Patent Law FAQ

The location for filing your petition to restore the right of priority depends on the type of application you have. The MPEP provides guidance:

The petition to restore the right of priority must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application.

Additionally, the MPEP specifies the mailing address for such petitions:

The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

Ensure you file the petition in the correct application and send it to the appropriate address to avoid processing delays.

For more information on mailing address, visit: mailing address.

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

What is the significance of the four-month and sixteen-month time periods for filing a priority claim?

The four-month and sixteen-month time periods are crucial deadlines for filing a priority claim in a U.S. patent application. According to MPEP 214.01:

“The claim for priority 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 filed under 35 U.S.C. 111(a).”

These time periods are significant because:

• They provide applicants with a window to properly claim priority to a foreign application.
• The four-month period starts from the U.S. filing date, giving applicants time to prepare and submit the priority claim after filing their U.S. application.
• The sixteen-month period from the foreign filing date ensures that priority claims are made within a reasonable time frame relative to the original foreign filing.
• Filing within these periods allows for the priority claim to be considered timely without requiring additional petitions or fees.

It’s important to note that failing to meet these deadlines may result in the need for a petition to accept an unintentionally delayed priority claim under 37 CFR 1.55(e), which involves additional requirements and fees.

The requirements for filing a foreign priority claim differ for applications filed before and after September 16, 2012. The key difference lies in where the priority claim must be presented:

• For applications filed on or after September 16, 2012: The priority claim must be presented in an Application Data Sheet (ADS). This is specified in 37 CFR 1.55(d)(1): For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, 37 CFR 1.55(d)(1) requires the claim for priority to be presented in an application data sheet.
• For applications filed before September 16, 2012: The priority claim can be presented either in an Application Data Sheet or in the oath or declaration. As stated in the MPEP: For applications filed under 35 U.S.C. 111(a) prior to September 16, 2012, unless provided in an application data sheet, the oath or declaration under 37 CFR 1.63 must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.

Regardless of the filing date, the priority claim must include the same essential information: the application number, country (or intellectual property authority), and filing date (day, month, and year) of the foreign application. The difference is primarily in the document where this information must be presented.

If you miss the deadline for filing a foreign priority claim, you may still have options:

• Unintentional delay: You can file a petition to accept an unintentionally delayed priority claim under 37 CFR 1.55(e). This petition 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.
• Design applications: For design applications, you can file this petition up to the date of payment of the issue fee.

The MPEP states: The Director may accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), or 365(a) or (b) in an application for patent filed on or after November 29, 2000, upon petition pursuant to 37 CFR 1.55(e).

It’s important to note that the petition must include a statement that the entire delay was unintentional, and you may need to provide additional evidence to support this claim.

If you file a U.S. patent application more than 12 months after your foreign filing, your claim for priority based on that foreign application may be denied. The MPEP states:

The claim for priority cannot be based on said application, because the subsequent nonprovisional or international application designating the United States was filed more than twelve months thereafter and no petition under 37 CFR 1.55 or request under PCT Rule 26bis.3 to restore the right of priority has been granted.

However, you may still have options to restore your priority claim under certain circumstances.

For more information on 12-month rule, visit: 12-month rule.

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

A petition to restore the right of priority must include several key elements. The MPEP outlines these requirements:

A petition to restore the right of priority must include: (1) the priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) in an application data sheet, identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing (unless previously submitted); (2) the petition fee set forth in 37 CFR 1.17(m); and (3) a statement that the delay in filing the subsequent application within the twelve-month period was unintentional.

These requirements ensure that the USPTO has all necessary information to consider your petition for priority restoration.

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

For more information on petition fee, visit: petition fee.

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

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

How do I properly identify a foreign application when claiming priority in a U.S. patent application?

When claiming priority to a foreign application in a U.S. patent application, it’s crucial to provide accurate identification information. According to MPEP 214.01, you must include the following details:

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

The MPEP states: ‘The claim for priority must identify the foreign application for which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.’

Additionally, if you’re submitting a certified copy of the foreign application, ensure that it matches the identification information provided in your priority claim. Accurate identification is essential for establishing your priority rights and avoiding potential issues during examination or litigation.

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

1. File the claim within the specified time limit (see previous FAQ for details).
2. Present the claim in an application data sheet (ADS) for applications filed on or after September 16, 2012. For applications filed before this date, the claim can be in the ADS or in the oath/declaration.
3. Identify the foreign application by providing:
• Application number
• Country (or intellectual property authority)
• Filing date (day, month, and year)

This is specified in 37 CFR 1.55(d)(1): The claim for priority must be presented in an application data sheet (§1.76(b)(6)) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

It’s crucial to provide accurate and complete information to ensure your priority claim is properly recorded and considered.

How do I correct an error in my foreign priority claim?

If you need to correct an error in your foreign priority claim, the process depends on the nature of the error and when it’s discovered. According to MPEP 214.01, “Applicant may correct the failure to adequately claim priority to the prior foreign application by amending the specification or submitting a new application data sheet (ADS) identifying the foreign application by application number, country (or intellectual property authority), and filing date.” Here are some key points to remember:

• If the error is discovered within the time period for filing the priority claim, you can simply submit a corrected ADS or amend the specification.
• If the error is discovered after the time period has expired, you may need to file a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim.
• For minor typographical errors, a request for a corrected filing receipt may be sufficient.

Always consult with a patent attorney or agent to determine the best course of action for your specific situation.

Yes, the USPTO may request additional information when considering a petition to restore the right of priority. The MPEP states:

The Director may require additional information where there is a question whether the delay was unintentional.

This means that if the USPTO has doubts about whether the delay in filing was truly unintentional, they may ask for more details or evidence to support your claim. It’s important to be prepared to provide such information if requested to ensure your petition is properly considered.

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

Can I file a priority claim in a continuing application?

Yes, you can file a priority claim in a continuing application, but there are specific requirements and deadlines to consider. According to MPEP 214.01, “In the case of a continuation or divisional application filed under 35 U.S.C. 111(a), the claim for priority must be made during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.” This means that even in a continuing application, you must adhere to the time limits for filing the priority claim. It’s important to note that the priority claim must be made in each continuing application; a priority claim in a parent application does not automatically carry over to child applications.

Can a priority claim be made in a continuation or divisional application?

Yes, a priority claim can be made in a continuation or divisional application. However, there are specific requirements and time limits to consider. According to MPEP 214.01:

“In the case of a continuation or divisional application, the claim for priority must be made during the pendency of the application.”

This means:

• The priority claim must be filed within the later of four months from the actual filing date of the continuation or divisional application or sixteen months from the filing date of the prior foreign application.
• If the claim is filed outside this period, it will be considered untimely and require a petition under 37 CFR 1.55(e).
• The priority claim should reference the parent application if it properly claimed the benefit of the foreign application.

It’s important to note that the continuation or divisional application must be filed within 12 months of the foreign application’s filing date (or 6 months for design applications) to be eligible for priority.

Yes, there are exceptions to the standard time limits for filing foreign priority claims, particularly for design patent applications and certain applications filed before November 29, 2000. According to 37 CFR 1.55(d)(1):

The time periods in this paragraph do not apply if the later-filed application is:
(i) An application for a design patent; or
(ii) An application filed under 35 U.S.C. 111(a) before November 29, 2000.

For design patent applications, the MPEP states:

In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).

This means that for design patent applications, you can file a foreign priority claim at any time while the application is pending, without being restricted by the usual time limits.

For applications filed under 35 U.S.C. 111(a) before November 29, 2000, different rules may apply, and it’s best to consult with a patent attorney or the USPTO directly for guidance on such cases.

It’s important to note that while these exceptions exist, it’s generally advisable to file priority claims as early as possible to ensure they are properly recorded and considered.

To properly identify a foreign priority application in a U.S. patent application, you should provide:

• The application number
• The country or intellectual property authority
• The filing date (day, month, and year)

MPEP 214.04 advises: “To ensure an accurate and complete citation of a foreign priority application, applicants should review the list of the various intellectual property offices and the recommended presentation of a foreign application number for each, which can be found in the tables of the online WIPO Handbook on Industrial Property Information and Documentation.”

It’s important to use the format recommended by WIPO for the specific country to ensure accurate identification and processing of your priority claim.

The priority document exchange program is an agreement between patent offices to electronically exchange priority documents. It affects foreign priority claims in the following ways:

• Applicants may not need to submit a certified copy if the foreign application is available through the program
• The USPTO will attempt to retrieve the priority document automatically
• If successful, it satisfies the requirement to file a certified copy

MPEP 214.02 mentions: “37 CFR 1.55(h) contains provisions relating to when the requirement for a certified copy will be considered satisfied based on a certified copy filed in another U.S. patent or application (see also MPEP § 215, subsection III); 37 CFR 1.55(i) contains provisions relating to the priority document exchange agreement (see also MPEP §§ 215.01 and 215.02(a)).”

Applicants should still monitor the application to ensure the priority document is retrieved and may need to submit a certified copy if the automatic retrieval fails.

The main differences in priority claim requirements for design applications compared to utility applications are:

• Time limit: Design applications can claim priority at any time during pendency, while utility applications have specific deadlines
• Restoration of priority: Not applicable to design applications

MPEP 214.01 states: “The time periods set forth in 37 CFR 1.55(d) do not apply to design applications.” Additionally, “In a design application, a claim for priority may be made at any time during the pendency of the application.”

However, both design and utility applications must still meet other requirements, such as providing a certified copy of the foreign application and properly identifying the priority application.

If you file a foreign priority claim after paying the issue fee but before the patent grant:

• The claim will be placed in the file record
• There may be no review of the papers
• The published patent will not include the priority claim

To have the priority claim considered after publication, you will need to file:

1. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323
2. For original applications under 35 U.S.C. 111(a) or 371, a petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55

MPEP 214.03 states: “When the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the foreign priority claim or certified copy will be placed in the file record but there may be no review of the papers and the patent when published will not include the priority claim.”

The time periods for filing a priority claim depend on the type of application:

• For original applications filed under 35 U.S.C. 111(a) (other than design applications), the claim must be filed during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. See 37 CFR 1.55(d)(1).
• For applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set in the PCT and Regulations under the PCT. See 37 CFR 1.55(d)(2) and MPEP § 213.06.
• In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).

A certified copy of the foreign application must be filed within the time period set in 37 CFR 1.55, which is the later of four months from the filing date of the US application or sixteen months from the foreign application filing date.

The certified copy requirement will be considered satisfied in a national stage application under 35 U.S.C. 371 if a certified copy was filed in the international application and the copy is present in the national stage application. See MPEP § 215.

A certified copy is also not required if the foreign priority application was filed in a participating foreign intellectual property office and the USPTO retrieves a copy via the priority document exchange program. See MPEP § 215.01.

An interim copy of the foreign application may also be filed to meet the timeliness requirement. See 37 CFR 1.55(j) and MPEP § 215.02(b).

The USPTO acknowledges receipt of foreign priority claims in several ways:

1. If the claim is timely and all requirements are met, the examiner will advise the applicant in the next Office action using form PTOL-326 or form paragraph 2.26
2. For priority documents filed in a parent application, the examiner may use form paragraph 2.27
3. If there are irregularities, the examiner may use specific form paragraphs to notify the applicant of issues

MPEP 214.03 states: “When the claim for foreign priority and the certified copy of the foreign application are received within the time period set forth in 37 CFR 1.55, if applicable, they are entered into the application file history. Assuming that the papers are timely and regular in form and that there are no irregularities in dates, the examiner in the next Office action will advise the applicant that the papers have been received on form PTOL-326 or by use of form paragraph 2.26.”

To file an unintentionally delayed foreign priority claim, you must submit a petition under 37 CFR 1.55(e). The petition must include:

1. The priority claim (if not previously submitted)
2. A certified copy of the foreign application (unless previously submitted or an exception applies)
3. The petition fee set forth in 37 CFR 1.17(m)
4. A statement that the entire delay was unintentional

MPEP 214.02 states: “If a claim for foreign priority is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it is accompanied by a grantable petition to accept the unintentionally delayed claim for priority.”

If a claim for foreign priority is not presented within the required time period under 37 CFR 1.55, it is considered waived. However, the claim may be accepted if the priority claim was unintentionally delayed.

To file a petition for an unintentionally delayed priority claim, the applicant must submit:

1. The priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet, identifying the foreign application to which priority is claimed;
2. A certified copy of the foreign application, unless previously submitted or an exception applies;
3. The petition fee set in 37 CFR 1.17(m); and
4. A statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The Director may require additional information if there is a question whether the delay was unintentional. See 37 CFR 1.55(e).

Yes, you can file a foreign priority claim after your patent has been granted, but it requires additional steps:

1. File a petition under 37 CFR 1.55(e) for an unintentionally delayed priority claim
2. Submit a request for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323
3. Pay the required petition and certificate of correction fees

MPEP 214.02 states: “Where a priority claim under 37 CFR 1.55(g) was not timely made, 37 CFR 1.55(g) allows the priority claim and the certified copy required under 37 CFR 1.55 to be filed pursuant to a petition under 37 CFR 1.55(e) even if the application is not pending (e.g., a patented application).”

The location for filing your petition to restore the right of priority depends on the type of application you have. The MPEP provides guidance:

The petition to restore the right of priority must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application.

Additionally, the MPEP specifies the mailing address for such petitions:

The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

Ensure you file the petition in the correct application and send it to the appropriate address to avoid processing delays.

For more information on mailing address, visit: mailing address.

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

What is the significance of the four-month and sixteen-month time periods for filing a priority claim?

The four-month and sixteen-month time periods are crucial deadlines for filing a priority claim in a U.S. patent application. According to MPEP 214.01:

“The claim for priority 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 filed under 35 U.S.C. 111(a).”

These time periods are significant because:

• They provide applicants with a window to properly claim priority to a foreign application.
• The four-month period starts from the U.S. filing date, giving applicants time to prepare and submit the priority claim after filing their U.S. application.
• The sixteen-month period from the foreign filing date ensures that priority claims are made within a reasonable time frame relative to the original foreign filing.
• Filing within these periods allows for the priority claim to be considered timely without requiring additional petitions or fees.

It’s important to note that failing to meet these deadlines may result in the need for a petition to accept an unintentionally delayed priority claim under 37 CFR 1.55(e), which involves additional requirements and fees.

To properly identify a foreign priority application in a U.S. patent application, you should provide:

• The application number
• The country or intellectual property authority
• The filing date (day, month, and year)

MPEP 214.04 advises: “To ensure an accurate and complete citation of a foreign priority application, applicants should review the list of the various intellectual property offices and the recommended presentation of a foreign application number for each, which can be found in the tables of the online WIPO Handbook on Industrial Property Information and Documentation.”

It’s important to use the format recommended by WIPO for the specific country to ensure accurate identification and processing of your priority claim.

The priority document exchange program is an agreement between patent offices to electronically exchange priority documents. It affects foreign priority claims in the following ways:

• Applicants may not need to submit a certified copy if the foreign application is available through the program
• The USPTO will attempt to retrieve the priority document automatically
• If successful, it satisfies the requirement to file a certified copy

MPEP 214.02 mentions: “37 CFR 1.55(h) contains provisions relating to when the requirement for a certified copy will be considered satisfied based on a certified copy filed in another U.S. patent or application (see also MPEP § 215, subsection III); 37 CFR 1.55(i) contains provisions relating to the priority document exchange agreement (see also MPEP §§ 215.01 and 215.02(a)).”

Applicants should still monitor the application to ensure the priority document is retrieved and may need to submit a certified copy if the automatic retrieval fails.

The main differences in priority claim requirements for design applications compared to utility applications are:

• Time limit: Design applications can claim priority at any time during pendency, while utility applications have specific deadlines
• Restoration of priority: Not applicable to design applications

MPEP 214.01 states: “The time periods set forth in 37 CFR 1.55(d) do not apply to design applications.” Additionally, “In a design application, a claim for priority may be made at any time during the pendency of the application.”

However, both design and utility applications must still meet other requirements, such as providing a certified copy of the foreign application and properly identifying the priority application.

The requirements for filing a foreign priority claim differ for applications filed before and after September 16, 2012. The key difference lies in where the priority claim must be presented:

• For applications filed on or after September 16, 2012: The priority claim must be presented in an Application Data Sheet (ADS). This is specified in 37 CFR 1.55(d)(1): For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, 37 CFR 1.55(d)(1) requires the claim for priority to be presented in an application data sheet.
• For applications filed before September 16, 2012: The priority claim can be presented either in an Application Data Sheet or in the oath or declaration. As stated in the MPEP: For applications filed under 35 U.S.C. 111(a) prior to September 16, 2012, unless provided in an application data sheet, the oath or declaration under 37 CFR 1.63 must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.

Regardless of the filing date, the priority claim must include the same essential information: the application number, country (or intellectual property authority), and filing date (day, month, and year) of the foreign application. The difference is primarily in the document where this information must be presented.

If you miss the deadline for filing a foreign priority claim, you may still have options:

• Unintentional delay: You can file a petition to accept an unintentionally delayed priority claim under 37 CFR 1.55(e). This petition 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.
• Design applications: For design applications, you can file this petition up to the date of payment of the issue fee.

The MPEP states: The Director may accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), or 365(a) or (b) in an application for patent filed on or after November 29, 2000, upon petition pursuant to 37 CFR 1.55(e).

It’s important to note that the petition must include a statement that the entire delay was unintentional, and you may need to provide additional evidence to support this claim.

If you file a U.S. patent application more than 12 months after your foreign filing, your claim for priority based on that foreign application may be denied. The MPEP states:

The claim for priority cannot be based on said application, because the subsequent nonprovisional or international application designating the United States was filed more than twelve months thereafter and no petition under 37 CFR 1.55 or request under PCT Rule 26bis.3 to restore the right of priority has been granted.

However, you may still have options to restore your priority claim under certain circumstances.

For more information on 12-month rule, visit: 12-month rule.

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

If you file a foreign priority claim after paying the issue fee but before the patent grant:

• The claim will be placed in the file record
• There may be no review of the papers
• The published patent will not include the priority claim

To have the priority claim considered after publication, you will need to file:

1. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323
2. For original applications under 35 U.S.C. 111(a) or 371, a petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55

MPEP 214.03 states: “When the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the foreign priority claim or certified copy will be placed in the file record but there may be no review of the papers and the patent when published will not include the priority claim.”

The time periods for filing a priority claim depend on the type of application:

• For original applications filed under 35 U.S.C. 111(a) (other than design applications), the claim must be filed during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. See 37 CFR 1.55(d)(1).
• For applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set in the PCT and Regulations under the PCT. See 37 CFR 1.55(d)(2) and MPEP § 213.06.
• In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).

A certified copy of the foreign application must be filed within the time period set in 37 CFR 1.55, which is the later of four months from the filing date of the US application or sixteen months from the foreign application filing date.

The certified copy requirement will be considered satisfied in a national stage application under 35 U.S.C. 371 if a certified copy was filed in the international application and the copy is present in the national stage application. See MPEP § 215.

A certified copy is also not required if the foreign priority application was filed in a participating foreign intellectual property office and the USPTO retrieves a copy via the priority document exchange program. See MPEP § 215.01.

An interim copy of the foreign application may also be filed to meet the timeliness requirement. See 37 CFR 1.55(j) and MPEP § 215.02(b).

A petition to restore the right of priority must include several key elements. The MPEP outlines these requirements:

A petition to restore the right of priority must include: (1) the priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) in an application data sheet, identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing (unless previously submitted); (2) the petition fee set forth in 37 CFR 1.17(m); and (3) a statement that the delay in filing the subsequent application within the twelve-month period was unintentional.

These requirements ensure that the USPTO has all necessary information to consider your petition for priority restoration.

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

For more information on petition fee, visit: petition fee.

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

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

The USPTO acknowledges receipt of foreign priority claims in several ways:

1. If the claim is timely and all requirements are met, the examiner will advise the applicant in the next Office action using form PTOL-326 or form paragraph 2.26
2. For priority documents filed in a parent application, the examiner may use form paragraph 2.27
3. If there are irregularities, the examiner may use specific form paragraphs to notify the applicant of issues

MPEP 214.03 states: “When the claim for foreign priority and the certified copy of the foreign application are received within the time period set forth in 37 CFR 1.55, if applicable, they are entered into the application file history. Assuming that the papers are timely and regular in form and that there are no irregularities in dates, the examiner in the next Office action will advise the applicant that the papers have been received on form PTOL-326 or by use of form paragraph 2.26.”

How do I properly identify a foreign application when claiming priority in a U.S. patent application?

When claiming priority to a foreign application in a U.S. patent application, it’s crucial to provide accurate identification information. According to MPEP 214.01, you must include the following details:

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

The MPEP states: ‘The claim for priority must identify the foreign application for which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.’

Additionally, if you’re submitting a certified copy of the foreign application, ensure that it matches the identification information provided in your priority claim. Accurate identification is essential for establishing your priority rights and avoiding potential issues during examination or litigation.

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

1. File the claim within the specified time limit (see previous FAQ for details).
2. Present the claim in an application data sheet (ADS) for applications filed on or after September 16, 2012. For applications filed before this date, the claim can be in the ADS or in the oath/declaration.
3. Identify the foreign application by providing:
• Application number
• Country (or intellectual property authority)
• Filing date (day, month, and year)

This is specified in 37 CFR 1.55(d)(1): The claim for priority must be presented in an application data sheet (§1.76(b)(6)) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

It’s crucial to provide accurate and complete information to ensure your priority claim is properly recorded and considered.

How do I correct an error in my foreign priority claim?

If you need to correct an error in your foreign priority claim, the process depends on the nature of the error and when it’s discovered. According to MPEP 214.01, “Applicant may correct the failure to adequately claim priority to the prior foreign application by amending the specification or submitting a new application data sheet (ADS) identifying the foreign application by application number, country (or intellectual property authority), and filing date.” Here are some key points to remember:

• If the error is discovered within the time period for filing the priority claim, you can simply submit a corrected ADS or amend the specification.
• If the error is discovered after the time period has expired, you may need to file a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim.
• For minor typographical errors, a request for a corrected filing receipt may be sufficient.

Always consult with a patent attorney or agent to determine the best course of action for your specific situation.

To file an unintentionally delayed foreign priority claim, you must submit a petition under 37 CFR 1.55(e). The petition must include:

1. The priority claim (if not previously submitted)
2. A certified copy of the foreign application (unless previously submitted or an exception applies)
3. The petition fee set forth in 37 CFR 1.17(m)
4. A statement that the entire delay was unintentional

MPEP 214.02 states: “If a claim for foreign priority is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it is accompanied by a grantable petition to accept the unintentionally delayed claim for priority.”

If a claim for foreign priority is not presented within the required time period under 37 CFR 1.55, it is considered waived. However, the claim may be accepted if the priority claim was unintentionally delayed.

To file a petition for an unintentionally delayed priority claim, the applicant must submit:

1. The priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet, identifying the foreign application to which priority is claimed;
2. A certified copy of the foreign application, unless previously submitted or an exception applies;
3. The petition fee set in 37 CFR 1.17(m); and
4. A statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The Director may require additional information if there is a question whether the delay was unintentional. See 37 CFR 1.55(e).

Yes, the USPTO may request additional information when considering a petition to restore the right of priority. The MPEP states:

The Director may require additional information where there is a question whether the delay was unintentional.

This means that if the USPTO has doubts about whether the delay in filing was truly unintentional, they may ask for more details or evidence to support your claim. It’s important to be prepared to provide such information if requested to ensure your petition is properly considered.

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

Can I file a priority claim in a continuing application?

Yes, you can file a priority claim in a continuing application, but there are specific requirements and deadlines to consider. According to MPEP 214.01, “In the case of a continuation or divisional application filed under 35 U.S.C. 111(a), the claim for priority must be made during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.” This means that even in a continuing application, you must adhere to the time limits for filing the priority claim. It’s important to note that the priority claim must be made in each continuing application; a priority claim in a parent application does not automatically carry over to child applications.

Yes, you can file a foreign priority claim after your patent has been granted, but it requires additional steps:

1. File a petition under 37 CFR 1.55(e) for an unintentionally delayed priority claim
2. Submit a request for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323
3. Pay the required petition and certificate of correction fees

MPEP 214.02 states: “Where a priority claim under 37 CFR 1.55(g) was not timely made, 37 CFR 1.55(g) allows the priority claim and the certified copy required under 37 CFR 1.55 to be filed pursuant to a petition under 37 CFR 1.55(e) even if the application is not pending (e.g., a patented application).”

Can a priority claim be made in a continuation or divisional application?

Yes, a priority claim can be made in a continuation or divisional application. However, there are specific requirements and time limits to consider. According to MPEP 214.01:

“In the case of a continuation or divisional application, the claim for priority must be made during the pendency of the application.”

This means:

• The priority claim must be filed within the later of four months from the actual filing date of the continuation or divisional application or sixteen months from the filing date of the prior foreign application.
• If the claim is filed outside this period, it will be considered untimely and require a petition under 37 CFR 1.55(e).
• The priority claim should reference the parent application if it properly claimed the benefit of the foreign application.

It’s important to note that the continuation or divisional application must be filed within 12 months of the foreign application’s filing date (or 6 months for design applications) to be eligible for priority.

Yes, there are exceptions to the standard time limits for filing foreign priority claims, particularly for design patent applications and certain applications filed before November 29, 2000. According to 37 CFR 1.55(d)(1):

The time periods in this paragraph do not apply if the later-filed application is:
(i) An application for a design patent; or
(ii) An application filed under 35 U.S.C. 111(a) before November 29, 2000.

For design patent applications, the MPEP states:

In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).

This means that for design patent applications, you can file a foreign priority claim at any time while the application is pending, without being restricted by the usual time limits.

For applications filed under 35 U.S.C. 111(a) before November 29, 2000, different rules may apply, and it’s best to consult with a patent attorney or the USPTO directly for guidance on such cases.

It’s important to note that while these exceptions exist, it’s generally advisable to file priority claims as early as possible to ensure they are properly recorded and considered.

The location for filing your petition to restore the right of priority depends on the type of application you have. The MPEP provides guidance:

The petition to restore the right of priority must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application.

Additionally, the MPEP specifies the mailing address for such petitions:

The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

Ensure you file the petition in the correct application and send it to the appropriate address to avoid processing delays.

For more information on mailing address, visit: mailing address.

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

What is the significance of the four-month and sixteen-month time periods for filing a priority claim?

The four-month and sixteen-month time periods are crucial deadlines for filing a priority claim in a U.S. patent application. According to MPEP 214.01:

“The claim for priority 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 filed under 35 U.S.C. 111(a).”

These time periods are significant because:

• They provide applicants with a window to properly claim priority to a foreign application.
• The four-month period starts from the U.S. filing date, giving applicants time to prepare and submit the priority claim after filing their U.S. application.
• The sixteen-month period from the foreign filing date ensures that priority claims are made within a reasonable time frame relative to the original foreign filing.
• Filing within these periods allows for the priority claim to be considered timely without requiring additional petitions or fees.

It’s important to note that failing to meet these deadlines may result in the need for a petition to accept an unintentionally delayed priority claim under 37 CFR 1.55(e), which involves additional requirements and fees.

To properly identify a foreign priority application in a U.S. patent application, you should provide:

• The application number
• The country or intellectual property authority
• The filing date (day, month, and year)

MPEP 214.04 advises: “To ensure an accurate and complete citation of a foreign priority application, applicants should review the list of the various intellectual property offices and the recommended presentation of a foreign application number for each, which can be found in the tables of the online WIPO Handbook on Industrial Property Information and Documentation.”

It’s important to use the format recommended by WIPO for the specific country to ensure accurate identification and processing of your priority claim.

The priority document exchange program is an agreement between patent offices to electronically exchange priority documents. It affects foreign priority claims in the following ways:

• Applicants may not need to submit a certified copy if the foreign application is available through the program
• The USPTO will attempt to retrieve the priority document automatically
• If successful, it satisfies the requirement to file a certified copy

MPEP 214.02 mentions: “37 CFR 1.55(h) contains provisions relating to when the requirement for a certified copy will be considered satisfied based on a certified copy filed in another U.S. patent or application (see also MPEP § 215, subsection III); 37 CFR 1.55(i) contains provisions relating to the priority document exchange agreement (see also MPEP §§ 215.01 and 215.02(a)).”

Applicants should still monitor the application to ensure the priority document is retrieved and may need to submit a certified copy if the automatic retrieval fails.

The main differences in priority claim requirements for design applications compared to utility applications are:

• Time limit: Design applications can claim priority at any time during pendency, while utility applications have specific deadlines
• Restoration of priority: Not applicable to design applications

MPEP 214.01 states: “The time periods set forth in 37 CFR 1.55(d) do not apply to design applications.” Additionally, “In a design application, a claim for priority may be made at any time during the pendency of the application.”

However, both design and utility applications must still meet other requirements, such as providing a certified copy of the foreign application and properly identifying the priority application.

The requirements for filing a foreign priority claim differ for applications filed before and after September 16, 2012. The key difference lies in where the priority claim must be presented:

• For applications filed on or after September 16, 2012: The priority claim must be presented in an Application Data Sheet (ADS). This is specified in 37 CFR 1.55(d)(1): For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, 37 CFR 1.55(d)(1) requires the claim for priority to be presented in an application data sheet.
• For applications filed before September 16, 2012: The priority claim can be presented either in an Application Data Sheet or in the oath or declaration. As stated in the MPEP: For applications filed under 35 U.S.C. 111(a) prior to September 16, 2012, unless provided in an application data sheet, the oath or declaration under 37 CFR 1.63 must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.

Regardless of the filing date, the priority claim must include the same essential information: the application number, country (or intellectual property authority), and filing date (day, month, and year) of the foreign application. The difference is primarily in the document where this information must be presented.

If you miss the deadline for filing a foreign priority claim, you may still have options:

• Unintentional delay: You can file a petition to accept an unintentionally delayed priority claim under 37 CFR 1.55(e). This petition 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.
• Design applications: For design applications, you can file this petition up to the date of payment of the issue fee.

The MPEP states: The Director may accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), or 365(a) or (b) in an application for patent filed on or after November 29, 2000, upon petition pursuant to 37 CFR 1.55(e).

It’s important to note that the petition must include a statement that the entire delay was unintentional, and you may need to provide additional evidence to support this claim.

If you file a U.S. patent application more than 12 months after your foreign filing, your claim for priority based on that foreign application may be denied. The MPEP states:

The claim for priority cannot be based on said application, because the subsequent nonprovisional or international application designating the United States was filed more than twelve months thereafter and no petition under 37 CFR 1.55 or request under PCT Rule 26bis.3 to restore the right of priority has been granted.

However, you may still have options to restore your priority claim under certain circumstances.

For more information on 12-month rule, visit: 12-month rule.

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

If you file a foreign priority claim after paying the issue fee but before the patent grant:

• The claim will be placed in the file record
• There may be no review of the papers
• The published patent will not include the priority claim

To have the priority claim considered after publication, you will need to file:

1. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323
2. For original applications under 35 U.S.C. 111(a) or 371, a petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55

MPEP 214.03 states: “When the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the foreign priority claim or certified copy will be placed in the file record but there may be no review of the papers and the patent when published will not include the priority claim.”

The time periods for filing a priority claim depend on the type of application:

• For original applications filed under 35 U.S.C. 111(a) (other than design applications), the claim must be filed during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. See 37 CFR 1.55(d)(1).
• For applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set in the PCT and Regulations under the PCT. See 37 CFR 1.55(d)(2) and MPEP § 213.06.
• In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).

A certified copy of the foreign application must be filed within the time period set in 37 CFR 1.55, which is the later of four months from the filing date of the US application or sixteen months from the foreign application filing date.

The certified copy requirement will be considered satisfied in a national stage application under 35 U.S.C. 371 if a certified copy was filed in the international application and the copy is present in the national stage application. See MPEP § 215.

A certified copy is also not required if the foreign priority application was filed in a participating foreign intellectual property office and the USPTO retrieves a copy via the priority document exchange program. See MPEP § 215.01.

An interim copy of the foreign application may also be filed to meet the timeliness requirement. See 37 CFR 1.55(j) and MPEP § 215.02(b).

A petition to restore the right of priority must include several key elements. The MPEP outlines these requirements:

A petition to restore the right of priority must include: (1) the priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) in an application data sheet, identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing (unless previously submitted); (2) the petition fee set forth in 37 CFR 1.17(m); and (3) a statement that the delay in filing the subsequent application within the twelve-month period was unintentional.

These requirements ensure that the USPTO has all necessary information to consider your petition for priority restoration.

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

For more information on petition fee, visit: petition fee.

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

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

The USPTO acknowledges receipt of foreign priority claims in several ways:

1. If the claim is timely and all requirements are met, the examiner will advise the applicant in the next Office action using form PTOL-326 or form paragraph 2.26
2. For priority documents filed in a parent application, the examiner may use form paragraph 2.27
3. If there are irregularities, the examiner may use specific form paragraphs to notify the applicant of issues

MPEP 214.03 states: “When the claim for foreign priority and the certified copy of the foreign application are received within the time period set forth in 37 CFR 1.55, if applicable, they are entered into the application file history. Assuming that the papers are timely and regular in form and that there are no irregularities in dates, the examiner in the next Office action will advise the applicant that the papers have been received on form PTOL-326 or by use of form paragraph 2.26.”

How do I properly identify a foreign application when claiming priority in a U.S. patent application?

When claiming priority to a foreign application in a U.S. patent application, it’s crucial to provide accurate identification information. According to MPEP 214.01, you must include the following details:

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

The MPEP states: ‘The claim for priority must identify the foreign application for which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.’

Additionally, if you’re submitting a certified copy of the foreign application, ensure that it matches the identification information provided in your priority claim. Accurate identification is essential for establishing your priority rights and avoiding potential issues during examination or litigation.

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

1. File the claim within the specified time limit (see previous FAQ for details).
2. Present the claim in an application data sheet (ADS) for applications filed on or after September 16, 2012. For applications filed before this date, the claim can be in the ADS or in the oath/declaration.
3. Identify the foreign application by providing:
• Application number
• Country (or intellectual property authority)
• Filing date (day, month, and year)

This is specified in 37 CFR 1.55(d)(1): The claim for priority must be presented in an application data sheet (§1.76(b)(6)) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

It’s crucial to provide accurate and complete information to ensure your priority claim is properly recorded and considered.

How do I correct an error in my foreign priority claim?

If you need to correct an error in your foreign priority claim, the process depends on the nature of the error and when it’s discovered. According to MPEP 214.01, “Applicant may correct the failure to adequately claim priority to the prior foreign application by amending the specification or submitting a new application data sheet (ADS) identifying the foreign application by application number, country (or intellectual property authority), and filing date.” Here are some key points to remember:

• If the error is discovered within the time period for filing the priority claim, you can simply submit a corrected ADS or amend the specification.
• If the error is discovered after the time period has expired, you may need to file a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim.
• For minor typographical errors, a request for a corrected filing receipt may be sufficient.

Always consult with a patent attorney or agent to determine the best course of action for your specific situation.

To file an unintentionally delayed foreign priority claim, you must submit a petition under 37 CFR 1.55(e). The petition must include:

1. The priority claim (if not previously submitted)
2. A certified copy of the foreign application (unless previously submitted or an exception applies)
3. The petition fee set forth in 37 CFR 1.17(m)
4. A statement that the entire delay was unintentional

MPEP 214.02 states: “If a claim for foreign priority is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it is accompanied by a grantable petition to accept the unintentionally delayed claim for priority.”

If a claim for foreign priority is not presented within the required time period under 37 CFR 1.55, it is considered waived. However, the claim may be accepted if the priority claim was unintentionally delayed.

To file a petition for an unintentionally delayed priority claim, the applicant must submit:

1. The priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet, identifying the foreign application to which priority is claimed;
2. A certified copy of the foreign application, unless previously submitted or an exception applies;
3. The petition fee set in 37 CFR 1.17(m); and
4. A statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The Director may require additional information if there is a question whether the delay was unintentional. See 37 CFR 1.55(e).

Yes, the USPTO may request additional information when considering a petition to restore the right of priority. The MPEP states:

The Director may require additional information where there is a question whether the delay was unintentional.

This means that if the USPTO has doubts about whether the delay in filing was truly unintentional, they may ask for more details or evidence to support your claim. It’s important to be prepared to provide such information if requested to ensure your petition is properly considered.

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

Can I file a priority claim in a continuing application?

Yes, you can file a priority claim in a continuing application, but there are specific requirements and deadlines to consider. According to MPEP 214.01, “In the case of a continuation or divisional application filed under 35 U.S.C. 111(a), the claim for priority must be made during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.” This means that even in a continuing application, you must adhere to the time limits for filing the priority claim. It’s important to note that the priority claim must be made in each continuing application; a priority claim in a parent application does not automatically carry over to child applications.

Yes, you can file a foreign priority claim after your patent has been granted, but it requires additional steps:

1. File a petition under 37 CFR 1.55(e) for an unintentionally delayed priority claim
2. Submit a request for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323
3. Pay the required petition and certificate of correction fees

MPEP 214.02 states: “Where a priority claim under 37 CFR 1.55(g) was not timely made, 37 CFR 1.55(g) allows the priority claim and the certified copy required under 37 CFR 1.55 to be filed pursuant to a petition under 37 CFR 1.55(e) even if the application is not pending (e.g., a patented application).”

Can a priority claim be made in a continuation or divisional application?

Yes, a priority claim can be made in a continuation or divisional application. However, there are specific requirements and time limits to consider. According to MPEP 214.01:

“In the case of a continuation or divisional application, the claim for priority must be made during the pendency of the application.”

This means:

• The priority claim must be filed within the later of four months from the actual filing date of the continuation or divisional application or sixteen months from the filing date of the prior foreign application.
• If the claim is filed outside this period, it will be considered untimely and require a petition under 37 CFR 1.55(e).
• The priority claim should reference the parent application if it properly claimed the benefit of the foreign application.

It’s important to note that the continuation or divisional application must be filed within 12 months of the foreign application’s filing date (or 6 months for design applications) to be eligible for priority.

Yes, there are exceptions to the standard time limits for filing foreign priority claims, particularly for design patent applications and certain applications filed before November 29, 2000. According to 37 CFR 1.55(d)(1):

The time periods in this paragraph do not apply if the later-filed application is:
(i) An application for a design patent; or
(ii) An application filed under 35 U.S.C. 111(a) before November 29, 2000.

For design patent applications, the MPEP states:

In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).

This means that for design patent applications, you can file a foreign priority claim at any time while the application is pending, without being restricted by the usual time limits.

For applications filed under 35 U.S.C. 111(a) before November 29, 2000, different rules may apply, and it’s best to consult with a patent attorney or the USPTO directly for guidance on such cases.

It’s important to note that while these exceptions exist, it’s generally advisable to file priority claims as early as possible to ensure they are properly recorded and considered.

The location for filing your petition to restore the right of priority depends on the type of application you have. The MPEP provides guidance:

The petition to restore the right of priority must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application.

Additionally, the MPEP specifies the mailing address for such petitions:

The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

Ensure you file the petition in the correct application and send it to the appropriate address to avoid processing delays.

For more information on mailing address, visit: mailing address.

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

What is the significance of the four-month and sixteen-month time periods for filing a priority claim?

The four-month and sixteen-month time periods are crucial deadlines for filing a priority claim in a U.S. patent application. According to MPEP 214.01:

“The claim for priority 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 filed under 35 U.S.C. 111(a).”

These time periods are significant because:

• They provide applicants with a window to properly claim priority to a foreign application.
• The four-month period starts from the U.S. filing date, giving applicants time to prepare and submit the priority claim after filing their U.S. application.
• The sixteen-month period from the foreign filing date ensures that priority claims are made within a reasonable time frame relative to the original foreign filing.
• Filing within these periods allows for the priority claim to be considered timely without requiring additional petitions or fees.

It’s important to note that failing to meet these deadlines may result in the need for a petition to accept an unintentionally delayed priority claim under 37 CFR 1.55(e), which involves additional requirements and fees.

To properly identify a foreign priority application in a U.S. patent application, you should provide:

• The application number
• The country or intellectual property authority
• The filing date (day, month, and year)

MPEP 214.04 advises: “To ensure an accurate and complete citation of a foreign priority application, applicants should review the list of the various intellectual property offices and the recommended presentation of a foreign application number for each, which can be found in the tables of the online WIPO Handbook on Industrial Property Information and Documentation.”

It’s important to use the format recommended by WIPO for the specific country to ensure accurate identification and processing of your priority claim.

The priority document exchange program is an agreement between patent offices to electronically exchange priority documents. It affects foreign priority claims in the following ways:

• Applicants may not need to submit a certified copy if the foreign application is available through the program
• The USPTO will attempt to retrieve the priority document automatically
• If successful, it satisfies the requirement to file a certified copy

MPEP 214.02 mentions: “37 CFR 1.55(h) contains provisions relating to when the requirement for a certified copy will be considered satisfied based on a certified copy filed in another U.S. patent or application (see also MPEP § 215, subsection III); 37 CFR 1.55(i) contains provisions relating to the priority document exchange agreement (see also MPEP §§ 215.01 and 215.02(a)).”

Applicants should still monitor the application to ensure the priority document is retrieved and may need to submit a certified copy if the automatic retrieval fails.

The main differences in priority claim requirements for design applications compared to utility applications are:

• Time limit: Design applications can claim priority at any time during pendency, while utility applications have specific deadlines
• Restoration of priority: Not applicable to design applications

MPEP 214.01 states: “The time periods set forth in 37 CFR 1.55(d) do not apply to design applications.” Additionally, “In a design application, a claim for priority may be made at any time during the pendency of the application.”

However, both design and utility applications must still meet other requirements, such as providing a certified copy of the foreign application and properly identifying the priority application.

The requirements for filing a foreign priority claim differ for applications filed before and after September 16, 2012. The key difference lies in where the priority claim must be presented:

• For applications filed on or after September 16, 2012: The priority claim must be presented in an Application Data Sheet (ADS). This is specified in 37 CFR 1.55(d)(1): For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, 37 CFR 1.55(d)(1) requires the claim for priority to be presented in an application data sheet.
• For applications filed before September 16, 2012: The priority claim can be presented either in an Application Data Sheet or in the oath or declaration. As stated in the MPEP: For applications filed under 35 U.S.C. 111(a) prior to September 16, 2012, unless provided in an application data sheet, the oath or declaration under 37 CFR 1.63 must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.

Regardless of the filing date, the priority claim must include the same essential information: the application number, country (or intellectual property authority), and filing date (day, month, and year) of the foreign application. The difference is primarily in the document where this information must be presented.

If you miss the deadline for filing a foreign priority claim, you may still have options:

• Unintentional delay: You can file a petition to accept an unintentionally delayed priority claim under 37 CFR 1.55(e). This petition 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.
• Design applications: For design applications, you can file this petition up to the date of payment of the issue fee.

The MPEP states: The Director may accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), or 365(a) or (b) in an application for patent filed on or after November 29, 2000, upon petition pursuant to 37 CFR 1.55(e).

It’s important to note that the petition must include a statement that the entire delay was unintentional, and you may need to provide additional evidence to support this claim.

If you file a U.S. patent application more than 12 months after your foreign filing, your claim for priority based on that foreign application may be denied. The MPEP states:

The claim for priority cannot be based on said application, because the subsequent nonprovisional or international application designating the United States was filed more than twelve months thereafter and no petition under 37 CFR 1.55 or request under PCT Rule 26bis.3 to restore the right of priority has been granted.

However, you may still have options to restore your priority claim under certain circumstances.

For more information on 12-month rule, visit: 12-month rule.

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

If you file a foreign priority claim after paying the issue fee but before the patent grant:

• The claim will be placed in the file record
• There may be no review of the papers
• The published patent will not include the priority claim

To have the priority claim considered after publication, you will need to file:

1. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323
2. For original applications under 35 U.S.C. 111(a) or 371, a petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55

MPEP 214.03 states: “When the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the foreign priority claim or certified copy will be placed in the file record but there may be no review of the papers and the patent when published will not include the priority claim.”

The time periods for filing a priority claim depend on the type of application:

• For original applications filed under 35 U.S.C. 111(a) (other than design applications), the claim must be filed during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. See 37 CFR 1.55(d)(1).
• For applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set in the PCT and Regulations under the PCT. See 37 CFR 1.55(d)(2) and MPEP § 213.06.
• In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).

A certified copy of the foreign application must be filed within the time period set in 37 CFR 1.55, which is the later of four months from the filing date of the US application or sixteen months from the foreign application filing date.

The certified copy requirement will be considered satisfied in a national stage application under 35 U.S.C. 371 if a certified copy was filed in the international application and the copy is present in the national stage application. See MPEP § 215.

A certified copy is also not required if the foreign priority application was filed in a participating foreign intellectual property office and the USPTO retrieves a copy via the priority document exchange program. See MPEP § 215.01.

An interim copy of the foreign application may also be filed to meet the timeliness requirement. See 37 CFR 1.55(j) and MPEP § 215.02(b).

A petition to restore the right of priority must include several key elements. The MPEP outlines these requirements:

A petition to restore the right of priority must include: (1) the priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) in an application data sheet, identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing (unless previously submitted); (2) the petition fee set forth in 37 CFR 1.17(m); and (3) a statement that the delay in filing the subsequent application within the twelve-month period was unintentional.

These requirements ensure that the USPTO has all necessary information to consider your petition for priority restoration.

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

For more information on petition fee, visit: petition fee.

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

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

The USPTO acknowledges receipt of foreign priority claims in several ways:

1. If the claim is timely and all requirements are met, the examiner will advise the applicant in the next Office action using form PTOL-326 or form paragraph 2.26
2. For priority documents filed in a parent application, the examiner may use form paragraph 2.27
3. If there are irregularities, the examiner may use specific form paragraphs to notify the applicant of issues

MPEP 214.03 states: “When the claim for foreign priority and the certified copy of the foreign application are received within the time period set forth in 37 CFR 1.55, if applicable, they are entered into the application file history. Assuming that the papers are timely and regular in form and that there are no irregularities in dates, the examiner in the next Office action will advise the applicant that the papers have been received on form PTOL-326 or by use of form paragraph 2.26.”

How do I properly identify a foreign application when claiming priority in a U.S. patent application?

When claiming priority to a foreign application in a U.S. patent application, it’s crucial to provide accurate identification information. According to MPEP 214.01, you must include the following details:

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

The MPEP states: ‘The claim for priority must identify the foreign application for which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.’

Additionally, if you’re submitting a certified copy of the foreign application, ensure that it matches the identification information provided in your priority claim. Accurate identification is essential for establishing your priority rights and avoiding potential issues during examination or litigation.

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

1. File the claim within the specified time limit (see previous FAQ for details).
2. Present the claim in an application data sheet (ADS) for applications filed on or after September 16, 2012. For applications filed before this date, the claim can be in the ADS or in the oath/declaration.
3. Identify the foreign application by providing:
• Application number
• Country (or intellectual property authority)
• Filing date (day, month, and year)

This is specified in 37 CFR 1.55(d)(1): The claim for priority must be presented in an application data sheet (§1.76(b)(6)) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing.

It’s crucial to provide accurate and complete information to ensure your priority claim is properly recorded and considered.

How do I correct an error in my foreign priority claim?

If you need to correct an error in your foreign priority claim, the process depends on the nature of the error and when it’s discovered. According to MPEP 214.01, “Applicant may correct the failure to adequately claim priority to the prior foreign application by amending the specification or submitting a new application data sheet (ADS) identifying the foreign application by application number, country (or intellectual property authority), and filing date.” Here are some key points to remember:

• If the error is discovered within the time period for filing the priority claim, you can simply submit a corrected ADS or amend the specification.
• If the error is discovered after the time period has expired, you may need to file a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim.
• For minor typographical errors, a request for a corrected filing receipt may be sufficient.

Always consult with a patent attorney or agent to determine the best course of action for your specific situation.

To file an unintentionally delayed foreign priority claim, you must submit a petition under 37 CFR 1.55(e). The petition must include:

1. The priority claim (if not previously submitted)
2. A certified copy of the foreign application (unless previously submitted or an exception applies)
3. The petition fee set forth in 37 CFR 1.17(m)
4. A statement that the entire delay was unintentional

MPEP 214.02 states: “If a claim for foreign priority is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it is accompanied by a grantable petition to accept the unintentionally delayed claim for priority.”

If a claim for foreign priority is not presented within the required time period under 37 CFR 1.55, it is considered waived. However, the claim may be accepted if the priority claim was unintentionally delayed.

To file a petition for an unintentionally delayed priority claim, the applicant must submit:

1. The priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet, identifying the foreign application to which priority is claimed;
2. A certified copy of the foreign application, unless previously submitted or an exception applies;
3. The petition fee set in 37 CFR 1.17(m); and
4. A statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The Director may require additional information if there is a question whether the delay was unintentional. See 37 CFR 1.55(e).

Yes, the USPTO may request additional information when considering a petition to restore the right of priority. The MPEP states:

The Director may require additional information where there is a question whether the delay was unintentional.

This means that if the USPTO has doubts about whether the delay in filing was truly unintentional, they may ask for more details or evidence to support your claim. It’s important to be prepared to provide such information if requested to ensure your petition is properly considered.

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

Can I file a priority claim in a continuing application?

Yes, you can file a priority claim in a continuing application, but there are specific requirements and deadlines to consider. According to MPEP 214.01, “In the case of a continuation or divisional application filed under 35 U.S.C. 111(a), the claim for priority must be made during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.” This means that even in a continuing application, you must adhere to the time limits for filing the priority claim. It’s important to note that the priority claim must be made in each continuing application; a priority claim in a parent application does not automatically carry over to child applications.

Yes, you can file a foreign priority claim after your patent has been granted, but it requires additional steps:

1. File a petition under 37 CFR 1.55(e) for an unintentionally delayed priority claim
2. Submit a request for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323
3. Pay the required petition and certificate of correction fees

MPEP 214.02 states: “Where a priority claim under 37 CFR 1.55(g) was not timely made, 37 CFR 1.55(g) allows the priority claim and the certified copy required under 37 CFR 1.55 to be filed pursuant to a petition under 37 CFR 1.55(e) even if the application is not pending (e.g., a patented application).”

Can a priority claim be made in a continuation or divisional application?

Yes, a priority claim can be made in a continuation or divisional application. However, there are specific requirements and time limits to consider. According to MPEP 214.01:

“In the case of a continuation or divisional application, the claim for priority must be made during the pendency of the application.”

This means:

• The priority claim must be filed within the later of four months from the actual filing date of the continuation or divisional application or sixteen months from the filing date of the prior foreign application.
• If the claim is filed outside this period, it will be considered untimely and require a petition under 37 CFR 1.55(e).
• The priority claim should reference the parent application if it properly claimed the benefit of the foreign application.

It’s important to note that the continuation or divisional application must be filed within 12 months of the foreign application’s filing date (or 6 months for design applications) to be eligible for priority.

Yes, there are exceptions to the standard time limits for filing foreign priority claims, particularly for design patent applications and certain applications filed before November 29, 2000. According to 37 CFR 1.55(d)(1):

The time periods in this paragraph do not apply if the later-filed application is:
(i) An application for a design patent; or
(ii) An application filed under 35 U.S.C. 111(a) before November 29, 2000.

For design patent applications, the MPEP states:

In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).

This means that for design patent applications, you can file a foreign priority claim at any time while the application is pending, without being restricted by the usual time limits.

For applications filed under 35 U.S.C. 111(a) before November 29, 2000, different rules may apply, and it’s best to consult with a patent attorney or the USPTO directly for guidance on such cases.

It’s important to note that while these exceptions exist, it’s generally advisable to file priority claims as early as possible to ensure they are properly recorded and considered.