Patent Law FAQ

The MPEP provides a table of states (countries) for which the right of priority under 35 U.S.C. 119(a)-(d) is recognized. These countries fall into three categories:

• Parties to the Patent Cooperation Treaty (PCT)
• Parties to the Paris Convention for the Protection of Industrial Property
• Members of the World Trade Organization (WTO)

The MPEP states: “Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a)-(d) has been recognized.”

For the most current list of recognized countries, refer to the WIPO website at www.wipo.int/pct/en/paris_wto_pct.html.

The provisions of 35 U.S.C. 386(a) and (b) became effective for certain types of applications filed on or after May 13, 2015. According to MPEP 213.07:

The provisions of 35 U.S.C. 386(a) and (b) apply to nonprovisional applications, international applications (PCT) and international design applications filed on or after May 13, 2015, and patents issued therefrom. See 37 CFR 1.55(o).

This means that the right of priority under these sections is only applicable to:

• Nonprovisional applications
• International applications (PCT)
• International design applications

These applications must be filed on or after May 13, 2015, to be eligible for the priority rights under 35 U.S.C. 386(a) and (b). The same applies to patents issued from such applications.

For more information on 35 U.S.C. 386, visit: 35 U.S.C. 386.

For more information on effective date, visit: effective date.

For more information on nonprovisional application, visit: nonprovisional application.

An international design application designating the United States can claim priority based on several types of prior applications. According to MPEP 213.07:

Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.

The types of prior applications that can be used for claiming priority include:

• A prior foreign application
• An international application (PCT) designating at least one country other than the United States
• A prior international design application designating at least one country other than the United States

These priority claims must comply with the conditions and requirements set forth in 35 U.S.C. 119(a)-(d) and 172, as well as the Hague Agreement and its Regulations.

For more information on foreign priority, visit: foreign priority.

For more information on Hague Agreement, visit: Hague Agreement.

For more information on prior applications, visit: prior applications.

The time period for filing a priority claim in an international design application designating the United States depends on whether it’s a nonprovisional international design application or not. According to MPEP 213.07:

In an international design application designating the United States, the claim for priority may be made in accordance with the Hague Agreement and the Hague Agreement Regulations.

For nonprovisional international design applications, the MPEP states:

In a nonprovisional international design application, the priority claim and certified copy must be furnished in accordance with the time period and other conditions set forth in paragraph (g) of this section.

This refers to 37 CFR 1.55(g), which generally requires the priority claim to be filed 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. However, it’s important to consult the specific regulations and the Hague Agreement for precise deadlines and requirements, as they may vary depending on the specific circumstances of the application.

For more information on Hague Agreement, visit: Hague Agreement.

For more information on nonprovisional application, visit: nonprovisional application.

What is the significance of the Paris Convention in foreign priority claims?

The Paris Convention plays a crucial role in foreign priority claims for patent applications. Its significance includes:

• Establishing the right of priority for patent applications among member countries.
• Allowing applicants to file in multiple countries while maintaining the original filing date.
• Providing a 12-month priority period for utility patents (6 months for design patents).
• Ensuring equal treatment of foreign and domestic applicants in member countries.

According to MPEP 213: “The right of priority is defined in Article 4 of the Paris Convention for the Protection of Industrial Property and is based on the first filing in a Paris Convention country.” This convention facilitates international patent protection by allowing inventors to secure priority dates across multiple jurisdictions.

Regional patent offices play a crucial role in the international patent system, particularly for priority claims. MPEP 213.01 recognizes several regional patent offices whose applications can serve as the basis for priority claims in the United States. These include:

• European Patent Office (EPO)
• Eurasian Patent Office (EAPO)
• African Intellectual Property Organization (OAPI)
• African Regional Intellectual Property Organization (ARIPO)

The significance of these regional offices is explained in MPEP 213.01:

‘The United States will recognize claims for right of priority based on applications filed under such multilateral international agreements as the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT).’

This recognition allows applicants to file a single application with a regional patent office and still maintain priority rights in the United States. It streamlines the international patent application process and provides more flexibility for inventors seeking protection in multiple countries.

35 U.S.C. 386 establishes the right of priority for international design applications. It addresses two key scenarios:

1. National applications claiming priority from international design applications
2. International design applications claiming priority from prior foreign applications

The MPEP explains:

“Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.”

“Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.”

These provisions apply to applications filed on or after May 13, 2015, and patents issued from such applications.

For a valid foreign priority claim, the U.S. application and the foreign application must name the same inventor or have at least one joint inventor in common. This requirement ensures that the right of priority is properly linked between the applications.

As stated in MPEP 213.02: “Pursuant to 35 U.S.C. 119(a), the foreign application must have been filed by the same applicant as the applicant in the United States, or by applicant’s legal representatives or assigns. Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”

The MPEP further clarifies: “Joint inventors A and B in a nonprovisional application filed in the United States Patent and Trademark Office may properly claim the benefit of an application filed in a foreign country by A and another application filed in a foreign country by B, i.e., A and B may each claim the benefit of their foreign filed applications.”

This requirement ensures that the priority right is properly linked to the inventive entity responsible for the invention in both the foreign and U.S. applications.

For more information on foreign priority, visit: foreign priority.

For more information on joint inventors, visit: joint inventors.

When claiming foreign priority, applicants are generally required to file a certified copy of the foreign application within a specified time period. The requirements and deadlines for filing the certified copy depend on the type of application and the circumstances of the filing.

According to MPEP 213.04: “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.”

Key points about the certified copy requirement include:

• The certified copy must be filed within the pendency of the application, unless filed with a petition.
• For applications filed under 35 U.S.C. 111(a), the certified copy must typically be filed within the later of four months from the actual filing date or sixteen months from the filing date of the prior foreign application.
• For national stage applications under 35 U.S.C. 371, the certified copy must be filed within the time limit set forth in the PCT and the Regulations under the PCT.
• If the certified copy is not filed within the required time period, it must be accompanied by a petition and fee, along with a showing of good and sufficient cause for the delay.
• In some cases, the requirement may be satisfied through the priority document exchange program or by identifying a previously filed application containing the certified copy.

The MPEP also notes: “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.”

For more information on certified copy, visit: certified copy.

For more information on filing requirements, visit: filing requirements.

For more information on foreign application, visit: foreign application.

The Paris Convention for the Protection of Industrial Property is an international agreement that establishes key principles for intellectual property protection, including patents. It was first signed in 1883 and has been revised several times since then.

The Convention is significant in patent law because it established the right of priority, which allows patent applicants to claim priority based on an earlier filing in any country that is a member of the Paris Convention. This right is referenced in MPEP 213, which states:

‘The right of priority is defined in 35 U.S.C. 119(a)… Under this statute, an applicant who has filed a first foreign application is entitled to claim the benefit of the filing date of the first foreign application in a subsequent U.S. national patent application…’

This provision helps inventors protect their inventions internationally by giving them a grace period to file in multiple countries while maintaining the priority date of their first filing.

The Paris Convention is an international treaty that establishes priority rights for patent applications. According to MPEP 213, “The right of priority is defined in 35 U.S.C. 119(a)” and is based on this convention. It allows inventors who file a patent application in one member country to claim priority for up to 12 months when filing in other member countries.

Key points of the Paris Convention include:

• Establishing a 12-month priority period for patents
• Allowing applicants to claim priority based on earlier filings in member countries
• Ensuring equal treatment of foreign and domestic applicants in member countries

While restoration of the right of priority allows for valid priority claims up to 14 months from the earliest priority date (or 8 months for design applications), pre-AIA applications are still subject to the 12-month statutory bar under pre-AIA 35 U.S.C. 102(b) and (d). MPEP 213.03 clarifies: ‘It should be noted that although an application may now validly claim priority under 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) or (b), or 386(a) or (b) to a foreign application filed up to fourteen months earlier (or eight months earlier in the case of a design application) in view of the restoration provision of 37 CFR 1.55(c), an application subject to examination under pre-AIA first to invent laws (rather than the first inventor to file provisions of the AIA) would still be subject to the 12-month statutory time periods in pre-AIA 35 U.S.C. 102(b) and (d) which are measured from the U.S. filing date.’

This means that while the priority claim may be valid, the earlier filed foreign application could still be used as prior art against a pre-AIA application if it was published more than one year before the U.S. filing date.

For more information on pre-AIA, visit: pre-AIA.

In the context of foreign priority claims, there’s an important distinction between a ‘country’ and a ‘regional patent office’:

• Country: A sovereign nation that has its own patent system and can issue patents directly.
• Regional Patent Office: An intergovernmental organization that processes patent applications on behalf of multiple member countries.

The MPEP states: The right of priority may be based upon an application filed in a foreign country or in a regional patent office. (MPEP 213)

Regional patent offices, such as the European Patent Office (EPO) or the African Regional Intellectual Property Organization (ARIPO), allow applicants to file a single application that can potentially lead to patent protection in multiple member countries.

To make a proper priority claim in a U.S. patent application, the applicant must provide specific information about the foreign application and file the claim within the required time period. The requirements differ slightly depending on the type of application.

For applications filed on or after September 16, 2012, under 35 U.S.C. 111(a), MPEP 213.02 states: “the claim for priority must be presented in an application data sheet.” The claim must include:

• The application number of the foreign application
• The country or intellectual property authority
• The day, month, and year of filing

For international applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set forth in the PCT and the Regulations under the PCT.

The MPEP further notes: “For applications filed prior to September 16, 2012, the claim to priority need be in no special form, and may be made by a person authorized to sign correspondence under 37 CFR 1.33(b). No special language is required in making the claim for priority, and any expression which can be reasonably interpreted as claiming the benefit of the foreign application is accepted as the claim for priority.”

It’s important to file the priority claim within the specified time limits to ensure it is considered valid and effective.

For more information on application data sheet, visit: application data sheet.

For more information on foreign application, visit: foreign application.

Several international agreements can form the basis for a priority claim in patent applications. The MPEP mentions:

• The Paris Convention for the Protection of Industrial Property
• The Hague Agreement Concerning the International Registration of Industrial Designs
• The Benelux Designs Convention
• The Convention on the Grant of European Patents (European Patent Office)
• The Patent Cooperation Treaty (PCT)
• The International Convention for the Protection of New Varieties of Plants (UPOV)

The MPEP states: “Under Article 4A of the Paris Convention for the Protection of Industrial Property, a right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design filed under the national law of a foreign country adhering to the Convention, or on a foreign application filed under a bilateral or multilateral treaty concluded between two or more such countries.”

These agreements facilitate the international protection of intellectual property rights and enable applicants to claim priority based on applications filed in various jurisdictions.

When multiple foreign applications are filed for the same invention, the right of priority is generally based on the earliest filed application. MPEP 213.03 explains: ‘The twelve months is from earliest foreign filing except as provided in 35 U.S.C. 119(c). If an inventor has filed an application in France on October 4, 1981, and an identical application in the United Kingdom on March 3, 1982, and then files in the United States on February 2, 1983, the inventor is not entitled to the right of priority at all; the inventor would not be entitled to the benefit of the date of the French application since this application was filed more than twelve months before the U.S. application, and the inventor would not be entitled to the benefit of the date of the United Kingdom application since this application is not the first one filed.’

However, if the later application contains additional subject matter, a claim specifically limited to that additional disclosure may be entitled to the priority date of the later foreign application.

To claim foreign priority in a U.S. application, you must file a claim for priority and submit a certified copy of the foreign application. MPEP 213.04 states: ‘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.’

For applications filed on or after September 16, 2012, the priority claim must be presented in an Application Data Sheet (ADS). The certified copy must be filed within the later of 4 months from the actual filing date or 16 months from the foreign filing date, with some exceptions.

For more information on certified copy, visit: certified copy.

For more information on foreign priority, visit: foreign priority.

To claim foreign priority in a U.S. patent application, several requirements must be met as outlined in MPEP 213. These include:

• Timely filing: The U.S. application must be filed within 12 months of the foreign application’s filing date (6 months for design patents)
• Proper claim: The priority claim must be made in an application data sheet (ADS) or in the first sentence of the specification
• Certified copy: A certified copy of the foreign application must be filed within the later of 4 months from the U.S. filing date or 16 months from the foreign filing date
• English translation: If the foreign application is not in English, a translation may be required

As stated in MPEP 213, “The claim for priority must be presented in an application data sheet (37 CFR 1.76(b)(6)) or the specification must contain or be amended to contain a specific reference to the prior foreign application.” Failure to meet these requirements may result in the loss of the priority claim.

How does WTO membership affect foreign priority rights?

World Trade Organization (WTO) membership has significant implications for foreign priority rights in patent applications:

• WTO member countries are treated as Paris Convention countries for priority purposes.
• Applicants from WTO member countries can claim priority in the U.S., even if the country is not a Paris Convention signatory.
• The same 12-month priority period applies to applications from WTO member countries.
• WTO membership expands the pool of countries eligible for foreign priority claims.

MPEP 213.01 states: “A foreign application filed in a WTO member country on or after the date on which the country becomes a WTO member country is also entitled to the right of priority.” This provision ensures broader international protection opportunities for inventors and applicants.

The USPTO determines if a foreign country qualifies for priority rights based on specific criteria outlined in the MPEP. According to MPEP 213.01:

The right of priority is recognized only if the foreign country in which the original application was filed is recognized at the time of filing the application in the United States.

The USPTO considers several factors:

• The country must be a member of the Paris Convention for the Protection of Industrial Property or have a bilateral agreement with the United States.
• The country must grant similar priority rights to U.S. citizens.
• The country must be recognized by the U.S. Department of State.

The USPTO maintains a list of recognized countries and regional patent offices in MPEP 213.01, which is updated periodically to reflect changes in international relations and treaty memberships.

The right of priority for international applications filed under the Patent Cooperation Treaty (PCT) operates similarly to national applications, but with some specific provisions and requirements set by the PCT system.

According to MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”

Key points about priority in PCT applications include:

• The priority claim must be made in the PCT Request form or through a later correction.
• The applicant must file a certified copy of the priority document with the International Bureau within 16 months from the priority date, unless it was previously filed with the receiving Office.
• If the priority document is issued by the receiving Office, the applicant can request that Office to prepare and transmit the document to the International Bureau.
• The International Bureau will make the priority document available to designated Offices.
• For U.S. national stage entry, if the certified copy was submitted during the international phase, it generally satisfies the requirement for the U.S. application.

The MPEP further notes: “If, however, the International Bureau is unable to forward a copy of the certified priority document because the applicant failed to submit a certified copy of the foreign priority document during the international phase, the applicant will need to provide a certified copy of the priority document or have the Office retrieve the priority application in accordance with the priority document exchange program during the national stage to fulfill the requirements of 37 CFR 1.55.”

For more information on certified copy, visit: certified copy.

The right of priority under 35 U.S.C. 386(a) and 386(b) applies to different types of applications. According to MPEP 213.07:

Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.

This means that 35 U.S.C. 386(a) allows a nonprovisional application to claim priority based on a prior international design application.

On the other hand, 35 U.S.C. 386(b) applies differently:

Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.

Thus, 35 U.S.C. 386(b) allows an international design application designating the United States to claim priority based on various types of prior applications.

The key differences are:

• 386(a) applies to nonprovisional applications claiming priority to international design applications.
• 386(b) applies to international design applications claiming priority to foreign applications, PCT applications, or other international design applications.

For more information on nonprovisional application, visit: nonprovisional application.

For more information on right of priority, visit: right of priority.

The Patent Cooperation Treaty (PCT) interacts with foreign priority claims as outlined in MPEP 213. The PCT allows applicants to file a single international patent application that can later enter the national phase in multiple countries.

Key points regarding PCT and foreign priority:

• PCT applications can claim priority from earlier national or regional applications
• The priority period for PCT applications is also 12 months from the earliest priority date
• PCT applications themselves can serve as the basis for priority claims in subsequent national or regional applications

As stated in MPEP 213, “U.S. national applications may claim priority to an international application (PCT) filed in a PCT Receiving Office other than the United States Receiving Office.” This demonstrates the flexibility of the PCT system in international patent protection strategies.

Taiwan’s unique political status has implications for patent priority claims in US applications. According to MPEP 213.01:

‘Applicants from Taiwan may claim priority under 35 U.S.C. 119(a)-(d) to applications filed in Taiwan which are filed by or on behalf of the governing authority on Taiwan.’

This special provision allows Taiwanese applicants to claim priority despite Taiwan not being officially recognized as a sovereign state by the United States. The MPEP further clarifies:

Applications from Taiwan must meet the following criteria to be eligible for priority claims:

• The application must be filed by or on behalf of the governing authority on Taiwan
• The priority claim must be made in accordance with the standard procedures outlined in 35 U.S.C. 119(a)-(d)

This arrangement ensures that inventors and companies in Taiwan can participate in the international patent system and maintain priority rights for their inventions when seeking protection in the United States.

Claiming priority for international design applications has some specific provisions, particularly when the application designates the United States. These provisions are outlined in the MPEP and relevant regulations.

According to MPEP 213.07: “Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.”

Key points about priority in international design applications include:

• The right of priority under 35 U.S.C. 386(a) or (b) applies only to applications filed on or after May 13, 2015.
• For nonprovisional international design applications, the priority claim must be presented in an application data sheet during the pendency of the application, unless made in accordance with the Hague Agreement and Regulations.
• The certified copy of the priority document must be furnished within the time period specified in 37 CFR 1.55(g).
• An international design application designating the U.S. can claim priority to a prior foreign application, PCT application, or another international design application.

The MPEP also notes: “See MPEP § 2920.05(d) for additional information pertaining to the right of priority based upon an international design application.”

These provisions ensure that design patent applicants can properly claim priority to earlier filed applications in the context of the international design registration system.

For more information on design patent, visit: design patent.

For more information on Hague Agreement, visit: Hague Agreement.

35 U.S.C. 365 addresses the right of priority for international applications in two key aspects:

1. National applications based on international applications
2. International applications based on foreign applications

The MPEP states:

“35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States.”

“35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application.”

These provisions ensure that applicants can claim priority based on international applications, enhancing the flexibility of the international patent system.

Priority to an international design application can be claimed in a U.S. nonprovisional application or in another international design application designating the U.S. MPEP 213.07 states: ‘Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.’

The priority claim should be made in an Application Data Sheet (ADS) for nonprovisional applications. For international design applications designating the U.S., the priority claim can be made in accordance with the Hague Agreement and Regulations.

For more information on Hague Agreement, visit: Hague Agreement.

For international applications entering the U.S. national stage under 35 U.S.C. 371, the priority claim must be made within the time limit set by the PCT and its regulations. MPEP 213.06 states: ‘In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made and a certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT.’

If the priority claim was properly made during the international phase, it’s generally not necessary to repeat it upon national stage entry. However, the certified copy of the priority document must be furnished if not previously submitted to the International Bureau or the USPTO.

For more information on national stage application, visit: national stage application.

An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.

According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”

The petition to restore the right of priority must include:

• The priority claim identifying the prior foreign application
• The petition fee
• A statement that the delay in filing was unintentional

The USPTO may require additional information to establish that the delay was unintentional.

For more information on foreign priority, visit: foreign priority.

For more information on priority restoration, visit: priority restoration.

For more information on unintentional delay, visit: unintentional delay.

Yes, applicants can claim priority under 35 U.S.C. 119(a)-(d) based on applications filed in certain foreign regional patent offices. The MPEP states:

“In addition to the list of recognized countries set forth in subsection I, above, applicants may claim priority under 35 U.S.C. 119(a)-(d) to applications filed in foreign regional patent offices having member states who are members of the Paris Convention.”

The recognized regional patent offices include:

• African Regional Intellectual Property Organization (ARIPO)
• Eurasian Patent Office (EAPO)
• European Patent Office (EPO)
• Gulf Cooperation Council (GCC) Patent Office
• African Intellectual Property Organization (OAPI)

These regional patent offices allow applicants to file a single application that can have effect in multiple member states, streamlining the international patent application process.

Yes, under certain conditions, an applicant can claim priority based on an application for an inventor’s certificate. MPEP 213.05 explains: ‘An inventor’s certificate may form the basis for rights of priority under 35 U.S.C. 119(d) only when the country in which it is filed gives to applicants, at their discretion, the right to apply, on the same invention, either for a patent or for an inventor’s certificate.’

To claim priority to an inventor’s certificate, the applicant must file an affidavit or declaration stating that they had the option to file for either a patent or an inventor’s certificate in the foreign country.

For more information on foreign priority, visit: foreign priority.

Yes, a U.S. applicant can claim priority from a provisional application filed in a foreign country, provided certain conditions are met. The MPEP 213 states:

An applicant may claim the right of priority based on a prior foreign application under the Paris Convention and 35 U.S.C. 119(a)-(d) whether the foreign application is an application for a patent or for the registration of a utility model or an industrial design.

Key points to consider:

• The foreign country must be a recognized country or regional patent office as listed in MPEP 213.01.
• The provisional application must be the first filing of the invention in any country.
• The U.S. application must be filed within 12 months of the foreign provisional filing date.
• The applicant must comply with all requirements for claiming priority, including submitting a certified copy of the foreign application.

It’s important to note that not all countries have provisional application systems, so the term ‘provisional’ may have different meanings in different jurisdictions. Always consult with a patent attorney or agent for specific advice on international priority claims.

The U.S. nonprovisional application must generally be filed within 12 months of the filing date of the foreign application to claim priority. For design applications, this period is 6 months.

Specifically, 37 CFR 1.55(b) states:

“The nonprovisional application must be: (1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or (2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.”

There are provisions to restore the right of priority if the subsequent application is filed within 2 months after the expiration of the priority period, if the delay was unintentional.

The right of priority allows an applicant who has filed a patent application in a foreign country to claim priority to that earlier filing date when filing a subsequent U.S. application for the same invention. This right is established by 35 U.S.C. 119 and gives the U.S. application the benefit of the earlier foreign filing date, as long as certain conditions are met.

Specifically, 35 U.S.C. 119(a) states: “An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within 12 months from the earliest date on which such foreign application was filed.”

For a valid foreign priority claim, the U.S. application must have at least one common inventor with the foreign application. This requirement ensures that the right of priority is only available to the actual inventors or their legal representatives.

As stated in MPEP 213.02: “Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”

This means that:
1. A sole inventor in the U.S. can claim priority to a foreign application where they are the sole inventor or one of joint inventors.
2. Joint inventors in the U.S. can claim priority to a foreign application filed by any one or more of them.
3. A U.S. application cannot claim priority to a foreign application with completely different inventors.

It’s important to note that while the inventorship must overlap, it doesn’t have to be identical between the U.S. and foreign applications.

The priority document exchange program allows the USPTO to obtain priority documents electronically from other participating foreign intellectual property offices, eliminating the need for applicants to submit certified copies themselves. As stated in 37 CFR 1.55(i), the requirement to file a certified copy is considered satisfied if:

• The foreign application was filed in a participating foreign intellectual property office
• The claim for priority includes the necessary information for retrieval
• The copy is received by the USPTO from the participating office

Applicants must still make the priority claim within the required time period. This program simplifies the process of submitting priority documents for many applicants.

A proper foreign priority claim can give a U.S. patent application the benefit of the earlier foreign filing date as its effective filing date for prior art purposes. This can be crucial for establishing novelty and non-obviousness of the invention.

35 U.S.C. 119(a) states that a U.S. application properly claiming foreign priority “shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country.”

This means that intervening prior art published after the foreign filing date but before the U.S. filing date may not be used against the application if the priority claim is valid. However, it’s important to note that the actual U.S. filing date is still used for other purposes, such as calculating patent term.

Claiming foreign priority under 35 U.S.C. 119(a)-(d) and claiming benefit of a U.S. provisional application under 35 U.S.C. 119(e) are similar in some ways but have important differences:

1. Time limit:
– Foreign priority: Must be claimed within 12 months (6 months for design applications)
– Provisional: Must be claimed within 12 months

2. Effective filing date:
– Both can provide an earlier effective filing date for prior art purposes

3. Patent term:
– Foreign priority: Does not affect patent term
– Provisional: The 12-month period counts towards the 20-year patent term

4. Disclosure requirements:
– Both require the earlier application to provide adequate support for the claimed invention

5. Formalities:
– Foreign priority: Requires a certified copy of the foreign application
– Provisional: No certified copy required, but the provisional must be in English

6. Inventorship:
– Foreign priority: Requires at least one common inventor
– Provisional: Requires at least one common inventor

7. International effect:
– Foreign priority: Recognized in other Paris Convention countries
– Provisional: May not be recognized in some foreign jurisdictions

Both types of priority claims can be valuable for establishing an earlier effective filing date, but they have different requirements and effects that should be considered when developing a patent strategy.

Foreign priority claims and domestic benefit claims are two different ways of claiming the benefit of an earlier filing date:

• Foreign priority claims (under 35 U.S.C. 119(a)-(d)) are based on earlier applications filed in foreign countries
• Domestic benefit claims can be to earlier U.S. provisional (35 U.S.C. 119(e)) or nonprovisional (35 U.S.C. 120) applications

Key differences include:

• Time limits: 12 months for foreign priority, 12 months for provisionals, no limit for nonprovisionals
• Required documents: Certified copy needed for foreign priority, not for domestic benefit
• Effect: Foreign priority is mainly for prior art purposes, domestic benefit can confer actual pendency benefits

Both types of claims must be properly made to be effective, but the specific requirements and effects differ.

A certified copy of a foreign application is an official copy of the foreign patent application, certified by the patent office where it was filed. It is required to perfect a claim of foreign priority in a U.S. patent application.

According to 37 CFR 1.55(f), for applications filed on or after March 16, 2013:

“A certified copy of the foreign application must be filed 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, in an original application under 35 U.S.C. 111(a) filed on or after March 16, 2013, except as provided in paragraphs (h), (i), and (j) of this section.”

There are exceptions to this requirement, such as when the foreign application was filed in a foreign intellectual property office participating in a priority document exchange agreement with the USPTO. In such cases, the applicant can request that the USPTO retrieve the certified copy electronically.

If you fail to make a timely priority claim or submit a certified copy of the foreign application within the required time period, the following may occur:

• The right of priority may be considered waived
• The effective filing date of your application may be the actual U.S. filing date, not the foreign filing date
• Intervening prior art may be applicable against your application

However, 37 CFR 1.55(e) provides for acceptance of a delayed priority claim if:

• The claim is filed within the pendency of the application
• A petition is filed with the delayed claim
• The delay was unintentional
• The required petition fee is paid

Similarly, 37 CFR 1.55(f) allows for late submission of a certified copy with a petition showing good and sufficient cause for the delay and payment of a fee. It’s always best to make priority claims and submit certified copies timely to avoid potential issues.

The Patent Cooperation Treaty (PCT) system interacts with foreign priority claims in several important ways:

1. Priority claims in PCT applications:
– PCT applications can claim priority to earlier foreign applications under the Paris Convention.
– The priority period is 12 months from the earliest priority date.

2. PCT as a basis for priority:
– A PCT application can serve as the basis for a priority claim in a later-filed national or regional application.

3. Effect on time limits:
– The 30-month time limit for entering the national phase is calculated from the priority date (if claimed) or the PCT filing date if no priority is claimed.

4. Restoration of priority rights:
– The PCT system allows for restoration of priority rights if an international application is filed within 14 months of the priority date and the delay was unintentional.

5. Certified copies:
– The PCT system has provisions for providing certified copies of priority documents to designated offices.

As stated in MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”

The PCT system provides a streamlined process for seeking patent protection internationally while preserving priority rights, but applicants must be aware of the specific requirements and time limits within the PCT system.

Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.

For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.

For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.

It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.

Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.

Claiming foreign priority can significantly affect the prior art date in your application:

• For applications subject to pre-AIA law, the foreign priority date becomes the effective U.S. filing date for prior art purposes under 35 U.S.C. 102(a), (b), and (d)
• For applications subject to AIA law, the foreign priority date is treated as the effective filing date for prior art purposes under 35 U.S.C. 102(a)(1) and (a)(2)

This means that intervening disclosures between your foreign filing date and your U.S. filing date may not be considered prior art against your application. However, it’s important to note that the claimed subject matter must be fully supported by the foreign application to get the benefit of its filing date. Additionally, the priority claim must be proper and timely made for this benefit to apply.

Claiming priority to a provisional application is different from claiming foreign priority. To claim the benefit of a provisional application in a later-filed nonprovisional application:

• The nonprovisional must be filed within 12 months of the provisional filing date
• A specific reference to the provisional application must be made in an application data sheet
• The provisional and nonprovisional must name at least one common inventor
• The claimed subject matter must be supported by the provisional application

This is known as a domestic benefit claim under 35 U.S.C. 119(e), rather than a foreign priority claim under 35 U.S.C. 119(a)-(d). The requirements are specified in 37 CFR 1.78 rather than 37 CFR 1.55.

Claiming priority to a PCT international application can be done in two ways:

1. In a U.S. national stage application under 35 U.S.C. 371:
   • The priority claim is made in the PCT application
   • No further action is needed when entering the national stage
2. In a U.S. nonprovisional application under 35 U.S.C. 111(a):
   • File within 12 months of the PCT filing date
   • Make the priority claim in an application data sheet
   • Provide a certified copy of the PCT application (unless already filed with the PCT)

In both cases, the PCT application must designate the United States. The specific requirements are detailed in 37 CFR 1.55(d)(2) and (f)(2) for national stage applications, and 37 CFR 1.55(d)(1) and (f)(1) for applications under 35 U.S.C. 111(a).

To claim foreign priority in a U.S. patent application, you must:

1. File the U.S. application within 12 months (6 months for design applications) of the foreign filing date.
2. Submit a claim for priority identifying the foreign application.
3. File a certified copy of the foreign application.

For applications filed on or after September 16, 2012, 37 CFR 1.55(d)(1) requires that the claim for priority be presented in an application data sheet. The claim must identify the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

A certified copy of the foreign application must also be filed within a specified time period, usually within the later of 4 months from the actual U.S. filing date or 16 months from the foreign filing date.

Yes, the right of priority can be restored if the U.S. application is filed after the 12-month priority period (or 6-month period for design applications), but within 2 months of the expiration of the priority period, if the delay was unintentional.

37 CFR 1.55(c) states: “If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional.”

To restore the right of priority, the applicant must file a petition including:
1. The priority claim
2. The petition fee
3. A statement that the delay was unintentional

The USPTO may require additional information to determine if the delay was truly unintentional.

Yes, it is possible to restore the right of priority if you miss the 12-month filing deadline (6 months for design applications). As provided in 37 CFR 1.55(c), if the subsequent application is filed within two months from the expiration of the priority period, the right of priority may be restored upon petition. The petition must include:

• The priority claim (unless previously submitted)
• The petition fee
• A statement that the delay in filing was unintentional

The Director may require additional information where there is a question whether the delay was unintentional. Note that while this allows for a valid priority claim, it does not overcome potential prior art issues under pre-AIA 35 U.S.C. 102(b) or (d) in applications subject to pre-AIA law.

Yes, it is possible to claim priority to multiple foreign applications in a U.S. patent application, provided certain conditions are met:

• Each foreign application must independently meet the requirements for a priority claim
• The U.S. application must be filed within 12 months of the earliest filed foreign application
• The claimed subject matter must be supported by each application for which priority is claimed

When claiming multiple priorities, the U.S. application gets the benefit of each prior application only for the subject matter that it supports. This allows applicants to combine priority claims to protect inventions that were developed and disclosed progressively over time in different countries.

The MPEP provides a table of states (countries) for which the right of priority under 35 U.S.C. 119(a)-(d) is recognized. These countries fall into three categories:

• Parties to the Patent Cooperation Treaty (PCT)
• Parties to the Paris Convention for the Protection of Industrial Property
• Members of the World Trade Organization (WTO)

The MPEP states: “Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a)-(d) has been recognized.”

For the most current list of recognized countries, refer to the WIPO website at www.wipo.int/pct/en/paris_wto_pct.html.

The provisions of 35 U.S.C. 386(a) and (b) became effective for certain types of applications filed on or after May 13, 2015. According to MPEP 213.07:

The provisions of 35 U.S.C. 386(a) and (b) apply to nonprovisional applications, international applications (PCT) and international design applications filed on or after May 13, 2015, and patents issued therefrom. See 37 CFR 1.55(o).

This means that the right of priority under these sections is only applicable to:

• Nonprovisional applications
• International applications (PCT)
• International design applications

These applications must be filed on or after May 13, 2015, to be eligible for the priority rights under 35 U.S.C. 386(a) and (b). The same applies to patents issued from such applications.

For more information on 35 U.S.C. 386, visit: 35 U.S.C. 386.

For more information on effective date, visit: effective date.

For more information on nonprovisional application, visit: nonprovisional application.

An international design application designating the United States can claim priority based on several types of prior applications. According to MPEP 213.07:

Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.

The types of prior applications that can be used for claiming priority include:

• A prior foreign application
• An international application (PCT) designating at least one country other than the United States
• A prior international design application designating at least one country other than the United States

These priority claims must comply with the conditions and requirements set forth in 35 U.S.C. 119(a)-(d) and 172, as well as the Hague Agreement and its Regulations.

For more information on foreign priority, visit: foreign priority.

For more information on Hague Agreement, visit: Hague Agreement.

For more information on prior applications, visit: prior applications.

The time period for filing a priority claim in an international design application designating the United States depends on whether it’s a nonprovisional international design application or not. According to MPEP 213.07:

In an international design application designating the United States, the claim for priority may be made in accordance with the Hague Agreement and the Hague Agreement Regulations.

For nonprovisional international design applications, the MPEP states:

In a nonprovisional international design application, the priority claim and certified copy must be furnished in accordance with the time period and other conditions set forth in paragraph (g) of this section.

This refers to 37 CFR 1.55(g), which generally requires the priority claim to be filed 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. However, it’s important to consult the specific regulations and the Hague Agreement for precise deadlines and requirements, as they may vary depending on the specific circumstances of the application.

For more information on Hague Agreement, visit: Hague Agreement.

For more information on nonprovisional application, visit: nonprovisional application.

The U.S. nonprovisional application must generally be filed within 12 months of the filing date of the foreign application to claim priority. For design applications, this period is 6 months.

Specifically, 37 CFR 1.55(b) states:

“The nonprovisional application must be: (1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or (2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.”

There are provisions to restore the right of priority if the subsequent application is filed within 2 months after the expiration of the priority period, if the delay was unintentional.

What is the significance of the Paris Convention in foreign priority claims?

The Paris Convention plays a crucial role in foreign priority claims for patent applications. Its significance includes:

• Establishing the right of priority for patent applications among member countries.
• Allowing applicants to file in multiple countries while maintaining the original filing date.
• Providing a 12-month priority period for utility patents (6 months for design patents).
• Ensuring equal treatment of foreign and domestic applicants in member countries.

According to MPEP 213: “The right of priority is defined in Article 4 of the Paris Convention for the Protection of Industrial Property and is based on the first filing in a Paris Convention country.” This convention facilitates international patent protection by allowing inventors to secure priority dates across multiple jurisdictions.

Regional patent offices play a crucial role in the international patent system, particularly for priority claims. MPEP 213.01 recognizes several regional patent offices whose applications can serve as the basis for priority claims in the United States. These include:

• European Patent Office (EPO)
• Eurasian Patent Office (EAPO)
• African Intellectual Property Organization (OAPI)
• African Regional Intellectual Property Organization (ARIPO)

The significance of these regional offices is explained in MPEP 213.01:

‘The United States will recognize claims for right of priority based on applications filed under such multilateral international agreements as the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT).’

This recognition allows applicants to file a single application with a regional patent office and still maintain priority rights in the United States. It streamlines the international patent application process and provides more flexibility for inventors seeking protection in multiple countries.

35 U.S.C. 386 establishes the right of priority for international design applications. It addresses two key scenarios:

1. National applications claiming priority from international design applications
2. International design applications claiming priority from prior foreign applications

The MPEP explains:

“Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.”

“Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.”

These provisions apply to applications filed on or after May 13, 2015, and patents issued from such applications.

The right of priority allows an applicant who has filed a patent application in a foreign country to claim priority to that earlier filing date when filing a subsequent U.S. application for the same invention. This right is established by 35 U.S.C. 119 and gives the U.S. application the benefit of the earlier foreign filing date, as long as certain conditions are met.

Specifically, 35 U.S.C. 119(a) states: “An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within 12 months from the earliest date on which such foreign application was filed.”

For a valid foreign priority claim, the U.S. application and the foreign application must name the same inventor or have at least one joint inventor in common. This requirement ensures that the right of priority is properly linked between the applications.

As stated in MPEP 213.02: “Pursuant to 35 U.S.C. 119(a), the foreign application must have been filed by the same applicant as the applicant in the United States, or by applicant’s legal representatives or assigns. Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”

The MPEP further clarifies: “Joint inventors A and B in a nonprovisional application filed in the United States Patent and Trademark Office may properly claim the benefit of an application filed in a foreign country by A and another application filed in a foreign country by B, i.e., A and B may each claim the benefit of their foreign filed applications.”

This requirement ensures that the priority right is properly linked to the inventive entity responsible for the invention in both the foreign and U.S. applications.

For more information on foreign priority, visit: foreign priority.

For more information on joint inventors, visit: joint inventors.

For a valid foreign priority claim, the U.S. application must have at least one common inventor with the foreign application. This requirement ensures that the right of priority is only available to the actual inventors or their legal representatives.

As stated in MPEP 213.02: “Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”

This means that:
1. A sole inventor in the U.S. can claim priority to a foreign application where they are the sole inventor or one of joint inventors.
2. Joint inventors in the U.S. can claim priority to a foreign application filed by any one or more of them.
3. A U.S. application cannot claim priority to a foreign application with completely different inventors.

It’s important to note that while the inventorship must overlap, it doesn’t have to be identical between the U.S. and foreign applications.

When claiming foreign priority, applicants are generally required to file a certified copy of the foreign application within a specified time period. The requirements and deadlines for filing the certified copy depend on the type of application and the circumstances of the filing.

According to MPEP 213.04: “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.”

Key points about the certified copy requirement include:

• The certified copy must be filed within the pendency of the application, unless filed with a petition.
• For applications filed under 35 U.S.C. 111(a), the certified copy must typically be filed within the later of four months from the actual filing date or sixteen months from the filing date of the prior foreign application.
• For national stage applications under 35 U.S.C. 371, the certified copy must be filed within the time limit set forth in the PCT and the Regulations under the PCT.
• If the certified copy is not filed within the required time period, it must be accompanied by a petition and fee, along with a showing of good and sufficient cause for the delay.
• In some cases, the requirement may be satisfied through the priority document exchange program or by identifying a previously filed application containing the certified copy.

The MPEP also notes: “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.”

For more information on certified copy, visit: certified copy.

For more information on filing requirements, visit: filing requirements.

For more information on foreign application, visit: foreign application.

The priority document exchange program allows the USPTO to obtain priority documents electronically from other participating foreign intellectual property offices, eliminating the need for applicants to submit certified copies themselves. As stated in 37 CFR 1.55(i), the requirement to file a certified copy is considered satisfied if:

• The foreign application was filed in a participating foreign intellectual property office
• The claim for priority includes the necessary information for retrieval
• The copy is received by the USPTO from the participating office

Applicants must still make the priority claim within the required time period. This program simplifies the process of submitting priority documents for many applicants.

The Paris Convention for the Protection of Industrial Property is an international agreement that establishes key principles for intellectual property protection, including patents. It was first signed in 1883 and has been revised several times since then.

The Convention is significant in patent law because it established the right of priority, which allows patent applicants to claim priority based on an earlier filing in any country that is a member of the Paris Convention. This right is referenced in MPEP 213, which states:

‘The right of priority is defined in 35 U.S.C. 119(a)… Under this statute, an applicant who has filed a first foreign application is entitled to claim the benefit of the filing date of the first foreign application in a subsequent U.S. national patent application…’

This provision helps inventors protect their inventions internationally by giving them a grace period to file in multiple countries while maintaining the priority date of their first filing.

The Paris Convention is an international treaty that establishes priority rights for patent applications. According to MPEP 213, “The right of priority is defined in 35 U.S.C. 119(a)” and is based on this convention. It allows inventors who file a patent application in one member country to claim priority for up to 12 months when filing in other member countries.

Key points of the Paris Convention include:

• Establishing a 12-month priority period for patents
• Allowing applicants to claim priority based on earlier filings in member countries
• Ensuring equal treatment of foreign and domestic applicants in member countries

While restoration of the right of priority allows for valid priority claims up to 14 months from the earliest priority date (or 8 months for design applications), pre-AIA applications are still subject to the 12-month statutory bar under pre-AIA 35 U.S.C. 102(b) and (d). MPEP 213.03 clarifies: ‘It should be noted that although an application may now validly claim priority under 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) or (b), or 386(a) or (b) to a foreign application filed up to fourteen months earlier (or eight months earlier in the case of a design application) in view of the restoration provision of 37 CFR 1.55(c), an application subject to examination under pre-AIA first to invent laws (rather than the first inventor to file provisions of the AIA) would still be subject to the 12-month statutory time periods in pre-AIA 35 U.S.C. 102(b) and (d) which are measured from the U.S. filing date.’

This means that while the priority claim may be valid, the earlier filed foreign application could still be used as prior art against a pre-AIA application if it was published more than one year before the U.S. filing date.

For more information on pre-AIA, visit: pre-AIA.

A proper foreign priority claim can give a U.S. patent application the benefit of the earlier foreign filing date as its effective filing date for prior art purposes. This can be crucial for establishing novelty and non-obviousness of the invention.

35 U.S.C. 119(a) states that a U.S. application properly claiming foreign priority “shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country.”

This means that intervening prior art published after the foreign filing date but before the U.S. filing date may not be used against the application if the priority claim is valid. However, it’s important to note that the actual U.S. filing date is still used for other purposes, such as calculating patent term.

Claiming foreign priority under 35 U.S.C. 119(a)-(d) and claiming benefit of a U.S. provisional application under 35 U.S.C. 119(e) are similar in some ways but have important differences:

1. Time limit:
– Foreign priority: Must be claimed within 12 months (6 months for design applications)
– Provisional: Must be claimed within 12 months

2. Effective filing date:
– Both can provide an earlier effective filing date for prior art purposes

3. Patent term:
– Foreign priority: Does not affect patent term
– Provisional: The 12-month period counts towards the 20-year patent term

4. Disclosure requirements:
– Both require the earlier application to provide adequate support for the claimed invention

5. Formalities:
– Foreign priority: Requires a certified copy of the foreign application
– Provisional: No certified copy required, but the provisional must be in English

6. Inventorship:
– Foreign priority: Requires at least one common inventor
– Provisional: Requires at least one common inventor

7. International effect:
– Foreign priority: Recognized in other Paris Convention countries
– Provisional: May not be recognized in some foreign jurisdictions

Both types of priority claims can be valuable for establishing an earlier effective filing date, but they have different requirements and effects that should be considered when developing a patent strategy.

Foreign priority claims and domestic benefit claims are two different ways of claiming the benefit of an earlier filing date:

• Foreign priority claims (under 35 U.S.C. 119(a)-(d)) are based on earlier applications filed in foreign countries
• Domestic benefit claims can be to earlier U.S. provisional (35 U.S.C. 119(e)) or nonprovisional (35 U.S.C. 120) applications

Key differences include:

• Time limits: 12 months for foreign priority, 12 months for provisionals, no limit for nonprovisionals
• Required documents: Certified copy needed for foreign priority, not for domestic benefit
• Effect: Foreign priority is mainly for prior art purposes, domestic benefit can confer actual pendency benefits

Both types of claims must be properly made to be effective, but the specific requirements and effects differ.

In the context of foreign priority claims, there’s an important distinction between a ‘country’ and a ‘regional patent office’:

• Country: A sovereign nation that has its own patent system and can issue patents directly.
• Regional Patent Office: An intergovernmental organization that processes patent applications on behalf of multiple member countries.

The MPEP states: The right of priority may be based upon an application filed in a foreign country or in a regional patent office. (MPEP 213)

Regional patent offices, such as the European Patent Office (EPO) or the African Regional Intellectual Property Organization (ARIPO), allow applicants to file a single application that can potentially lead to patent protection in multiple member countries.

To make a proper priority claim in a U.S. patent application, the applicant must provide specific information about the foreign application and file the claim within the required time period. The requirements differ slightly depending on the type of application.

For applications filed on or after September 16, 2012, under 35 U.S.C. 111(a), MPEP 213.02 states: “the claim for priority must be presented in an application data sheet.” The claim must include:

• The application number of the foreign application
• The country or intellectual property authority
• The day, month, and year of filing

For international applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set forth in the PCT and the Regulations under the PCT.

The MPEP further notes: “For applications filed prior to September 16, 2012, the claim to priority need be in no special form, and may be made by a person authorized to sign correspondence under 37 CFR 1.33(b). No special language is required in making the claim for priority, and any expression which can be reasonably interpreted as claiming the benefit of the foreign application is accepted as the claim for priority.”

It’s important to file the priority claim within the specified time limits to ensure it is considered valid and effective.

For more information on application data sheet, visit: application data sheet.

For more information on foreign application, visit: foreign application.

A certified copy of a foreign application is an official copy of the foreign patent application, certified by the patent office where it was filed. It is required to perfect a claim of foreign priority in a U.S. patent application.

According to 37 CFR 1.55(f), for applications filed on or after March 16, 2013:

“A certified copy of the foreign application must be filed 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, in an original application under 35 U.S.C. 111(a) filed on or after March 16, 2013, except as provided in paragraphs (h), (i), and (j) of this section.”

There are exceptions to this requirement, such as when the foreign application was filed in a foreign intellectual property office participating in a priority document exchange agreement with the USPTO. In such cases, the applicant can request that the USPTO retrieve the certified copy electronically.

Several international agreements can form the basis for a priority claim in patent applications. The MPEP mentions:

• The Paris Convention for the Protection of Industrial Property
• The Hague Agreement Concerning the International Registration of Industrial Designs
• The Benelux Designs Convention
• The Convention on the Grant of European Patents (European Patent Office)
• The Patent Cooperation Treaty (PCT)
• The International Convention for the Protection of New Varieties of Plants (UPOV)

The MPEP states: “Under Article 4A of the Paris Convention for the Protection of Industrial Property, a right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design filed under the national law of a foreign country adhering to the Convention, or on a foreign application filed under a bilateral or multilateral treaty concluded between two or more such countries.”

These agreements facilitate the international protection of intellectual property rights and enable applicants to claim priority based on applications filed in various jurisdictions.

When multiple foreign applications are filed for the same invention, the right of priority is generally based on the earliest filed application. MPEP 213.03 explains: ‘The twelve months is from earliest foreign filing except as provided in 35 U.S.C. 119(c). If an inventor has filed an application in France on October 4, 1981, and an identical application in the United Kingdom on March 3, 1982, and then files in the United States on February 2, 1983, the inventor is not entitled to the right of priority at all; the inventor would not be entitled to the benefit of the date of the French application since this application was filed more than twelve months before the U.S. application, and the inventor would not be entitled to the benefit of the date of the United Kingdom application since this application is not the first one filed.’

However, if the later application contains additional subject matter, a claim specifically limited to that additional disclosure may be entitled to the priority date of the later foreign application.

If you fail to make a timely priority claim or submit a certified copy of the foreign application within the required time period, the following may occur:

• The right of priority may be considered waived
• The effective filing date of your application may be the actual U.S. filing date, not the foreign filing date
• Intervening prior art may be applicable against your application

However, 37 CFR 1.55(e) provides for acceptance of a delayed priority claim if:

• The claim is filed within the pendency of the application
• A petition is filed with the delayed claim
• The delay was unintentional
• The required petition fee is paid

Similarly, 37 CFR 1.55(f) allows for late submission of a certified copy with a petition showing good and sufficient cause for the delay and payment of a fee. It’s always best to make priority claims and submit certified copies timely to avoid potential issues.

To claim foreign priority in a U.S. application, you must file a claim for priority and submit a certified copy of the foreign application. MPEP 213.04 states: ‘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.’

For applications filed on or after September 16, 2012, the priority claim must be presented in an Application Data Sheet (ADS). The certified copy must be filed within the later of 4 months from the actual filing date or 16 months from the foreign filing date, with some exceptions.

For more information on certified copy, visit: certified copy.

For more information on foreign priority, visit: foreign priority.

To claim foreign priority in a U.S. patent application, several requirements must be met as outlined in MPEP 213. These include:

• Timely filing: The U.S. application must be filed within 12 months of the foreign application’s filing date (6 months for design patents)
• Proper claim: The priority claim must be made in an application data sheet (ADS) or in the first sentence of the specification
• Certified copy: A certified copy of the foreign application must be filed within the later of 4 months from the U.S. filing date or 16 months from the foreign filing date
• English translation: If the foreign application is not in English, a translation may be required

As stated in MPEP 213, “The claim for priority must be presented in an application data sheet (37 CFR 1.76(b)(6)) or the specification must contain or be amended to contain a specific reference to the prior foreign application.” Failure to meet these requirements may result in the loss of the priority claim.

How does WTO membership affect foreign priority rights?

World Trade Organization (WTO) membership has significant implications for foreign priority rights in patent applications:

• WTO member countries are treated as Paris Convention countries for priority purposes.
• Applicants from WTO member countries can claim priority in the U.S., even if the country is not a Paris Convention signatory.
• The same 12-month priority period applies to applications from WTO member countries.
• WTO membership expands the pool of countries eligible for foreign priority claims.

MPEP 213.01 states: “A foreign application filed in a WTO member country on or after the date on which the country becomes a WTO member country is also entitled to the right of priority.” This provision ensures broader international protection opportunities for inventors and applicants.

The USPTO determines if a foreign country qualifies for priority rights based on specific criteria outlined in the MPEP. According to MPEP 213.01:

The right of priority is recognized only if the foreign country in which the original application was filed is recognized at the time of filing the application in the United States.

The USPTO considers several factors:

• The country must be a member of the Paris Convention for the Protection of Industrial Property or have a bilateral agreement with the United States.
• The country must grant similar priority rights to U.S. citizens.
• The country must be recognized by the U.S. Department of State.

The USPTO maintains a list of recognized countries and regional patent offices in MPEP 213.01, which is updated periodically to reflect changes in international relations and treaty memberships.

The right of priority for international applications filed under the Patent Cooperation Treaty (PCT) operates similarly to national applications, but with some specific provisions and requirements set by the PCT system.

According to MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”

Key points about priority in PCT applications include:

• The priority claim must be made in the PCT Request form or through a later correction.
• The applicant must file a certified copy of the priority document with the International Bureau within 16 months from the priority date, unless it was previously filed with the receiving Office.
• If the priority document is issued by the receiving Office, the applicant can request that Office to prepare and transmit the document to the International Bureau.
• The International Bureau will make the priority document available to designated Offices.
• For U.S. national stage entry, if the certified copy was submitted during the international phase, it generally satisfies the requirement for the U.S. application.

The MPEP further notes: “If, however, the International Bureau is unable to forward a copy of the certified priority document because the applicant failed to submit a certified copy of the foreign priority document during the international phase, the applicant will need to provide a certified copy of the priority document or have the Office retrieve the priority application in accordance with the priority document exchange program during the national stage to fulfill the requirements of 37 CFR 1.55.”

For more information on certified copy, visit: certified copy.

The right of priority under 35 U.S.C. 386(a) and 386(b) applies to different types of applications. According to MPEP 213.07:

Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.

This means that 35 U.S.C. 386(a) allows a nonprovisional application to claim priority based on a prior international design application.

On the other hand, 35 U.S.C. 386(b) applies differently:

Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.

Thus, 35 U.S.C. 386(b) allows an international design application designating the United States to claim priority based on various types of prior applications.

The key differences are:

• 386(a) applies to nonprovisional applications claiming priority to international design applications.
• 386(b) applies to international design applications claiming priority to foreign applications, PCT applications, or other international design applications.

For more information on nonprovisional application, visit: nonprovisional application.

For more information on right of priority, visit: right of priority.

The Patent Cooperation Treaty (PCT) system interacts with foreign priority claims in several important ways:

1. Priority claims in PCT applications:
– PCT applications can claim priority to earlier foreign applications under the Paris Convention.
– The priority period is 12 months from the earliest priority date.

2. PCT as a basis for priority:
– A PCT application can serve as the basis for a priority claim in a later-filed national or regional application.

3. Effect on time limits:
– The 30-month time limit for entering the national phase is calculated from the priority date (if claimed) or the PCT filing date if no priority is claimed.

4. Restoration of priority rights:
– The PCT system allows for restoration of priority rights if an international application is filed within 14 months of the priority date and the delay was unintentional.

5. Certified copies:
– The PCT system has provisions for providing certified copies of priority documents to designated offices.

As stated in MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”

The PCT system provides a streamlined process for seeking patent protection internationally while preserving priority rights, but applicants must be aware of the specific requirements and time limits within the PCT system.

The Patent Cooperation Treaty (PCT) interacts with foreign priority claims as outlined in MPEP 213. The PCT allows applicants to file a single international patent application that can later enter the national phase in multiple countries.

Key points regarding PCT and foreign priority:

• PCT applications can claim priority from earlier national or regional applications
• The priority period for PCT applications is also 12 months from the earliest priority date
• PCT applications themselves can serve as the basis for priority claims in subsequent national or regional applications

As stated in MPEP 213, “U.S. national applications may claim priority to an international application (PCT) filed in a PCT Receiving Office other than the United States Receiving Office.” This demonstrates the flexibility of the PCT system in international patent protection strategies.

Taiwan’s unique political status has implications for patent priority claims in US applications. According to MPEP 213.01:

‘Applicants from Taiwan may claim priority under 35 U.S.C. 119(a)-(d) to applications filed in Taiwan which are filed by or on behalf of the governing authority on Taiwan.’

This special provision allows Taiwanese applicants to claim priority despite Taiwan not being officially recognized as a sovereign state by the United States. The MPEP further clarifies:

Applications from Taiwan must meet the following criteria to be eligible for priority claims:

• The application must be filed by or on behalf of the governing authority on Taiwan
• The priority claim must be made in accordance with the standard procedures outlined in 35 U.S.C. 119(a)-(d)

This arrangement ensures that inventors and companies in Taiwan can participate in the international patent system and maintain priority rights for their inventions when seeking protection in the United States.

Claiming priority for international design applications has some specific provisions, particularly when the application designates the United States. These provisions are outlined in the MPEP and relevant regulations.

According to MPEP 213.07: “Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.”

Key points about priority in international design applications include:

• The right of priority under 35 U.S.C. 386(a) or (b) applies only to applications filed on or after May 13, 2015.
• For nonprovisional international design applications, the priority claim must be presented in an application data sheet during the pendency of the application, unless made in accordance with the Hague Agreement and Regulations.
• The certified copy of the priority document must be furnished within the time period specified in 37 CFR 1.55(g).
• An international design application designating the U.S. can claim priority to a prior foreign application, PCT application, or another international design application.

The MPEP also notes: “See MPEP § 2920.05(d) for additional information pertaining to the right of priority based upon an international design application.”

These provisions ensure that design patent applicants can properly claim priority to earlier filed applications in the context of the international design registration system.

For more information on design patent, visit: design patent.

For more information on Hague Agreement, visit: Hague Agreement.

Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.

For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.

For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.

It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.

Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.

Claiming foreign priority can significantly affect the prior art date in your application:

• For applications subject to pre-AIA law, the foreign priority date becomes the effective U.S. filing date for prior art purposes under 35 U.S.C. 102(a), (b), and (d)
• For applications subject to AIA law, the foreign priority date is treated as the effective filing date for prior art purposes under 35 U.S.C. 102(a)(1) and (a)(2)

This means that intervening disclosures between your foreign filing date and your U.S. filing date may not be considered prior art against your application. However, it’s important to note that the claimed subject matter must be fully supported by the foreign application to get the benefit of its filing date. Additionally, the priority claim must be proper and timely made for this benefit to apply.

35 U.S.C. 365 addresses the right of priority for international applications in two key aspects:

1. National applications based on international applications
2. International applications based on foreign applications

The MPEP states:

“35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States.”

“35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application.”

These provisions ensure that applicants can claim priority based on international applications, enhancing the flexibility of the international patent system.

Priority to an international design application can be claimed in a U.S. nonprovisional application or in another international design application designating the U.S. MPEP 213.07 states: ‘Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.’

The priority claim should be made in an Application Data Sheet (ADS) for nonprovisional applications. For international design applications designating the U.S., the priority claim can be made in accordance with the Hague Agreement and Regulations.

For more information on Hague Agreement, visit: Hague Agreement.

Claiming priority to a provisional application is different from claiming foreign priority. To claim the benefit of a provisional application in a later-filed nonprovisional application:

• The nonprovisional must be filed within 12 months of the provisional filing date
• A specific reference to the provisional application must be made in an application data sheet
• The provisional and nonprovisional must name at least one common inventor
• The claimed subject matter must be supported by the provisional application

This is known as a domestic benefit claim under 35 U.S.C. 119(e), rather than a foreign priority claim under 35 U.S.C. 119(a)-(d). The requirements are specified in 37 CFR 1.78 rather than 37 CFR 1.55.

Claiming priority to a PCT international application can be done in two ways:

1. In a U.S. national stage application under 35 U.S.C. 371:
   • The priority claim is made in the PCT application
   • No further action is needed when entering the national stage
2. In a U.S. nonprovisional application under 35 U.S.C. 111(a):
   • File within 12 months of the PCT filing date
   • Make the priority claim in an application data sheet
   • Provide a certified copy of the PCT application (unless already filed with the PCT)

In both cases, the PCT application must designate the United States. The specific requirements are detailed in 37 CFR 1.55(d)(2) and (f)(2) for national stage applications, and 37 CFR 1.55(d)(1) and (f)(1) for applications under 35 U.S.C. 111(a).

For international applications entering the U.S. national stage under 35 U.S.C. 371, the priority claim must be made within the time limit set by the PCT and its regulations. MPEP 213.06 states: ‘In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made and a certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT.’

If the priority claim was properly made during the international phase, it’s generally not necessary to repeat it upon national stage entry. However, the certified copy of the priority document must be furnished if not previously submitted to the International Bureau or the USPTO.

For more information on national stage application, visit: national stage application.

To claim foreign priority in a U.S. patent application, you must:

1. File the U.S. application within 12 months (6 months for design applications) of the foreign filing date.
2. Submit a claim for priority identifying the foreign application.
3. File a certified copy of the foreign application.

For applications filed on or after September 16, 2012, 37 CFR 1.55(d)(1) requires that the claim for priority be presented in an application data sheet. The claim must identify the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

A certified copy of the foreign application must also be filed within a specified time period, usually within the later of 4 months from the actual U.S. filing date or 16 months from the foreign filing date.

An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.

According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”

The petition to restore the right of priority must include:

• The priority claim identifying the prior foreign application
• The petition fee
• A statement that the delay in filing was unintentional

The USPTO may require additional information to establish that the delay was unintentional.

For more information on foreign priority, visit: foreign priority.

For more information on priority restoration, visit: priority restoration.

For more information on unintentional delay, visit: unintentional delay.

Yes, the right of priority can be restored if the U.S. application is filed after the 12-month priority period (or 6-month period for design applications), but within 2 months of the expiration of the priority period, if the delay was unintentional.

37 CFR 1.55(c) states: “If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional.”

To restore the right of priority, the applicant must file a petition including:
1. The priority claim
2. The petition fee
3. A statement that the delay was unintentional

The USPTO may require additional information to determine if the delay was truly unintentional.

Yes, applicants can claim priority under 35 U.S.C. 119(a)-(d) based on applications filed in certain foreign regional patent offices. The MPEP states:

“In addition to the list of recognized countries set forth in subsection I, above, applicants may claim priority under 35 U.S.C. 119(a)-(d) to applications filed in foreign regional patent offices having member states who are members of the Paris Convention.”

The recognized regional patent offices include:

• African Regional Intellectual Property Organization (ARIPO)
• Eurasian Patent Office (EAPO)
• European Patent Office (EPO)
• Gulf Cooperation Council (GCC) Patent Office
• African Intellectual Property Organization (OAPI)

These regional patent offices allow applicants to file a single application that can have effect in multiple member states, streamlining the international patent application process.

Yes, it is possible to restore the right of priority if you miss the 12-month filing deadline (6 months for design applications). As provided in 37 CFR 1.55(c), if the subsequent application is filed within two months from the expiration of the priority period, the right of priority may be restored upon petition. The petition must include:

• The priority claim (unless previously submitted)
• The petition fee
• A statement that the delay in filing was unintentional

The Director may require additional information where there is a question whether the delay was unintentional. Note that while this allows for a valid priority claim, it does not overcome potential prior art issues under pre-AIA 35 U.S.C. 102(b) or (d) in applications subject to pre-AIA law.

Yes, it is possible to claim priority to multiple foreign applications in a U.S. patent application, provided certain conditions are met:

• Each foreign application must independently meet the requirements for a priority claim
• The U.S. application must be filed within 12 months of the earliest filed foreign application
• The claimed subject matter must be supported by each application for which priority is claimed

When claiming multiple priorities, the U.S. application gets the benefit of each prior application only for the subject matter that it supports. This allows applicants to combine priority claims to protect inventions that were developed and disclosed progressively over time in different countries.

Yes, under certain conditions, an applicant can claim priority based on an application for an inventor’s certificate. MPEP 213.05 explains: ‘An inventor’s certificate may form the basis for rights of priority under 35 U.S.C. 119(d) only when the country in which it is filed gives to applicants, at their discretion, the right to apply, on the same invention, either for a patent or for an inventor’s certificate.’

To claim priority to an inventor’s certificate, the applicant must file an affidavit or declaration stating that they had the option to file for either a patent or an inventor’s certificate in the foreign country.

For more information on foreign priority, visit: foreign priority.

Yes, a U.S. applicant can claim priority from a provisional application filed in a foreign country, provided certain conditions are met. The MPEP 213 states:

An applicant may claim the right of priority based on a prior foreign application under the Paris Convention and 35 U.S.C. 119(a)-(d) whether the foreign application is an application for a patent or for the registration of a utility model or an industrial design.

Key points to consider:

• The foreign country must be a recognized country or regional patent office as listed in MPEP 213.01.
• The provisional application must be the first filing of the invention in any country.
• The U.S. application must be filed within 12 months of the foreign provisional filing date.
• The applicant must comply with all requirements for claiming priority, including submitting a certified copy of the foreign application.

It’s important to note that not all countries have provisional application systems, so the term ‘provisional’ may have different meanings in different jurisdictions. Always consult with a patent attorney or agent for specific advice on international priority claims.

The MPEP provides a table of states (countries) for which the right of priority under 35 U.S.C. 119(a)-(d) is recognized. These countries fall into three categories:

• Parties to the Patent Cooperation Treaty (PCT)
• Parties to the Paris Convention for the Protection of Industrial Property
• Members of the World Trade Organization (WTO)

The MPEP states: “Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a)-(d) has been recognized.”

For the most current list of recognized countries, refer to the WIPO website at www.wipo.int/pct/en/paris_wto_pct.html.

The provisions of 35 U.S.C. 386(a) and (b) became effective for certain types of applications filed on or after May 13, 2015. According to MPEP 213.07:

The provisions of 35 U.S.C. 386(a) and (b) apply to nonprovisional applications, international applications (PCT) and international design applications filed on or after May 13, 2015, and patents issued therefrom. See 37 CFR 1.55(o).

This means that the right of priority under these sections is only applicable to:

• Nonprovisional applications
• International applications (PCT)
• International design applications

These applications must be filed on or after May 13, 2015, to be eligible for the priority rights under 35 U.S.C. 386(a) and (b). The same applies to patents issued from such applications.

For more information on 35 U.S.C. 386, visit: 35 U.S.C. 386.

For more information on effective date, visit: effective date.

For more information on nonprovisional application, visit: nonprovisional application.

An international design application designating the United States can claim priority based on several types of prior applications. According to MPEP 213.07:

Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.

The types of prior applications that can be used for claiming priority include:

• A prior foreign application
• An international application (PCT) designating at least one country other than the United States
• A prior international design application designating at least one country other than the United States

These priority claims must comply with the conditions and requirements set forth in 35 U.S.C. 119(a)-(d) and 172, as well as the Hague Agreement and its Regulations.

For more information on foreign priority, visit: foreign priority.

For more information on Hague Agreement, visit: Hague Agreement.

For more information on prior applications, visit: prior applications.

The time period for filing a priority claim in an international design application designating the United States depends on whether it’s a nonprovisional international design application or not. According to MPEP 213.07:

In an international design application designating the United States, the claim for priority may be made in accordance with the Hague Agreement and the Hague Agreement Regulations.

For nonprovisional international design applications, the MPEP states:

In a nonprovisional international design application, the priority claim and certified copy must be furnished in accordance with the time period and other conditions set forth in paragraph (g) of this section.

This refers to 37 CFR 1.55(g), which generally requires the priority claim to be filed 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. However, it’s important to consult the specific regulations and the Hague Agreement for precise deadlines and requirements, as they may vary depending on the specific circumstances of the application.

For more information on Hague Agreement, visit: Hague Agreement.

For more information on nonprovisional application, visit: nonprovisional application.

The U.S. nonprovisional application must generally be filed within 12 months of the filing date of the foreign application to claim priority. For design applications, this period is 6 months.

Specifically, 37 CFR 1.55(b) states:

“The nonprovisional application must be: (1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or (2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.”

There are provisions to restore the right of priority if the subsequent application is filed within 2 months after the expiration of the priority period, if the delay was unintentional.

What is the significance of the Paris Convention in foreign priority claims?

The Paris Convention plays a crucial role in foreign priority claims for patent applications. Its significance includes:

• Establishing the right of priority for patent applications among member countries.
• Allowing applicants to file in multiple countries while maintaining the original filing date.
• Providing a 12-month priority period for utility patents (6 months for design patents).
• Ensuring equal treatment of foreign and domestic applicants in member countries.

According to MPEP 213: “The right of priority is defined in Article 4 of the Paris Convention for the Protection of Industrial Property and is based on the first filing in a Paris Convention country.” This convention facilitates international patent protection by allowing inventors to secure priority dates across multiple jurisdictions.

Regional patent offices play a crucial role in the international patent system, particularly for priority claims. MPEP 213.01 recognizes several regional patent offices whose applications can serve as the basis for priority claims in the United States. These include:

• European Patent Office (EPO)
• Eurasian Patent Office (EAPO)
• African Intellectual Property Organization (OAPI)
• African Regional Intellectual Property Organization (ARIPO)

The significance of these regional offices is explained in MPEP 213.01:

‘The United States will recognize claims for right of priority based on applications filed under such multilateral international agreements as the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT).’

This recognition allows applicants to file a single application with a regional patent office and still maintain priority rights in the United States. It streamlines the international patent application process and provides more flexibility for inventors seeking protection in multiple countries.

35 U.S.C. 386 establishes the right of priority for international design applications. It addresses two key scenarios:

1. National applications claiming priority from international design applications
2. International design applications claiming priority from prior foreign applications

The MPEP explains:

“Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.”

“Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.”

These provisions apply to applications filed on or after May 13, 2015, and patents issued from such applications.

The right of priority allows an applicant who has filed a patent application in a foreign country to claim priority to that earlier filing date when filing a subsequent U.S. application for the same invention. This right is established by 35 U.S.C. 119 and gives the U.S. application the benefit of the earlier foreign filing date, as long as certain conditions are met.

Specifically, 35 U.S.C. 119(a) states: “An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within 12 months from the earliest date on which such foreign application was filed.”

For a valid foreign priority claim, the U.S. application and the foreign application must name the same inventor or have at least one joint inventor in common. This requirement ensures that the right of priority is properly linked between the applications.

As stated in MPEP 213.02: “Pursuant to 35 U.S.C. 119(a), the foreign application must have been filed by the same applicant as the applicant in the United States, or by applicant’s legal representatives or assigns. Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”

The MPEP further clarifies: “Joint inventors A and B in a nonprovisional application filed in the United States Patent and Trademark Office may properly claim the benefit of an application filed in a foreign country by A and another application filed in a foreign country by B, i.e., A and B may each claim the benefit of their foreign filed applications.”

This requirement ensures that the priority right is properly linked to the inventive entity responsible for the invention in both the foreign and U.S. applications.

For more information on foreign priority, visit: foreign priority.

For more information on joint inventors, visit: joint inventors.

For a valid foreign priority claim, the U.S. application must have at least one common inventor with the foreign application. This requirement ensures that the right of priority is only available to the actual inventors or their legal representatives.

As stated in MPEP 213.02: “Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”

This means that:
1. A sole inventor in the U.S. can claim priority to a foreign application where they are the sole inventor or one of joint inventors.
2. Joint inventors in the U.S. can claim priority to a foreign application filed by any one or more of them.
3. A U.S. application cannot claim priority to a foreign application with completely different inventors.

It’s important to note that while the inventorship must overlap, it doesn’t have to be identical between the U.S. and foreign applications.

When claiming foreign priority, applicants are generally required to file a certified copy of the foreign application within a specified time period. The requirements and deadlines for filing the certified copy depend on the type of application and the circumstances of the filing.

According to MPEP 213.04: “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.”

Key points about the certified copy requirement include:

• The certified copy must be filed within the pendency of the application, unless filed with a petition.
• For applications filed under 35 U.S.C. 111(a), the certified copy must typically be filed within the later of four months from the actual filing date or sixteen months from the filing date of the prior foreign application.
• For national stage applications under 35 U.S.C. 371, the certified copy must be filed within the time limit set forth in the PCT and the Regulations under the PCT.
• If the certified copy is not filed within the required time period, it must be accompanied by a petition and fee, along with a showing of good and sufficient cause for the delay.
• In some cases, the requirement may be satisfied through the priority document exchange program or by identifying a previously filed application containing the certified copy.

The MPEP also notes: “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.”

For more information on certified copy, visit: certified copy.

For more information on filing requirements, visit: filing requirements.

For more information on foreign application, visit: foreign application.

The priority document exchange program allows the USPTO to obtain priority documents electronically from other participating foreign intellectual property offices, eliminating the need for applicants to submit certified copies themselves. As stated in 37 CFR 1.55(i), the requirement to file a certified copy is considered satisfied if:

• The foreign application was filed in a participating foreign intellectual property office
• The claim for priority includes the necessary information for retrieval
• The copy is received by the USPTO from the participating office

Applicants must still make the priority claim within the required time period. This program simplifies the process of submitting priority documents for many applicants.

The Paris Convention for the Protection of Industrial Property is an international agreement that establishes key principles for intellectual property protection, including patents. It was first signed in 1883 and has been revised several times since then.

The Convention is significant in patent law because it established the right of priority, which allows patent applicants to claim priority based on an earlier filing in any country that is a member of the Paris Convention. This right is referenced in MPEP 213, which states:

‘The right of priority is defined in 35 U.S.C. 119(a)… Under this statute, an applicant who has filed a first foreign application is entitled to claim the benefit of the filing date of the first foreign application in a subsequent U.S. national patent application…’

This provision helps inventors protect their inventions internationally by giving them a grace period to file in multiple countries while maintaining the priority date of their first filing.

The Paris Convention is an international treaty that establishes priority rights for patent applications. According to MPEP 213, “The right of priority is defined in 35 U.S.C. 119(a)” and is based on this convention. It allows inventors who file a patent application in one member country to claim priority for up to 12 months when filing in other member countries.

Key points of the Paris Convention include:

• Establishing a 12-month priority period for patents
• Allowing applicants to claim priority based on earlier filings in member countries
• Ensuring equal treatment of foreign and domestic applicants in member countries

While restoration of the right of priority allows for valid priority claims up to 14 months from the earliest priority date (or 8 months for design applications), pre-AIA applications are still subject to the 12-month statutory bar under pre-AIA 35 U.S.C. 102(b) and (d). MPEP 213.03 clarifies: ‘It should be noted that although an application may now validly claim priority under 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) or (b), or 386(a) or (b) to a foreign application filed up to fourteen months earlier (or eight months earlier in the case of a design application) in view of the restoration provision of 37 CFR 1.55(c), an application subject to examination under pre-AIA first to invent laws (rather than the first inventor to file provisions of the AIA) would still be subject to the 12-month statutory time periods in pre-AIA 35 U.S.C. 102(b) and (d) which are measured from the U.S. filing date.’

This means that while the priority claim may be valid, the earlier filed foreign application could still be used as prior art against a pre-AIA application if it was published more than one year before the U.S. filing date.

For more information on pre-AIA, visit: pre-AIA.

A proper foreign priority claim can give a U.S. patent application the benefit of the earlier foreign filing date as its effective filing date for prior art purposes. This can be crucial for establishing novelty and non-obviousness of the invention.

35 U.S.C. 119(a) states that a U.S. application properly claiming foreign priority “shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country.”

This means that intervening prior art published after the foreign filing date but before the U.S. filing date may not be used against the application if the priority claim is valid. However, it’s important to note that the actual U.S. filing date is still used for other purposes, such as calculating patent term.

Claiming foreign priority under 35 U.S.C. 119(a)-(d) and claiming benefit of a U.S. provisional application under 35 U.S.C. 119(e) are similar in some ways but have important differences:

1. Time limit:
– Foreign priority: Must be claimed within 12 months (6 months for design applications)
– Provisional: Must be claimed within 12 months

2. Effective filing date:
– Both can provide an earlier effective filing date for prior art purposes

3. Patent term:
– Foreign priority: Does not affect patent term
– Provisional: The 12-month period counts towards the 20-year patent term

4. Disclosure requirements:
– Both require the earlier application to provide adequate support for the claimed invention

5. Formalities:
– Foreign priority: Requires a certified copy of the foreign application
– Provisional: No certified copy required, but the provisional must be in English

6. Inventorship:
– Foreign priority: Requires at least one common inventor
– Provisional: Requires at least one common inventor

7. International effect:
– Foreign priority: Recognized in other Paris Convention countries
– Provisional: May not be recognized in some foreign jurisdictions

Both types of priority claims can be valuable for establishing an earlier effective filing date, but they have different requirements and effects that should be considered when developing a patent strategy.

Foreign priority claims and domestic benefit claims are two different ways of claiming the benefit of an earlier filing date:

• Foreign priority claims (under 35 U.S.C. 119(a)-(d)) are based on earlier applications filed in foreign countries
• Domestic benefit claims can be to earlier U.S. provisional (35 U.S.C. 119(e)) or nonprovisional (35 U.S.C. 120) applications

Key differences include:

• Time limits: 12 months for foreign priority, 12 months for provisionals, no limit for nonprovisionals
• Required documents: Certified copy needed for foreign priority, not for domestic benefit
• Effect: Foreign priority is mainly for prior art purposes, domestic benefit can confer actual pendency benefits

Both types of claims must be properly made to be effective, but the specific requirements and effects differ.

In the context of foreign priority claims, there’s an important distinction between a ‘country’ and a ‘regional patent office’:

• Country: A sovereign nation that has its own patent system and can issue patents directly.
• Regional Patent Office: An intergovernmental organization that processes patent applications on behalf of multiple member countries.

The MPEP states: The right of priority may be based upon an application filed in a foreign country or in a regional patent office. (MPEP 213)

Regional patent offices, such as the European Patent Office (EPO) or the African Regional Intellectual Property Organization (ARIPO), allow applicants to file a single application that can potentially lead to patent protection in multiple member countries.

To make a proper priority claim in a U.S. patent application, the applicant must provide specific information about the foreign application and file the claim within the required time period. The requirements differ slightly depending on the type of application.

For applications filed on or after September 16, 2012, under 35 U.S.C. 111(a), MPEP 213.02 states: “the claim for priority must be presented in an application data sheet.” The claim must include:

• The application number of the foreign application
• The country or intellectual property authority
• The day, month, and year of filing

For international applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set forth in the PCT and the Regulations under the PCT.

The MPEP further notes: “For applications filed prior to September 16, 2012, the claim to priority need be in no special form, and may be made by a person authorized to sign correspondence under 37 CFR 1.33(b). No special language is required in making the claim for priority, and any expression which can be reasonably interpreted as claiming the benefit of the foreign application is accepted as the claim for priority.”

It’s important to file the priority claim within the specified time limits to ensure it is considered valid and effective.

For more information on application data sheet, visit: application data sheet.

For more information on foreign application, visit: foreign application.

A certified copy of a foreign application is an official copy of the foreign patent application, certified by the patent office where it was filed. It is required to perfect a claim of foreign priority in a U.S. patent application.

According to 37 CFR 1.55(f), for applications filed on or after March 16, 2013:

“A certified copy of the foreign application must be filed 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, in an original application under 35 U.S.C. 111(a) filed on or after March 16, 2013, except as provided in paragraphs (h), (i), and (j) of this section.”

There are exceptions to this requirement, such as when the foreign application was filed in a foreign intellectual property office participating in a priority document exchange agreement with the USPTO. In such cases, the applicant can request that the USPTO retrieve the certified copy electronically.

Several international agreements can form the basis for a priority claim in patent applications. The MPEP mentions:

• The Paris Convention for the Protection of Industrial Property
• The Hague Agreement Concerning the International Registration of Industrial Designs
• The Benelux Designs Convention
• The Convention on the Grant of European Patents (European Patent Office)
• The Patent Cooperation Treaty (PCT)
• The International Convention for the Protection of New Varieties of Plants (UPOV)

The MPEP states: “Under Article 4A of the Paris Convention for the Protection of Industrial Property, a right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design filed under the national law of a foreign country adhering to the Convention, or on a foreign application filed under a bilateral or multilateral treaty concluded between two or more such countries.”

These agreements facilitate the international protection of intellectual property rights and enable applicants to claim priority based on applications filed in various jurisdictions.

When multiple foreign applications are filed for the same invention, the right of priority is generally based on the earliest filed application. MPEP 213.03 explains: ‘The twelve months is from earliest foreign filing except as provided in 35 U.S.C. 119(c). If an inventor has filed an application in France on October 4, 1981, and an identical application in the United Kingdom on March 3, 1982, and then files in the United States on February 2, 1983, the inventor is not entitled to the right of priority at all; the inventor would not be entitled to the benefit of the date of the French application since this application was filed more than twelve months before the U.S. application, and the inventor would not be entitled to the benefit of the date of the United Kingdom application since this application is not the first one filed.’

However, if the later application contains additional subject matter, a claim specifically limited to that additional disclosure may be entitled to the priority date of the later foreign application.

If you fail to make a timely priority claim or submit a certified copy of the foreign application within the required time period, the following may occur:

• The right of priority may be considered waived
• The effective filing date of your application may be the actual U.S. filing date, not the foreign filing date
• Intervening prior art may be applicable against your application

However, 37 CFR 1.55(e) provides for acceptance of a delayed priority claim if:

• The claim is filed within the pendency of the application
• A petition is filed with the delayed claim
• The delay was unintentional
• The required petition fee is paid

Similarly, 37 CFR 1.55(f) allows for late submission of a certified copy with a petition showing good and sufficient cause for the delay and payment of a fee. It’s always best to make priority claims and submit certified copies timely to avoid potential issues.

To claim foreign priority in a U.S. application, you must file a claim for priority and submit a certified copy of the foreign application. MPEP 213.04 states: ‘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.’

For applications filed on or after September 16, 2012, the priority claim must be presented in an Application Data Sheet (ADS). The certified copy must be filed within the later of 4 months from the actual filing date or 16 months from the foreign filing date, with some exceptions.

For more information on certified copy, visit: certified copy.

For more information on foreign priority, visit: foreign priority.

To claim foreign priority in a U.S. patent application, several requirements must be met as outlined in MPEP 213. These include:

• Timely filing: The U.S. application must be filed within 12 months of the foreign application’s filing date (6 months for design patents)
• Proper claim: The priority claim must be made in an application data sheet (ADS) or in the first sentence of the specification
• Certified copy: A certified copy of the foreign application must be filed within the later of 4 months from the U.S. filing date or 16 months from the foreign filing date
• English translation: If the foreign application is not in English, a translation may be required

As stated in MPEP 213, “The claim for priority must be presented in an application data sheet (37 CFR 1.76(b)(6)) or the specification must contain or be amended to contain a specific reference to the prior foreign application.” Failure to meet these requirements may result in the loss of the priority claim.

How does WTO membership affect foreign priority rights?

World Trade Organization (WTO) membership has significant implications for foreign priority rights in patent applications:

• WTO member countries are treated as Paris Convention countries for priority purposes.
• Applicants from WTO member countries can claim priority in the U.S., even if the country is not a Paris Convention signatory.
• The same 12-month priority period applies to applications from WTO member countries.
• WTO membership expands the pool of countries eligible for foreign priority claims.

MPEP 213.01 states: “A foreign application filed in a WTO member country on or after the date on which the country becomes a WTO member country is also entitled to the right of priority.” This provision ensures broader international protection opportunities for inventors and applicants.

The USPTO determines if a foreign country qualifies for priority rights based on specific criteria outlined in the MPEP. According to MPEP 213.01:

The right of priority is recognized only if the foreign country in which the original application was filed is recognized at the time of filing the application in the United States.

The USPTO considers several factors:

• The country must be a member of the Paris Convention for the Protection of Industrial Property or have a bilateral agreement with the United States.
• The country must grant similar priority rights to U.S. citizens.
• The country must be recognized by the U.S. Department of State.

The USPTO maintains a list of recognized countries and regional patent offices in MPEP 213.01, which is updated periodically to reflect changes in international relations and treaty memberships.

The right of priority for international applications filed under the Patent Cooperation Treaty (PCT) operates similarly to national applications, but with some specific provisions and requirements set by the PCT system.

According to MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”

Key points about priority in PCT applications include:

• The priority claim must be made in the PCT Request form or through a later correction.
• The applicant must file a certified copy of the priority document with the International Bureau within 16 months from the priority date, unless it was previously filed with the receiving Office.
• If the priority document is issued by the receiving Office, the applicant can request that Office to prepare and transmit the document to the International Bureau.
• The International Bureau will make the priority document available to designated Offices.
• For U.S. national stage entry, if the certified copy was submitted during the international phase, it generally satisfies the requirement for the U.S. application.

The MPEP further notes: “If, however, the International Bureau is unable to forward a copy of the certified priority document because the applicant failed to submit a certified copy of the foreign priority document during the international phase, the applicant will need to provide a certified copy of the priority document or have the Office retrieve the priority application in accordance with the priority document exchange program during the national stage to fulfill the requirements of 37 CFR 1.55.”

For more information on certified copy, visit: certified copy.

The right of priority under 35 U.S.C. 386(a) and 386(b) applies to different types of applications. According to MPEP 213.07:

Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.

This means that 35 U.S.C. 386(a) allows a nonprovisional application to claim priority based on a prior international design application.

On the other hand, 35 U.S.C. 386(b) applies differently:

Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.

Thus, 35 U.S.C. 386(b) allows an international design application designating the United States to claim priority based on various types of prior applications.

The key differences are:

• 386(a) applies to nonprovisional applications claiming priority to international design applications.
• 386(b) applies to international design applications claiming priority to foreign applications, PCT applications, or other international design applications.

For more information on nonprovisional application, visit: nonprovisional application.

For more information on right of priority, visit: right of priority.

The Patent Cooperation Treaty (PCT) system interacts with foreign priority claims in several important ways:

1. Priority claims in PCT applications:
– PCT applications can claim priority to earlier foreign applications under the Paris Convention.
– The priority period is 12 months from the earliest priority date.

2. PCT as a basis for priority:
– A PCT application can serve as the basis for a priority claim in a later-filed national or regional application.

3. Effect on time limits:
– The 30-month time limit for entering the national phase is calculated from the priority date (if claimed) or the PCT filing date if no priority is claimed.

4. Restoration of priority rights:
– The PCT system allows for restoration of priority rights if an international application is filed within 14 months of the priority date and the delay was unintentional.

5. Certified copies:
– The PCT system has provisions for providing certified copies of priority documents to designated offices.

As stated in MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”

The PCT system provides a streamlined process for seeking patent protection internationally while preserving priority rights, but applicants must be aware of the specific requirements and time limits within the PCT system.

The Patent Cooperation Treaty (PCT) interacts with foreign priority claims as outlined in MPEP 213. The PCT allows applicants to file a single international patent application that can later enter the national phase in multiple countries.

Key points regarding PCT and foreign priority:

• PCT applications can claim priority from earlier national or regional applications
• The priority period for PCT applications is also 12 months from the earliest priority date
• PCT applications themselves can serve as the basis for priority claims in subsequent national or regional applications

As stated in MPEP 213, “U.S. national applications may claim priority to an international application (PCT) filed in a PCT Receiving Office other than the United States Receiving Office.” This demonstrates the flexibility of the PCT system in international patent protection strategies.

Taiwan’s unique political status has implications for patent priority claims in US applications. According to MPEP 213.01:

‘Applicants from Taiwan may claim priority under 35 U.S.C. 119(a)-(d) to applications filed in Taiwan which are filed by or on behalf of the governing authority on Taiwan.’

This special provision allows Taiwanese applicants to claim priority despite Taiwan not being officially recognized as a sovereign state by the United States. The MPEP further clarifies:

Applications from Taiwan must meet the following criteria to be eligible for priority claims:

• The application must be filed by or on behalf of the governing authority on Taiwan
• The priority claim must be made in accordance with the standard procedures outlined in 35 U.S.C. 119(a)-(d)

This arrangement ensures that inventors and companies in Taiwan can participate in the international patent system and maintain priority rights for their inventions when seeking protection in the United States.

Claiming priority for international design applications has some specific provisions, particularly when the application designates the United States. These provisions are outlined in the MPEP and relevant regulations.

According to MPEP 213.07: “Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.”

Key points about priority in international design applications include:

• The right of priority under 35 U.S.C. 386(a) or (b) applies only to applications filed on or after May 13, 2015.
• For nonprovisional international design applications, the priority claim must be presented in an application data sheet during the pendency of the application, unless made in accordance with the Hague Agreement and Regulations.
• The certified copy of the priority document must be furnished within the time period specified in 37 CFR 1.55(g).
• An international design application designating the U.S. can claim priority to a prior foreign application, PCT application, or another international design application.

The MPEP also notes: “See MPEP § 2920.05(d) for additional information pertaining to the right of priority based upon an international design application.”

These provisions ensure that design patent applicants can properly claim priority to earlier filed applications in the context of the international design registration system.

For more information on design patent, visit: design patent.

For more information on Hague Agreement, visit: Hague Agreement.

Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.

For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.

For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.

It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.

Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.

Claiming foreign priority can significantly affect the prior art date in your application:

• For applications subject to pre-AIA law, the foreign priority date becomes the effective U.S. filing date for prior art purposes under 35 U.S.C. 102(a), (b), and (d)
• For applications subject to AIA law, the foreign priority date is treated as the effective filing date for prior art purposes under 35 U.S.C. 102(a)(1) and (a)(2)

This means that intervening disclosures between your foreign filing date and your U.S. filing date may not be considered prior art against your application. However, it’s important to note that the claimed subject matter must be fully supported by the foreign application to get the benefit of its filing date. Additionally, the priority claim must be proper and timely made for this benefit to apply.

35 U.S.C. 365 addresses the right of priority for international applications in two key aspects:

1. National applications based on international applications
2. International applications based on foreign applications

The MPEP states:

“35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States.”

“35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application.”

These provisions ensure that applicants can claim priority based on international applications, enhancing the flexibility of the international patent system.

Priority to an international design application can be claimed in a U.S. nonprovisional application or in another international design application designating the U.S. MPEP 213.07 states: ‘Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.’

The priority claim should be made in an Application Data Sheet (ADS) for nonprovisional applications. For international design applications designating the U.S., the priority claim can be made in accordance with the Hague Agreement and Regulations.

For more information on Hague Agreement, visit: Hague Agreement.

Claiming priority to a provisional application is different from claiming foreign priority. To claim the benefit of a provisional application in a later-filed nonprovisional application:

• The nonprovisional must be filed within 12 months of the provisional filing date
• A specific reference to the provisional application must be made in an application data sheet
• The provisional and nonprovisional must name at least one common inventor
• The claimed subject matter must be supported by the provisional application

This is known as a domestic benefit claim under 35 U.S.C. 119(e), rather than a foreign priority claim under 35 U.S.C. 119(a)-(d). The requirements are specified in 37 CFR 1.78 rather than 37 CFR 1.55.

Claiming priority to a PCT international application can be done in two ways:

1. In a U.S. national stage application under 35 U.S.C. 371:
   • The priority claim is made in the PCT application
   • No further action is needed when entering the national stage
2. In a U.S. nonprovisional application under 35 U.S.C. 111(a):
   • File within 12 months of the PCT filing date
   • Make the priority claim in an application data sheet
   • Provide a certified copy of the PCT application (unless already filed with the PCT)

In both cases, the PCT application must designate the United States. The specific requirements are detailed in 37 CFR 1.55(d)(2) and (f)(2) for national stage applications, and 37 CFR 1.55(d)(1) and (f)(1) for applications under 35 U.S.C. 111(a).

For international applications entering the U.S. national stage under 35 U.S.C. 371, the priority claim must be made within the time limit set by the PCT and its regulations. MPEP 213.06 states: ‘In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made and a certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT.’

If the priority claim was properly made during the international phase, it’s generally not necessary to repeat it upon national stage entry. However, the certified copy of the priority document must be furnished if not previously submitted to the International Bureau or the USPTO.

For more information on national stage application, visit: national stage application.

To claim foreign priority in a U.S. patent application, you must:

1. File the U.S. application within 12 months (6 months for design applications) of the foreign filing date.
2. Submit a claim for priority identifying the foreign application.
3. File a certified copy of the foreign application.

For applications filed on or after September 16, 2012, 37 CFR 1.55(d)(1) requires that the claim for priority be presented in an application data sheet. The claim must identify the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

A certified copy of the foreign application must also be filed within a specified time period, usually within the later of 4 months from the actual U.S. filing date or 16 months from the foreign filing date.

An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.

According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”

The petition to restore the right of priority must include:

• The priority claim identifying the prior foreign application
• The petition fee
• A statement that the delay in filing was unintentional

The USPTO may require additional information to establish that the delay was unintentional.

For more information on foreign priority, visit: foreign priority.

For more information on priority restoration, visit: priority restoration.

For more information on unintentional delay, visit: unintentional delay.

Yes, the right of priority can be restored if the U.S. application is filed after the 12-month priority period (or 6-month period for design applications), but within 2 months of the expiration of the priority period, if the delay was unintentional.

37 CFR 1.55(c) states: “If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional.”

To restore the right of priority, the applicant must file a petition including:
1. The priority claim
2. The petition fee
3. A statement that the delay was unintentional

The USPTO may require additional information to determine if the delay was truly unintentional.

Yes, applicants can claim priority under 35 U.S.C. 119(a)-(d) based on applications filed in certain foreign regional patent offices. The MPEP states:

“In addition to the list of recognized countries set forth in subsection I, above, applicants may claim priority under 35 U.S.C. 119(a)-(d) to applications filed in foreign regional patent offices having member states who are members of the Paris Convention.”

The recognized regional patent offices include:

• African Regional Intellectual Property Organization (ARIPO)
• Eurasian Patent Office (EAPO)
• European Patent Office (EPO)
• Gulf Cooperation Council (GCC) Patent Office
• African Intellectual Property Organization (OAPI)

These regional patent offices allow applicants to file a single application that can have effect in multiple member states, streamlining the international patent application process.

Yes, it is possible to restore the right of priority if you miss the 12-month filing deadline (6 months for design applications). As provided in 37 CFR 1.55(c), if the subsequent application is filed within two months from the expiration of the priority period, the right of priority may be restored upon petition. The petition must include:

• The priority claim (unless previously submitted)
• The petition fee
• A statement that the delay in filing was unintentional

The Director may require additional information where there is a question whether the delay was unintentional. Note that while this allows for a valid priority claim, it does not overcome potential prior art issues under pre-AIA 35 U.S.C. 102(b) or (d) in applications subject to pre-AIA law.

Yes, it is possible to claim priority to multiple foreign applications in a U.S. patent application, provided certain conditions are met:

• Each foreign application must independently meet the requirements for a priority claim
• The U.S. application must be filed within 12 months of the earliest filed foreign application
• The claimed subject matter must be supported by each application for which priority is claimed

When claiming multiple priorities, the U.S. application gets the benefit of each prior application only for the subject matter that it supports. This allows applicants to combine priority claims to protect inventions that were developed and disclosed progressively over time in different countries.

Yes, under certain conditions, an applicant can claim priority based on an application for an inventor’s certificate. MPEP 213.05 explains: ‘An inventor’s certificate may form the basis for rights of priority under 35 U.S.C. 119(d) only when the country in which it is filed gives to applicants, at their discretion, the right to apply, on the same invention, either for a patent or for an inventor’s certificate.’

To claim priority to an inventor’s certificate, the applicant must file an affidavit or declaration stating that they had the option to file for either a patent or an inventor’s certificate in the foreign country.

For more information on foreign priority, visit: foreign priority.

Yes, a U.S. applicant can claim priority from a provisional application filed in a foreign country, provided certain conditions are met. The MPEP 213 states:

An applicant may claim the right of priority based on a prior foreign application under the Paris Convention and 35 U.S.C. 119(a)-(d) whether the foreign application is an application for a patent or for the registration of a utility model or an industrial design.

Key points to consider:

• The foreign country must be a recognized country or regional patent office as listed in MPEP 213.01.
• The provisional application must be the first filing of the invention in any country.
• The U.S. application must be filed within 12 months of the foreign provisional filing date.
• The applicant must comply with all requirements for claiming priority, including submitting a certified copy of the foreign application.

It’s important to note that not all countries have provisional application systems, so the term ‘provisional’ may have different meanings in different jurisdictions. Always consult with a patent attorney or agent for specific advice on international priority claims.

The MPEP provides a table of states (countries) for which the right of priority under 35 U.S.C. 119(a)-(d) is recognized. These countries fall into three categories:

• Parties to the Patent Cooperation Treaty (PCT)
• Parties to the Paris Convention for the Protection of Industrial Property
• Members of the World Trade Organization (WTO)

The MPEP states: “Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a)-(d) has been recognized.”

For the most current list of recognized countries, refer to the WIPO website at www.wipo.int/pct/en/paris_wto_pct.html.

The provisions of 35 U.S.C. 386(a) and (b) became effective for certain types of applications filed on or after May 13, 2015. According to MPEP 213.07:

The provisions of 35 U.S.C. 386(a) and (b) apply to nonprovisional applications, international applications (PCT) and international design applications filed on or after May 13, 2015, and patents issued therefrom. See 37 CFR 1.55(o).

This means that the right of priority under these sections is only applicable to:

• Nonprovisional applications
• International applications (PCT)
• International design applications

These applications must be filed on or after May 13, 2015, to be eligible for the priority rights under 35 U.S.C. 386(a) and (b). The same applies to patents issued from such applications.

For more information on 35 U.S.C. 386, visit: 35 U.S.C. 386.

For more information on effective date, visit: effective date.

For more information on nonprovisional application, visit: nonprovisional application.

An international design application designating the United States can claim priority based on several types of prior applications. According to MPEP 213.07:

Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.

The types of prior applications that can be used for claiming priority include:

• A prior foreign application
• An international application (PCT) designating at least one country other than the United States
• A prior international design application designating at least one country other than the United States

These priority claims must comply with the conditions and requirements set forth in 35 U.S.C. 119(a)-(d) and 172, as well as the Hague Agreement and its Regulations.

For more information on foreign priority, visit: foreign priority.

For more information on Hague Agreement, visit: Hague Agreement.

For more information on prior applications, visit: prior applications.

The time period for filing a priority claim in an international design application designating the United States depends on whether it’s a nonprovisional international design application or not. According to MPEP 213.07:

In an international design application designating the United States, the claim for priority may be made in accordance with the Hague Agreement and the Hague Agreement Regulations.

For nonprovisional international design applications, the MPEP states:

In a nonprovisional international design application, the priority claim and certified copy must be furnished in accordance with the time period and other conditions set forth in paragraph (g) of this section.

This refers to 37 CFR 1.55(g), which generally requires the priority claim to be filed 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. However, it’s important to consult the specific regulations and the Hague Agreement for precise deadlines and requirements, as they may vary depending on the specific circumstances of the application.

For more information on Hague Agreement, visit: Hague Agreement.

For more information on nonprovisional application, visit: nonprovisional application.

The U.S. nonprovisional application must generally be filed within 12 months of the filing date of the foreign application to claim priority. For design applications, this period is 6 months.

Specifically, 37 CFR 1.55(b) states:

“The nonprovisional application must be: (1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or (2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.”

There are provisions to restore the right of priority if the subsequent application is filed within 2 months after the expiration of the priority period, if the delay was unintentional.

What is the significance of the Paris Convention in foreign priority claims?

The Paris Convention plays a crucial role in foreign priority claims for patent applications. Its significance includes:

• Establishing the right of priority for patent applications among member countries.
• Allowing applicants to file in multiple countries while maintaining the original filing date.
• Providing a 12-month priority period for utility patents (6 months for design patents).
• Ensuring equal treatment of foreign and domestic applicants in member countries.

According to MPEP 213: “The right of priority is defined in Article 4 of the Paris Convention for the Protection of Industrial Property and is based on the first filing in a Paris Convention country.” This convention facilitates international patent protection by allowing inventors to secure priority dates across multiple jurisdictions.

Regional patent offices play a crucial role in the international patent system, particularly for priority claims. MPEP 213.01 recognizes several regional patent offices whose applications can serve as the basis for priority claims in the United States. These include:

• European Patent Office (EPO)
• Eurasian Patent Office (EAPO)
• African Intellectual Property Organization (OAPI)
• African Regional Intellectual Property Organization (ARIPO)

The significance of these regional offices is explained in MPEP 213.01:

‘The United States will recognize claims for right of priority based on applications filed under such multilateral international agreements as the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT).’

This recognition allows applicants to file a single application with a regional patent office and still maintain priority rights in the United States. It streamlines the international patent application process and provides more flexibility for inventors seeking protection in multiple countries.

35 U.S.C. 386 establishes the right of priority for international design applications. It addresses two key scenarios:

1. National applications claiming priority from international design applications
2. International design applications claiming priority from prior foreign applications

The MPEP explains:

“Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.”

“Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.”

These provisions apply to applications filed on or after May 13, 2015, and patents issued from such applications.

The right of priority allows an applicant who has filed a patent application in a foreign country to claim priority to that earlier filing date when filing a subsequent U.S. application for the same invention. This right is established by 35 U.S.C. 119 and gives the U.S. application the benefit of the earlier foreign filing date, as long as certain conditions are met.

Specifically, 35 U.S.C. 119(a) states: “An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within 12 months from the earliest date on which such foreign application was filed.”

For a valid foreign priority claim, the U.S. application and the foreign application must name the same inventor or have at least one joint inventor in common. This requirement ensures that the right of priority is properly linked between the applications.

As stated in MPEP 213.02: “Pursuant to 35 U.S.C. 119(a), the foreign application must have been filed by the same applicant as the applicant in the United States, or by applicant’s legal representatives or assigns. Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”

The MPEP further clarifies: “Joint inventors A and B in a nonprovisional application filed in the United States Patent and Trademark Office may properly claim the benefit of an application filed in a foreign country by A and another application filed in a foreign country by B, i.e., A and B may each claim the benefit of their foreign filed applications.”

This requirement ensures that the priority right is properly linked to the inventive entity responsible for the invention in both the foreign and U.S. applications.

For more information on foreign priority, visit: foreign priority.

For more information on joint inventors, visit: joint inventors.

For a valid foreign priority claim, the U.S. application must have at least one common inventor with the foreign application. This requirement ensures that the right of priority is only available to the actual inventors or their legal representatives.

As stated in MPEP 213.02: “Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”

This means that:
1. A sole inventor in the U.S. can claim priority to a foreign application where they are the sole inventor or one of joint inventors.
2. Joint inventors in the U.S. can claim priority to a foreign application filed by any one or more of them.
3. A U.S. application cannot claim priority to a foreign application with completely different inventors.

It’s important to note that while the inventorship must overlap, it doesn’t have to be identical between the U.S. and foreign applications.

When claiming foreign priority, applicants are generally required to file a certified copy of the foreign application within a specified time period. The requirements and deadlines for filing the certified copy depend on the type of application and the circumstances of the filing.

According to MPEP 213.04: “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.”

Key points about the certified copy requirement include:

• The certified copy must be filed within the pendency of the application, unless filed with a petition.
• For applications filed under 35 U.S.C. 111(a), the certified copy must typically be filed within the later of four months from the actual filing date or sixteen months from the filing date of the prior foreign application.
• For national stage applications under 35 U.S.C. 371, the certified copy must be filed within the time limit set forth in the PCT and the Regulations under the PCT.
• If the certified copy is not filed within the required time period, it must be accompanied by a petition and fee, along with a showing of good and sufficient cause for the delay.
• In some cases, the requirement may be satisfied through the priority document exchange program or by identifying a previously filed application containing the certified copy.

The MPEP also notes: “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.”

For more information on certified copy, visit: certified copy.

For more information on filing requirements, visit: filing requirements.

For more information on foreign application, visit: foreign application.

The priority document exchange program allows the USPTO to obtain priority documents electronically from other participating foreign intellectual property offices, eliminating the need for applicants to submit certified copies themselves. As stated in 37 CFR 1.55(i), the requirement to file a certified copy is considered satisfied if:

• The foreign application was filed in a participating foreign intellectual property office
• The claim for priority includes the necessary information for retrieval
• The copy is received by the USPTO from the participating office

Applicants must still make the priority claim within the required time period. This program simplifies the process of submitting priority documents for many applicants.

The Paris Convention for the Protection of Industrial Property is an international agreement that establishes key principles for intellectual property protection, including patents. It was first signed in 1883 and has been revised several times since then.

The Convention is significant in patent law because it established the right of priority, which allows patent applicants to claim priority based on an earlier filing in any country that is a member of the Paris Convention. This right is referenced in MPEP 213, which states:

‘The right of priority is defined in 35 U.S.C. 119(a)… Under this statute, an applicant who has filed a first foreign application is entitled to claim the benefit of the filing date of the first foreign application in a subsequent U.S. national patent application…’

This provision helps inventors protect their inventions internationally by giving them a grace period to file in multiple countries while maintaining the priority date of their first filing.

The Paris Convention is an international treaty that establishes priority rights for patent applications. According to MPEP 213, “The right of priority is defined in 35 U.S.C. 119(a)” and is based on this convention. It allows inventors who file a patent application in one member country to claim priority for up to 12 months when filing in other member countries.

Key points of the Paris Convention include:

• Establishing a 12-month priority period for patents
• Allowing applicants to claim priority based on earlier filings in member countries
• Ensuring equal treatment of foreign and domestic applicants in member countries

While restoration of the right of priority allows for valid priority claims up to 14 months from the earliest priority date (or 8 months for design applications), pre-AIA applications are still subject to the 12-month statutory bar under pre-AIA 35 U.S.C. 102(b) and (d). MPEP 213.03 clarifies: ‘It should be noted that although an application may now validly claim priority under 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) or (b), or 386(a) or (b) to a foreign application filed up to fourteen months earlier (or eight months earlier in the case of a design application) in view of the restoration provision of 37 CFR 1.55(c), an application subject to examination under pre-AIA first to invent laws (rather than the first inventor to file provisions of the AIA) would still be subject to the 12-month statutory time periods in pre-AIA 35 U.S.C. 102(b) and (d) which are measured from the U.S. filing date.’

This means that while the priority claim may be valid, the earlier filed foreign application could still be used as prior art against a pre-AIA application if it was published more than one year before the U.S. filing date.

For more information on pre-AIA, visit: pre-AIA.

A proper foreign priority claim can give a U.S. patent application the benefit of the earlier foreign filing date as its effective filing date for prior art purposes. This can be crucial for establishing novelty and non-obviousness of the invention.

35 U.S.C. 119(a) states that a U.S. application properly claiming foreign priority “shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country.”

This means that intervening prior art published after the foreign filing date but before the U.S. filing date may not be used against the application if the priority claim is valid. However, it’s important to note that the actual U.S. filing date is still used for other purposes, such as calculating patent term.

Claiming foreign priority under 35 U.S.C. 119(a)-(d) and claiming benefit of a U.S. provisional application under 35 U.S.C. 119(e) are similar in some ways but have important differences:

1. Time limit:
– Foreign priority: Must be claimed within 12 months (6 months for design applications)
– Provisional: Must be claimed within 12 months

2. Effective filing date:
– Both can provide an earlier effective filing date for prior art purposes

3. Patent term:
– Foreign priority: Does not affect patent term
– Provisional: The 12-month period counts towards the 20-year patent term

4. Disclosure requirements:
– Both require the earlier application to provide adequate support for the claimed invention

5. Formalities:
– Foreign priority: Requires a certified copy of the foreign application
– Provisional: No certified copy required, but the provisional must be in English

6. Inventorship:
– Foreign priority: Requires at least one common inventor
– Provisional: Requires at least one common inventor

7. International effect:
– Foreign priority: Recognized in other Paris Convention countries
– Provisional: May not be recognized in some foreign jurisdictions

Both types of priority claims can be valuable for establishing an earlier effective filing date, but they have different requirements and effects that should be considered when developing a patent strategy.

Foreign priority claims and domestic benefit claims are two different ways of claiming the benefit of an earlier filing date:

• Foreign priority claims (under 35 U.S.C. 119(a)-(d)) are based on earlier applications filed in foreign countries
• Domestic benefit claims can be to earlier U.S. provisional (35 U.S.C. 119(e)) or nonprovisional (35 U.S.C. 120) applications

Key differences include:

• Time limits: 12 months for foreign priority, 12 months for provisionals, no limit for nonprovisionals
• Required documents: Certified copy needed for foreign priority, not for domestic benefit
• Effect: Foreign priority is mainly for prior art purposes, domestic benefit can confer actual pendency benefits

Both types of claims must be properly made to be effective, but the specific requirements and effects differ.

In the context of foreign priority claims, there’s an important distinction between a ‘country’ and a ‘regional patent office’:

• Country: A sovereign nation that has its own patent system and can issue patents directly.
• Regional Patent Office: An intergovernmental organization that processes patent applications on behalf of multiple member countries.

The MPEP states: The right of priority may be based upon an application filed in a foreign country or in a regional patent office. (MPEP 213)

Regional patent offices, such as the European Patent Office (EPO) or the African Regional Intellectual Property Organization (ARIPO), allow applicants to file a single application that can potentially lead to patent protection in multiple member countries.

To make a proper priority claim in a U.S. patent application, the applicant must provide specific information about the foreign application and file the claim within the required time period. The requirements differ slightly depending on the type of application.

For applications filed on or after September 16, 2012, under 35 U.S.C. 111(a), MPEP 213.02 states: “the claim for priority must be presented in an application data sheet.” The claim must include:

• The application number of the foreign application
• The country or intellectual property authority
• The day, month, and year of filing

For international applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set forth in the PCT and the Regulations under the PCT.

The MPEP further notes: “For applications filed prior to September 16, 2012, the claim to priority need be in no special form, and may be made by a person authorized to sign correspondence under 37 CFR 1.33(b). No special language is required in making the claim for priority, and any expression which can be reasonably interpreted as claiming the benefit of the foreign application is accepted as the claim for priority.”

It’s important to file the priority claim within the specified time limits to ensure it is considered valid and effective.

For more information on application data sheet, visit: application data sheet.

For more information on foreign application, visit: foreign application.

A certified copy of a foreign application is an official copy of the foreign patent application, certified by the patent office where it was filed. It is required to perfect a claim of foreign priority in a U.S. patent application.

According to 37 CFR 1.55(f), for applications filed on or after March 16, 2013:

“A certified copy of the foreign application must be filed 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, in an original application under 35 U.S.C. 111(a) filed on or after March 16, 2013, except as provided in paragraphs (h), (i), and (j) of this section.”

There are exceptions to this requirement, such as when the foreign application was filed in a foreign intellectual property office participating in a priority document exchange agreement with the USPTO. In such cases, the applicant can request that the USPTO retrieve the certified copy electronically.

Several international agreements can form the basis for a priority claim in patent applications. The MPEP mentions:

• The Paris Convention for the Protection of Industrial Property
• The Hague Agreement Concerning the International Registration of Industrial Designs
• The Benelux Designs Convention
• The Convention on the Grant of European Patents (European Patent Office)
• The Patent Cooperation Treaty (PCT)
• The International Convention for the Protection of New Varieties of Plants (UPOV)

The MPEP states: “Under Article 4A of the Paris Convention for the Protection of Industrial Property, a right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design filed under the national law of a foreign country adhering to the Convention, or on a foreign application filed under a bilateral or multilateral treaty concluded between two or more such countries.”

These agreements facilitate the international protection of intellectual property rights and enable applicants to claim priority based on applications filed in various jurisdictions.

When multiple foreign applications are filed for the same invention, the right of priority is generally based on the earliest filed application. MPEP 213.03 explains: ‘The twelve months is from earliest foreign filing except as provided in 35 U.S.C. 119(c). If an inventor has filed an application in France on October 4, 1981, and an identical application in the United Kingdom on March 3, 1982, and then files in the United States on February 2, 1983, the inventor is not entitled to the right of priority at all; the inventor would not be entitled to the benefit of the date of the French application since this application was filed more than twelve months before the U.S. application, and the inventor would not be entitled to the benefit of the date of the United Kingdom application since this application is not the first one filed.’

However, if the later application contains additional subject matter, a claim specifically limited to that additional disclosure may be entitled to the priority date of the later foreign application.

If you fail to make a timely priority claim or submit a certified copy of the foreign application within the required time period, the following may occur:

• The right of priority may be considered waived
• The effective filing date of your application may be the actual U.S. filing date, not the foreign filing date
• Intervening prior art may be applicable against your application

However, 37 CFR 1.55(e) provides for acceptance of a delayed priority claim if:

• The claim is filed within the pendency of the application
• A petition is filed with the delayed claim
• The delay was unintentional
• The required petition fee is paid

Similarly, 37 CFR 1.55(f) allows for late submission of a certified copy with a petition showing good and sufficient cause for the delay and payment of a fee. It’s always best to make priority claims and submit certified copies timely to avoid potential issues.

To claim foreign priority in a U.S. application, you must file a claim for priority and submit a certified copy of the foreign application. MPEP 213.04 states: ‘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.’

For applications filed on or after September 16, 2012, the priority claim must be presented in an Application Data Sheet (ADS). The certified copy must be filed within the later of 4 months from the actual filing date or 16 months from the foreign filing date, with some exceptions.

For more information on certified copy, visit: certified copy.

For more information on foreign priority, visit: foreign priority.

To claim foreign priority in a U.S. patent application, several requirements must be met as outlined in MPEP 213. These include:

• Timely filing: The U.S. application must be filed within 12 months of the foreign application’s filing date (6 months for design patents)
• Proper claim: The priority claim must be made in an application data sheet (ADS) or in the first sentence of the specification
• Certified copy: A certified copy of the foreign application must be filed within the later of 4 months from the U.S. filing date or 16 months from the foreign filing date
• English translation: If the foreign application is not in English, a translation may be required

As stated in MPEP 213, “The claim for priority must be presented in an application data sheet (37 CFR 1.76(b)(6)) or the specification must contain or be amended to contain a specific reference to the prior foreign application.” Failure to meet these requirements may result in the loss of the priority claim.

How does WTO membership affect foreign priority rights?

World Trade Organization (WTO) membership has significant implications for foreign priority rights in patent applications:

• WTO member countries are treated as Paris Convention countries for priority purposes.
• Applicants from WTO member countries can claim priority in the U.S., even if the country is not a Paris Convention signatory.
• The same 12-month priority period applies to applications from WTO member countries.
• WTO membership expands the pool of countries eligible for foreign priority claims.

MPEP 213.01 states: “A foreign application filed in a WTO member country on or after the date on which the country becomes a WTO member country is also entitled to the right of priority.” This provision ensures broader international protection opportunities for inventors and applicants.

The USPTO determines if a foreign country qualifies for priority rights based on specific criteria outlined in the MPEP. According to MPEP 213.01:

The right of priority is recognized only if the foreign country in which the original application was filed is recognized at the time of filing the application in the United States.

The USPTO considers several factors:

• The country must be a member of the Paris Convention for the Protection of Industrial Property or have a bilateral agreement with the United States.
• The country must grant similar priority rights to U.S. citizens.
• The country must be recognized by the U.S. Department of State.

The USPTO maintains a list of recognized countries and regional patent offices in MPEP 213.01, which is updated periodically to reflect changes in international relations and treaty memberships.

The right of priority for international applications filed under the Patent Cooperation Treaty (PCT) operates similarly to national applications, but with some specific provisions and requirements set by the PCT system.

According to MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”

Key points about priority in PCT applications include:

• The priority claim must be made in the PCT Request form or through a later correction.
• The applicant must file a certified copy of the priority document with the International Bureau within 16 months from the priority date, unless it was previously filed with the receiving Office.
• If the priority document is issued by the receiving Office, the applicant can request that Office to prepare and transmit the document to the International Bureau.
• The International Bureau will make the priority document available to designated Offices.
• For U.S. national stage entry, if the certified copy was submitted during the international phase, it generally satisfies the requirement for the U.S. application.

The MPEP further notes: “If, however, the International Bureau is unable to forward a copy of the certified priority document because the applicant failed to submit a certified copy of the foreign priority document during the international phase, the applicant will need to provide a certified copy of the priority document or have the Office retrieve the priority application in accordance with the priority document exchange program during the national stage to fulfill the requirements of 37 CFR 1.55.”

For more information on certified copy, visit: certified copy.

The right of priority under 35 U.S.C. 386(a) and 386(b) applies to different types of applications. According to MPEP 213.07:

Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.

This means that 35 U.S.C. 386(a) allows a nonprovisional application to claim priority based on a prior international design application.

On the other hand, 35 U.S.C. 386(b) applies differently:

Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.

Thus, 35 U.S.C. 386(b) allows an international design application designating the United States to claim priority based on various types of prior applications.

The key differences are:

• 386(a) applies to nonprovisional applications claiming priority to international design applications.
• 386(b) applies to international design applications claiming priority to foreign applications, PCT applications, or other international design applications.

For more information on nonprovisional application, visit: nonprovisional application.

For more information on right of priority, visit: right of priority.

The Patent Cooperation Treaty (PCT) system interacts with foreign priority claims in several important ways:

1. Priority claims in PCT applications:
– PCT applications can claim priority to earlier foreign applications under the Paris Convention.
– The priority period is 12 months from the earliest priority date.

2. PCT as a basis for priority:
– A PCT application can serve as the basis for a priority claim in a later-filed national or regional application.

3. Effect on time limits:
– The 30-month time limit for entering the national phase is calculated from the priority date (if claimed) or the PCT filing date if no priority is claimed.

4. Restoration of priority rights:
– The PCT system allows for restoration of priority rights if an international application is filed within 14 months of the priority date and the delay was unintentional.

5. Certified copies:
– The PCT system has provisions for providing certified copies of priority documents to designated offices.

As stated in MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”

The PCT system provides a streamlined process for seeking patent protection internationally while preserving priority rights, but applicants must be aware of the specific requirements and time limits within the PCT system.

The Patent Cooperation Treaty (PCT) interacts with foreign priority claims as outlined in MPEP 213. The PCT allows applicants to file a single international patent application that can later enter the national phase in multiple countries.

Key points regarding PCT and foreign priority:

• PCT applications can claim priority from earlier national or regional applications
• The priority period for PCT applications is also 12 months from the earliest priority date
• PCT applications themselves can serve as the basis for priority claims in subsequent national or regional applications

As stated in MPEP 213, “U.S. national applications may claim priority to an international application (PCT) filed in a PCT Receiving Office other than the United States Receiving Office.” This demonstrates the flexibility of the PCT system in international patent protection strategies.

Taiwan’s unique political status has implications for patent priority claims in US applications. According to MPEP 213.01:

‘Applicants from Taiwan may claim priority under 35 U.S.C. 119(a)-(d) to applications filed in Taiwan which are filed by or on behalf of the governing authority on Taiwan.’

This special provision allows Taiwanese applicants to claim priority despite Taiwan not being officially recognized as a sovereign state by the United States. The MPEP further clarifies:

Applications from Taiwan must meet the following criteria to be eligible for priority claims:

• The application must be filed by or on behalf of the governing authority on Taiwan
• The priority claim must be made in accordance with the standard procedures outlined in 35 U.S.C. 119(a)-(d)

This arrangement ensures that inventors and companies in Taiwan can participate in the international patent system and maintain priority rights for their inventions when seeking protection in the United States.

Claiming priority for international design applications has some specific provisions, particularly when the application designates the United States. These provisions are outlined in the MPEP and relevant regulations.

According to MPEP 213.07: “Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.”

Key points about priority in international design applications include:

• The right of priority under 35 U.S.C. 386(a) or (b) applies only to applications filed on or after May 13, 2015.
• For nonprovisional international design applications, the priority claim must be presented in an application data sheet during the pendency of the application, unless made in accordance with the Hague Agreement and Regulations.
• The certified copy of the priority document must be furnished within the time period specified in 37 CFR 1.55(g).
• An international design application designating the U.S. can claim priority to a prior foreign application, PCT application, or another international design application.

The MPEP also notes: “See MPEP § 2920.05(d) for additional information pertaining to the right of priority based upon an international design application.”

These provisions ensure that design patent applicants can properly claim priority to earlier filed applications in the context of the international design registration system.

For more information on design patent, visit: design patent.

For more information on Hague Agreement, visit: Hague Agreement.

Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.

For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.

For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.

It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.

Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.

Claiming foreign priority can significantly affect the prior art date in your application:

• For applications subject to pre-AIA law, the foreign priority date becomes the effective U.S. filing date for prior art purposes under 35 U.S.C. 102(a), (b), and (d)
• For applications subject to AIA law, the foreign priority date is treated as the effective filing date for prior art purposes under 35 U.S.C. 102(a)(1) and (a)(2)

This means that intervening disclosures between your foreign filing date and your U.S. filing date may not be considered prior art against your application. However, it’s important to note that the claimed subject matter must be fully supported by the foreign application to get the benefit of its filing date. Additionally, the priority claim must be proper and timely made for this benefit to apply.

35 U.S.C. 365 addresses the right of priority for international applications in two key aspects:

1. National applications based on international applications
2. International applications based on foreign applications

The MPEP states:

“35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States.”

“35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application.”

These provisions ensure that applicants can claim priority based on international applications, enhancing the flexibility of the international patent system.

Priority to an international design application can be claimed in a U.S. nonprovisional application or in another international design application designating the U.S. MPEP 213.07 states: ‘Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.’

The priority claim should be made in an Application Data Sheet (ADS) for nonprovisional applications. For international design applications designating the U.S., the priority claim can be made in accordance with the Hague Agreement and Regulations.

For more information on Hague Agreement, visit: Hague Agreement.

Claiming priority to a provisional application is different from claiming foreign priority. To claim the benefit of a provisional application in a later-filed nonprovisional application:

• The nonprovisional must be filed within 12 months of the provisional filing date
• A specific reference to the provisional application must be made in an application data sheet
• The provisional and nonprovisional must name at least one common inventor
• The claimed subject matter must be supported by the provisional application

This is known as a domestic benefit claim under 35 U.S.C. 119(e), rather than a foreign priority claim under 35 U.S.C. 119(a)-(d). The requirements are specified in 37 CFR 1.78 rather than 37 CFR 1.55.

Claiming priority to a PCT international application can be done in two ways:

1. In a U.S. national stage application under 35 U.S.C. 371:
   • The priority claim is made in the PCT application
   • No further action is needed when entering the national stage
2. In a U.S. nonprovisional application under 35 U.S.C. 111(a):
   • File within 12 months of the PCT filing date
   • Make the priority claim in an application data sheet
   • Provide a certified copy of the PCT application (unless already filed with the PCT)

In both cases, the PCT application must designate the United States. The specific requirements are detailed in 37 CFR 1.55(d)(2) and (f)(2) for national stage applications, and 37 CFR 1.55(d)(1) and (f)(1) for applications under 35 U.S.C. 111(a).

For international applications entering the U.S. national stage under 35 U.S.C. 371, the priority claim must be made within the time limit set by the PCT and its regulations. MPEP 213.06 states: ‘In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made and a certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT.’

If the priority claim was properly made during the international phase, it’s generally not necessary to repeat it upon national stage entry. However, the certified copy of the priority document must be furnished if not previously submitted to the International Bureau or the USPTO.

For more information on national stage application, visit: national stage application.

To claim foreign priority in a U.S. patent application, you must:

1. File the U.S. application within 12 months (6 months for design applications) of the foreign filing date.
2. Submit a claim for priority identifying the foreign application.
3. File a certified copy of the foreign application.

For applications filed on or after September 16, 2012, 37 CFR 1.55(d)(1) requires that the claim for priority be presented in an application data sheet. The claim must identify the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

A certified copy of the foreign application must also be filed within a specified time period, usually within the later of 4 months from the actual U.S. filing date or 16 months from the foreign filing date.

An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.

According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”

The petition to restore the right of priority must include:

• The priority claim identifying the prior foreign application
• The petition fee
• A statement that the delay in filing was unintentional

The USPTO may require additional information to establish that the delay was unintentional.

For more information on foreign priority, visit: foreign priority.

For more information on priority restoration, visit: priority restoration.

For more information on unintentional delay, visit: unintentional delay.

Yes, the right of priority can be restored if the U.S. application is filed after the 12-month priority period (or 6-month period for design applications), but within 2 months of the expiration of the priority period, if the delay was unintentional.

37 CFR 1.55(c) states: “If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional.”

To restore the right of priority, the applicant must file a petition including:
1. The priority claim
2. The petition fee
3. A statement that the delay was unintentional

The USPTO may require additional information to determine if the delay was truly unintentional.

Yes, applicants can claim priority under 35 U.S.C. 119(a)-(d) based on applications filed in certain foreign regional patent offices. The MPEP states:

“In addition to the list of recognized countries set forth in subsection I, above, applicants may claim priority under 35 U.S.C. 119(a)-(d) to applications filed in foreign regional patent offices having member states who are members of the Paris Convention.”

The recognized regional patent offices include:

• African Regional Intellectual Property Organization (ARIPO)
• Eurasian Patent Office (EAPO)
• European Patent Office (EPO)
• Gulf Cooperation Council (GCC) Patent Office
• African Intellectual Property Organization (OAPI)

These regional patent offices allow applicants to file a single application that can have effect in multiple member states, streamlining the international patent application process.

Yes, it is possible to restore the right of priority if you miss the 12-month filing deadline (6 months for design applications). As provided in 37 CFR 1.55(c), if the subsequent application is filed within two months from the expiration of the priority period, the right of priority may be restored upon petition. The petition must include:

• The priority claim (unless previously submitted)
• The petition fee
• A statement that the delay in filing was unintentional

The Director may require additional information where there is a question whether the delay was unintentional. Note that while this allows for a valid priority claim, it does not overcome potential prior art issues under pre-AIA 35 U.S.C. 102(b) or (d) in applications subject to pre-AIA law.

Yes, it is possible to claim priority to multiple foreign applications in a U.S. patent application, provided certain conditions are met:

• Each foreign application must independently meet the requirements for a priority claim
• The U.S. application must be filed within 12 months of the earliest filed foreign application
• The claimed subject matter must be supported by each application for which priority is claimed

When claiming multiple priorities, the U.S. application gets the benefit of each prior application only for the subject matter that it supports. This allows applicants to combine priority claims to protect inventions that were developed and disclosed progressively over time in different countries.

Yes, under certain conditions, an applicant can claim priority based on an application for an inventor’s certificate. MPEP 213.05 explains: ‘An inventor’s certificate may form the basis for rights of priority under 35 U.S.C. 119(d) only when the country in which it is filed gives to applicants, at their discretion, the right to apply, on the same invention, either for a patent or for an inventor’s certificate.’

To claim priority to an inventor’s certificate, the applicant must file an affidavit or declaration stating that they had the option to file for either a patent or an inventor’s certificate in the foreign country.

For more information on foreign priority, visit: foreign priority.

Yes, a U.S. applicant can claim priority from a provisional application filed in a foreign country, provided certain conditions are met. The MPEP 213 states:

An applicant may claim the right of priority based on a prior foreign application under the Paris Convention and 35 U.S.C. 119(a)-(d) whether the foreign application is an application for a patent or for the registration of a utility model or an industrial design.

Key points to consider:

• The foreign country must be a recognized country or regional patent office as listed in MPEP 213.01.
• The provisional application must be the first filing of the invention in any country.
• The U.S. application must be filed within 12 months of the foreign provisional filing date.
• The applicant must comply with all requirements for claiming priority, including submitting a certified copy of the foreign application.

It’s important to note that not all countries have provisional application systems, so the term ‘provisional’ may have different meanings in different jurisdictions. Always consult with a patent attorney or agent for specific advice on international priority claims.