Patent Law FAQ

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.

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.

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).

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 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.

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 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).

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.

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.

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.

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.

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 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).

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.

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.

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.

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.

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 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).

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.

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.

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.

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.

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.