Claim Requirements Ordering Certified Copies | MPEP § 215.02(b) |
| Design Claim Form Ordering Certified Copies | MPEP § 216.01 |
| Petition for Delayed Priority Claim Unintentional Delay Standard | MPEP § 711.03(c) |
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 § 214.02 — Unintentionally Delayed Priority Claims
Source: USPTO214.02 Unintentionally Delayed Priority Claims [R-07.2022]
37 CFR 1.55 Claim for foreign priority.
*****
- (e) Delayed priority claim. Unless such claim is accepted in
accordance with the provisions of this paragraph, any claim for priority under
35 U.S.C.
119(a) through (d) or (f),
365(a) or (b), or 386(a) or 386(b) not presented in the
manner required by paragraph (d) or (m) of this section during pendency and
within the time period provided by paragraph (d) of this section (if
applicable) is considered to have been waived. If a claim for priority is
considered to have been waived under this section, the claim may be accepted if
the priority claim was unintentionally delayed. A petition to accept a delayed
claim for priority under 35 U.S.C. 119(a) through
(d) or (f), 365(a) or
(b), or 386(a) or 386(b) must be accompanied by:
- (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, 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 as set forth in § 1.17(m); and
- (4) A statement that the entire delay between the date the priority claim was due under this section and the date the priority claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
*****
Where a priority claim under 37 CFR 1.55(g) was not timely made, 37 CFR 1.55(g) allows the priority claim and the certified copy required under 37 CFR 1.55 to be filed pursuant to a petition under 37 CFR 1.55(e) even if the application is not pending (e.g., a patented application). Thus, a petition under 37 CFR 1.55(e) may be filed along with request for a certificate of correction after patent grant. See MPEP § 216.01.
If a claim for foreign priority is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it is accompanied by a grantable petition to accept the unintentionally delayed claim for priority. In addition, a petition to accept an unintentionally delayed claim for foreign priority is necessary to correct any error in a foreign priority claim if the correction is sought after expiration of the time period set forth in 37 CFR 1.55.
In all applications, a grantable petition to accept an unintentionally delayed claim for priority must include: (1) the claim (i.e., the claim required by 35 U.S.C. 119(a)–(d) or (f), 365(a) or (b), or 386(a) or (b) and 37 CFR 1.55) for priority to the prior foreign application, unless previously submitted; (2) a certified copy of the foreign application, unless previously submitted or an exception in 37 CFR 1.55(h), (i), or (j) 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 and the date the claim was filed was unintentional. While the Director may require additional information whenever there is a question of whether the delay was unintentional, a person filing a petition to accept a delayed priority claim more than two years after the date the foreign priority claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. This requirement is in addition to the requirement to provide a statement that the entire delay was unintentional in 37 CFR 1.55(e). See Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and Patents Based on Unintentional Delay, 85 FR 12222-24 (March 2, 2020). See also MPEP § 711.03(c) for further discussion of the “unintentional” delay standard.
37 CFR 1.55(e)(2) requires that a petition to accept a delayed claim for priority be accompanied by a certified copy of the foreign application, unless previously submitted or an exception in 37 CFR 1.55(h), (i), or (j) applies. 37 CFR 1.55(h) contains provisions relating to when the requirement for a certified copy will be considered satisfied based on a certified copy filed in another U.S. patent or application (see also MPEP § 215, subsection III); 37 CFR 1.55(i) contains provisions relating to the priority document exchange agreement (see also MPEP §§ 215.01 and 215.02(a)); and 37 CFR 1.55(j) contains provisions relating to the filing of an interim copy of a foreign application (see also MPEP § 215.02(b)). If a grantable petition under 37 CFR 1.55(e) is filed, a further petition to accept the delayed filing of the certified copy is not required.
Priority claims and certified copies of foreign applications filed after payment of the issue fee and before the patent grant will be placed in the application file but will not be reviewed.
Before May 13, 2015, no procedures were established for accepting an unintentionally delayed priority claim in a design application. Effective May 13, 2015, 37 CFR 1.55(e) provides for the filing of a petition for acceptance of an unintentionally delayed priority claim in a design application where the foreign priority claim was not submitted during the pendency of the design application. Thus, a petition under 37 CFR 1.55(e) may be filed along with request for a certificate of correction after patent grant in utility, plant, and design applications. See MPEP § 216.01.