MPEP § 215 — Certified Copy of Foreign Application (Annotated Rules)
§215 Certified Copy of Foreign Application
This page consolidates and annotates all enforceable requirements under MPEP § 215, 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.
Certified Copy of Foreign Application
This section addresses Certified Copy of Foreign Application. Primary authority: 35 U.S.C. 119(b)(3), 35 U.S.C. 119(a), and 35 U.S.C. 255. Contains: 2 requirements, 2 guidance statements, 1 permission, and 4 other statements.
Key Rules
Ordering Certified Copies
The certified copy which must be filed is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information. Certified copies include those retrieved by the Office in accordance with a priority document exchange program. See MPEP § 215.01. A copy of the certified copy filed by applicant, including a copy filed via the USPTO patent electronic filing system, will not satisfy the requirement in 37 CFR 1.55(g) for a certified copy. See MPEP § 502.02, subsection V. “Application” in this connection is not considered to include formal papers such as a petition. A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the certification indicates that it corresponds to the application as filed.
The certified copy which must be filed is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information. Certified copies include those retrieved by the Office in accordance with a priority document exchange program. See MPEP § 215.01. A copy of the certified copy filed by applicant, including a copy filed via the USPTO patent electronic filing system, will not satisfy the requirement in 37 CFR 1.55(g) for a certified copy. See MPEP § 502.02, subsection V. “Application” in this connection is not considered to include formal papers such as a petition. A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the certification indicates that it corresponds to the application as filed.
Where the benefit of a foreign filing date based on a foreign application is claimed in a later filed application (i.e., continuation, continuation-in-part, division) or in a reissue application, and a certified copy of the foreign application has been filed in a parent or related application, it is not necessary to file an additional certified copy in the later application. See 37 CFR 1.55(h). A reminder of this provision is found in form paragraph 2.20. The applicant when making such claim for priority may simply identify the application containing the certified copy. In such cases, the examiner should acknowledge the claim on form PTOL-326. Note copy in MPEP § 707.
Where priority is claimed but no certified copy of the foreign application has been filed, use form paragraph 2.25.
Foreign Priority Claims
35 U.S.C. 119(b)(3) authorizes the Office to require the applicant to furnish a certified copy of the foreign priority application, and the Office requires such a copy pursuant to 37 CFR 1.55. The filing of the foreign priority papers under 35 U.S.C. 119(a) – (d) makes the record of the file of the United States patent complete. The U.S. Patent and Trademark Office does not normally examine the papers to determine whether the applicant is in fact entitled to the right of priority and does not grant or refuse the right of priority, except when the application is involved in an interference or derivation proceeding, when necessary to overcome the date of a reference relied upon by the examiner, or when deemed necessary by the examiner. See MPEP § 216. When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner should review the certified copy to see that it contains no obvious formal defects and that it corresponds in number, date and country to the application identified in the application data sheet for an application filed on or after September 16, 2012, or oath or declaration or application data sheet for an application filed prior to September 16, 2012.
Where the benefit of a foreign filing date based on a foreign application is claimed in a later filed application (i.e., continuation, continuation-in-part, division) or in a reissue application, and a certified copy of the foreign application has been filed in a parent or related application, it is not necessary to file an additional certified copy in the later application. See 37 CFR 1.55(h). A reminder of this provision is found in form paragraph 2.20. The applicant when making such claim for priority may simply identify the application containing the certified copy. In such cases, the examiner should acknowledge the claim on form PTOL-326. Note copy in MPEP § 707.
Where the benefit of a foreign filing date based on a foreign application is claimed in a later filed application (i.e., continuation, continuation-in-part, division) or in a reissue application, and a certified copy of the foreign application has been filed in a parent or related application, it is not necessary to file an additional certified copy in the later application. See 37 CFR 1.55(h). A reminder of this provision is found in form paragraph 2.20. The applicant when making such claim for priority may simply identify the application containing the certified copy. In such cases, the examiner should acknowledge the claim on form PTOL-326. Note copy in MPEP § 707.
Foreign Priority Claim Requirements
Where the benefit of a foreign filing date based on a foreign application is claimed in a later filed application (i.e., continuation, continuation-in-part, division) or in a reissue application, and a certified copy of the foreign application has been filed in a parent or related application, it is not necessary to file an additional certified copy in the later application. See 37 CFR 1.55(h). A reminder of this provision is found in form paragraph 2.20. The applicant when making such claim for priority may simply identify the application containing the certified copy. In such cases, the examiner should acknowledge the claim on form PTOL-326. Note copy in MPEP § 707.
If the applicant fails to call attention to the fact that the certified copy is in the parent or related application and the examiner is aware of the fact that a claim for priority under 35 U.S.C. 119(a) – (d) or (f) was made in the parent application, the examiner should call applicant’s attention to these facts in an Office action, so that if a patent issues on the later or reissue application, the priority data will appear in the patent. In such cases, the language of form paragraph 2.20 should be used.
National Stage Entry Requirements
When the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the foreign priority claim or certified copy will be placed in the file record but there may be no review of the papers and the patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the foreign priority claim or certified copy considered after publication of the patent. In addition, for original applications filed under 35 U.S.C. 111(a) or international applications entering the national stage under 35 U.S.C. 371, a grantable petition under 37 CFR 1.55(e) to accept an unintentionally delayed claim for priority and the petition fee must be filed with the certificate of correction. See MPEP § 216.01.
When the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the foreign priority claim or certified copy will be placed in the file record but there may be no review of the papers and the patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the foreign priority claim or certified copy considered after publication of the patent. In addition, for original applications filed under 35 U.S.C. 111(a) or international applications entering the national stage under 35 U.S.C. 371, a grantable petition under 37 CFR 1.55(e) to accept an unintentionally delayed claim for priority and the petition fee must be filed with the certificate of correction. See MPEP § 216.01.
Assignee as Applicant Signature
35 U.S.C. 119(b)(3) authorizes the Office to require the applicant to furnish a certified copy of the foreign priority application, and the Office requires such a copy pursuant to 37 CFR 1.55. The filing of the foreign priority papers under 35 U.S.C. 119(a) – (d) makes the record of the file of the United States patent complete. The U.S. Patent and Trademark Office does not normally examine the papers to determine whether the applicant is in fact entitled to the right of priority and does not grant or refuse the right of priority, except when the application is involved in an interference or derivation proceeding, when necessary to overcome the date of a reference relied upon by the examiner, or when deemed necessary by the examiner. See MPEP § 216. When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner should review the certified copy to see that it contains no obvious formal defects and that it corresponds in number, date and country to the application identified in the application data sheet for an application filed on or after September 16, 2012, or oath or declaration or application data sheet for an application filed prior to September 16, 2012.
Key Changes Under AIA
35 U.S.C. 119(b)(3) authorizes the Office to require the applicant to furnish a certified copy of the foreign priority application, and the Office requires such a copy pursuant to 37 CFR 1.55. The filing of the foreign priority papers under 35 U.S.C. 119(a) – (d) makes the record of the file of the United States patent complete. The U.S. Patent and Trademark Office does not normally examine the papers to determine whether the applicant is in fact entitled to the right of priority and does not grant or refuse the right of priority, except when the application is involved in an interference or derivation proceeding, when necessary to overcome the date of a reference relied upon by the examiner, or when deemed necessary by the examiner. See MPEP § 216. When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner should review the certified copy to see that it contains no obvious formal defects and that it corresponds in number, date and country to the application identified in the application data sheet for an application filed on or after September 16, 2012, or oath or declaration or application data sheet for an application filed prior to September 16, 2012.
AIA Effective Dates
35 U.S.C. 119(b)(3) authorizes the Office to require the applicant to furnish a certified copy of the foreign priority application, and the Office requires such a copy pursuant to 37 CFR 1.55. The filing of the foreign priority papers under 35 U.S.C. 119(a) – (d) makes the record of the file of the United States patent complete. The U.S. Patent and Trademark Office does not normally examine the papers to determine whether the applicant is in fact entitled to the right of priority and does not grant or refuse the right of priority, except when the application is involved in an interference or derivation proceeding, when necessary to overcome the date of a reference relied upon by the examiner, or when deemed necessary by the examiner. See MPEP § 216. When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner should review the certified copy to see that it contains no obvious formal defects and that it corresponds in number, date and country to the application identified in the application data sheet for an application filed on or after September 16, 2012, or oath or declaration or application data sheet for an application filed prior to September 16, 2012.
Certified Copies of Documents
The certified copy which must be filed is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information. Certified copies include those retrieved by the Office in accordance with a priority document exchange program. See MPEP § 215.01. A copy of the certified copy filed by applicant, including a copy filed via the USPTO patent electronic filing system, will not satisfy the requirement in 37 CFR 1.55(g) for a certified copy. See MPEP § 502.02, subsection V. “Application” in this connection is not considered to include formal papers such as a petition. A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the certification indicates that it corresponds to the application as filed.
Electronic Priority Document Exchange (PDX)
The certified copy which must be filed is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information. Certified copies include those retrieved by the Office in accordance with a priority document exchange program. See MPEP § 215.01. A copy of the certified copy filed by applicant, including a copy filed via the USPTO patent electronic filing system, will not satisfy the requirement in 37 CFR 1.55(g) for a certified copy. See MPEP § 502.02, subsection V. “Application” in this connection is not considered to include formal papers such as a petition. A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the certification indicates that it corresponds to the application as filed.
Certified Copy Requirement
The certified copy which must be filed is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information. Certified copies include those retrieved by the Office in accordance with a priority document exchange program. See MPEP § 215.01. A copy of the certified copy filed by applicant, including a copy filed via the USPTO patent electronic filing system, will not satisfy the requirement in 37 CFR 1.55(g) for a certified copy. See MPEP § 502.02, subsection V. “Application” in this connection is not considered to include formal papers such as a petition. A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the certification indicates that it corresponds to the application as filed.
Form Paragraph Usage
If the applicant fails to call attention to the fact that the certified copy is in the parent or related application and the examiner is aware of the fact that a claim for priority under 35 U.S.C. 119(a) – (d) or (f) was made in the parent application, the examiner should call applicant’s attention to these facts in an Office action, so that if a patent issues on the later or reissue application, the priority data will appear in the patent. In such cases, the language of form paragraph 2.20 should be used.
Amendments in National Stage
1. Use this form paragraph only for original applications filed under 35 U.S.C. 111(a) on or after November 29, 2000 and for national stage applications under 35 U.S.C. 371. DO NOT use for design applications.
Interviews in National Stage
1. Use this form paragraph only for original applications filed under 35 U.S.C. 111(a) on or after November 29, 2000 and for national stage applications under 35 U.S.C. 371. DO NOT use for design applications.
Correction of Applicant's Mistake
When the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the foreign priority claim or certified copy will be placed in the file record but there may be no review of the papers and the patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the foreign priority claim or certified copy considered after publication of the patent. In addition, for original applications filed under 35 U.S.C. 111(a) or international applications entering the national stage under 35 U.S.C. 371, a grantable petition under 37 CFR 1.55(e) to accept an unintentionally delayed claim for priority and the petition fee must be filed with the certificate of correction. See MPEP § 216.01.
Examiner Form Paragraphs
Examiner form paragraphs are standard language that you might see in an Office Action or communication from the USPTO. Examiners have latitude to change the form paragraphs, but you will often see this exact language.
Applicant is reminded that in order for a patent issuing on the instant application to obtain priority under 35 U.S.C. 119(a)-(d) or (f) , 365(a) or (b) , or 386(a) or (b) , based on priority papers filed in a parent or related Application No. [1] (to which the present application claims the benefit under 35 U.S.C. 120 , 121 , 365(c) ), or 386(c) or is a reissue application of a patent issued on the related application), a claim for such foreign priority must be timely made in this application. To satisfy the requirement of 37 CFR 1.55 for a certified copy of the foreign application, applicant may simply identify the parent nonprovisional application or patent for which reissue is sought containing the certified copy.
- Requirement for Certified Foreign Application Copy
- Filing of Foreign Priority Papers Completes US Patent File
- U.S. Patent Office Does Not Examine Priority Claims Normally
- Examiner Must Review Certified Copy of Foreign Application
- Requirement for Certified Foreign Application Copy
- Specification and Drawings of Foreign Application Required
- Requirement for Certified Copies from Priority Document Exchange Program
- Certified Copy Must Be Original Foreign Application
Receipt is acknowledged of a certified copy of foreign application [1] , however the present application does not properly claim priority to the submitted foreign application. If this copy is being filed to obtain priority to the foreign filing date under 35 U.S.C. 119(a)-(d) or (f) , 365(a) or (b) , or 386(a) , applicant must also file a claim for such priority as required by 35 U.S.C. 119(b) or 365(b) , and 37 CFR 1.55 . If the application was filed before September 16, 2012, the priority claim must be made in either the oath or declaration or in an application data sheet; if the application was filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet.
If the application being examined is an original application filed under 35 U.S.C. 111(a) (other than a design application), the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. See 37 CFR 1.55(d)(1) . If the application being examined is a national stage application under 35 U.S.C. 371 , the claim for priority must be made within the time limit set forth in the PCT and Regulations under the PCT. See 37 CFR 1.55(d)(2) . Any claim for priority under 35 U.S.C. 119(a)-(d) or (f) , 365(a) or (b) , or 386(a) not presented within the time period set forth in 37 CFR 1.55 is considered to have been waived. If a claim for foreign priority is presented after the time period set forth in 37 CFR 1.55 , the claim may be accepted if the claim properly identifies the prior foreign application and is accompanied by a grantable petition under 37 CFR 1.55(e) to accept an unintentionally delayed claim for priority and the petition fee.
- Foreign Priority Claim After Issue Fee But Before Grant
- Post-Publication Priority Claim Consideration
- Petition for Unintentionally Delayed Priority Claim Required
- Requirement for Certified Foreign Application Copy
- Filing of Foreign Priority Papers Completes US Patent File
- U.S. Patent Office Does Not Examine Priority Claims Normally
- Examiner Must Review Certified Copy of Foreign Application
- Requirement for Certified Foreign Application Copy
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in [1] on [2] . It is noted, however, that applicant has not filed a certified copy of the [3] application as required by 37 CFR 1.55 .
- Requirement for Certified Foreign Application Copy
- Specification and Drawings of Foreign Application Required
- Requirement for Certified Copies from Priority Document Exchange Program
- Certified Copy Must Be Original Foreign Application
- Certified Copy of Foreign Application as Filed Required
- Foreign Priority Claim After Issue Fee But Before Grant
- Post-Publication Priority Claim Consideration
- Petition for Unintentionally Delayed Priority Claim Required
Citations
| Primary topic | Citation |
|---|---|
| Amendments in National Stage Correction of Applicant's Mistake Interviews in National Stage National Stage Entry Requirements | 35 U.S.C. § 111(a) |
| AIA Effective Dates Assignee as Applicant Signature Foreign Priority Claim Requirements Foreign Priority Claims Form Paragraph Usage Key Changes Under AIA | 35 U.S.C. § 119(a) |
| AIA Effective Dates Assignee as Applicant Signature Foreign Priority Claims Key Changes Under AIA | 35 U.S.C. § 119(b)(3) |
| Correction of Applicant's Mistake National Stage Entry Requirements | 35 U.S.C. § 255 |
| Amendments in National Stage Correction of Applicant's Mistake Interviews in National Stage National Stage Entry Requirements | 35 U.S.C. § 371 |
| Correction of Applicant's Mistake National Stage Entry Requirements | 37 CFR § 1.323 |
| AIA Effective Dates Assignee as Applicant Signature Foreign Priority Claims Key Changes Under AIA | 37 CFR § 1.55 |
| Correction of Applicant's Mistake National Stage Entry Requirements | 37 CFR § 1.55(e) |
| Certified Copies of Documents Certified Copy Requirement Electronic Priority Document Exchange (PDX) Ordering Certified Copies | 37 CFR § 1.55(g) |
| Foreign Priority Claim Requirements Foreign Priority Claims Ordering Certified Copies | 37 CFR § 1.55(h) |
| Certified Copies of Documents Certified Copy Requirement Electronic Priority Document Exchange (PDX) Ordering Certified Copies | MPEP § 215.01 |
| AIA Effective Dates Assignee as Applicant Signature Foreign Priority Claims Key Changes Under AIA | MPEP § 216 |
| Correction of Applicant's Mistake National Stage Entry Requirements | MPEP § 216.01 |
| Certified Copies of Documents Certified Copy Requirement Electronic Priority Document Exchange (PDX) Ordering Certified Copies | MPEP § 502.02 |
| Foreign Priority Claim Requirements Foreign Priority Claims Ordering Certified Copies | MPEP § 707 |
| Foreign Priority Claim Requirements Foreign Priority Claims Form Paragraph Usage Ordering Certified Copies | Form Paragraph § 2.20 |
| Ordering Certified Copies | Form Paragraph § 2.25 |
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 § 215 — Certified Copy of Foreign Application
Source: USPTO215 Certified Copy of Foreign Application [R-07.2022]
I. REQUIREMENT FOR CERTIFIED COPY35 U.S.C. 119(b)(3) authorizes the Office to require the applicant to furnish a certified copy of the foreign priority application, and the Office requires such a copy pursuant to 37 CFR 1.55. The filing of the foreign priority papers under 35 U.S.C. 119(a)–(d) makes the record of the file of the United States patent complete. The U.S. Patent and Trademark Office does not normally examine the papers to determine whether the applicant is in fact entitled to the right of priority and does not grant or refuse the right of priority, except when the application is involved in an interference or derivation proceeding, when necessary to overcome the date of a reference relied upon by the examiner, or when deemed necessary by the examiner. See MPEP § 216. When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner should review the certified copy to see that it contains no obvious formal defects and that it corresponds in number, date and country to the application identified in the application data sheet for an application filed on or after September 16, 2012, or oath or declaration or application data sheet for an application filed prior to September 16, 2012.
II. MEANING OF “CERTIFIED COPY”The certified copy which must be filed is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information. Certified copies include those retrieved by the Office in accordance with a priority document exchange program. See MPEP § 215.01. A copy of the certified copy filed by applicant, including a copy filed via the USPTO patent electronic filing system, will not satisfy the requirement in 37 CFR 1.55(g) for a certified copy. See MPEP § 502.02, subsection V. “Application” in this connection is not considered to include formal papers such as a petition. A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the certification indicates that it corresponds to the application as filed.
III. CERTIFIED COPY FILED IN PARENT OR RELATED APPLICATION37 CFR 1.55 Claim for foreign priority.
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- (h) Certified copy in another U.S. patent or application. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application will be considered satisfied in a reissue application if the patent for which reissue is sought satisfies the requirement of this section for a certified copy of the foreign application and such patent is identified as containing a certified copy of the foreign application. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application will also be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and such prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.
*****
Where the benefit of a foreign filing date based on a foreign application is claimed in a later filed application (i.e., continuation, continuation-in-part, division) or in a reissue application, and a certified copy of the foreign application has been filed in a parent or related application, it is not necessary to file an additional certified copy in the later application. See 37 CFR 1.55(h). A reminder of this provision is found in form paragraph 2.20. The applicant when making such claim for priority may simply identify the application containing the certified copy. In such cases, the examiner should acknowledge the claim on form PTOL-326. Note copy in MPEP § 707.
If the applicant fails to call attention to the fact that the certified copy is in the parent or related application and the examiner is aware of the fact that a claim for priority under 35 U.S.C. 119(a)–(d) or (f) was made in the parent application, the examiner should call applicant’s attention to these facts in an Office action, so that if a patent issues on the later or reissue application, the priority data will appear in the patent. In such cases, the language of form paragraph 2.20 should be used.
¶ 2.20 Certified Copies of Priority Papers in Parent or Related (Reissue Situation) – Application
Applicant is reminded that in order for a patent issuing on the instant application to obtain priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b), based on priority papers filed in a parent or related Application No. [1] (to which the present application claims the benefit under 35 U.S.C. 120, 121, 365(c)), or 386(c) or is a reissue application of a patent issued on the related application), a claim for such foreign priority must be timely made in this application. To satisfy the requirement of 37 CFR 1.55 for a certified copy of the foreign application, applicant may simply identify the parent nonprovisional application or patent for which reissue is sought containing the certified copy.
In addition, if the application is in condition for allowance and the examiner is aware of the fact that the certified copy is present in the parent or related application, the examiner can identify the parent nonprovisional application or patent for which reissue is sought containing the certified copy in the Notice of Allowability.
Where the benefit of a foreign filing date, based on a foreign application, is claimed in a later filed application or in a reissue application and a certified copy of the foreign application, as filed, has not been filed in a parent or related application, a claim for priority may be made in the later application. In re Tangsrud, 184 USPQ 746 (Comm’r Pat. 1973). When such a claim is made in the later application and a certified copy of the foreign application is placed therein, the examiner should acknowledge the claim on form PTOL-326. Note copy in MPEP § 707.
IV. FOREIGN PRIORITY DOCUMENT INCONSISTENT WITH A TIMELY FOREIGN PRIORITY CLAIM OR NO CLAIM FOR FOREIGN PRIORITYFor applications filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet. For applications filed prior to September 16, 2012, any foreign priority claim must be identified in either the oath or declaration or in an application data sheet. Where applicant has filed a certified copy that does not correspond to the foreign application identified in the foreign priority claim by its application number, country (or intellectual property authority), day month, and year of its filing, the applicant should be notified by using form paragraph 2.22. Applicant must submit an application data sheet in compliance with 37 CFR 1.76(c), (or, for applications filed prior to September 16, 2012, a supplemental application data sheet or a new oath or declaration) that correctly sets forth the priority claim. See MPEP §§ 601.05(a) and (b). If a claim for foreign priority is presented after the time period set forth in 37 CFR 1.55, the claim may be accepted if the claim properly identifies the prior foreign application and is accompanied by a grantable petition under 37 CFR 1.55(e) to accept an unintentionally delayed claim for priority and the petition fee.
Where applicant has filed a certified copy of a foreign application but has not made a claim for foreign priority, applicant should be notified using form paragraph 2.22.
¶ 2.22 Certified Copy Filed, But Proper Claim Not Made
Receipt is acknowledged of a certified copy of foreign application [1], however the present application does not properly claim priority to the submitted foreign application. If this copy is being filed to obtain priority to the foreign filing date under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a), applicant must also file a claim for such priority as required by 35 U.S.C. 119(b) or 365(b), and 37 CFR 1.55. If the application was filed before September 16, 2012, the priority claim must be made in either the oath or declaration or in an application data sheet; if the application was filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet.
If the application being examined is an original application filed under 35 U.S.C. 111(a) (other than a design application), the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. See 37 CFR 1.55(d)(1). If the application being examined is a national stage application under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and Regulations under the PCT. See 37 CFR 1.55(d)(2). Any claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) not presented within the time period set forth in 37 CFR 1.55 is considered to have been waived. If a claim for foreign priority is presented after the time period set forth in 37 CFR 1.55, the claim may be accepted if the claim properly identifies the prior foreign application and is accompanied by a grantable petition under 37 CFR 1.55(e) to accept an unintentionally delayed claim for priority and the petition fee.
Examiner Note:
- 1. Use this form paragraph only for original applications filed under 35 U.S.C. 111(a) on or after November 29, 2000 and for national stage applications under 35 U.S.C. 371. DO NOT use for design applications.
- 2. In bracket 1, insert the application number of the foreign application.
When the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the foreign priority claim or certified copy will be placed in the file record but there may be no review of the papers and the patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the foreign priority claim or certified copy considered after publication of the patent. In addition, for original applications filed under 35 U.S.C. 111(a) or international applications entering the national stage under 35 U.S.C. 371, a grantable petition under 37 CFR 1.55(e) to accept an unintentionally delayed claim for priority and the petition fee must be filed with the certificate of correction. See MPEP § 216.01.
VI. NO CERTIFIED COPYWhere priority is claimed but no certified copy of the foreign application has been filed, use form paragraph 2.25.
¶ 2.25 Claimed Foreign Priority, No Papers Certified Copy Filed
Acknowledgment is made of applicant’s claim for foreign priority based on an application filed in [1] on [2]. It is noted, however, that applicant has not filed a certified copy of the [3] application as required by 37 CFR 1.55.
Examiner Note:
- 1. In bracket 1, insert the country name.
- 2. In bracket 2, insert the filing date of the foreign application.
- 3. In bracket 3, insert the application number of the foreign application.
Any unusual situation may be referred to the Technology Center (TC) Director.
VII. RETURN OF CERTIFIED COPYCertified copies that have been entered into the application file will not be returned to applicant.