Patent Law FAQ

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

For an original application filed under 35 U.S.C. 111(a) on or after March 16, 2013, a certified copy of the foreign application must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application, except as provided in 37 CFR 1.55(h), (i), and (j). See MPEP 215.02.

For an international application entering the national stage under 35 U.S.C. 371 in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior foreign application, except as provided in 37 CFR 1.55(h), (i), and (j). See MPEP 215.02.

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

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

To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:

• The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
• The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
• The later-filed application must contain a specific reference to the prior-filed application
• The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78

To claim priority to an earlier-filed foreign application, the applicant must:

1. File the U.S. application within 12 months of the foreign application’s filing date (6 months for design applications).
2. In the U.S. application, include a claim for priority that identifies the foreign application. For applications filed on/after 9/16/12, this must be in an ADS.
3. File a certified copy of the foreign application, unless it was previously filed or is available to the USPTO via a priority document exchange program.

See MPEP 213 – 216 for the detailed requirements. Some deadlines can be extended on petition if unintentionally delayed.

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:

• The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
• The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
• The later-filed application must contain a specific reference to the prior-filed application
• The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78

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

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

For an original application filed under 35 U.S.C. 111(a) on or after March 16, 2013, a certified copy of the foreign application must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application, except as provided in 37 CFR 1.55(h), (i), and (j). See MPEP 215.02.

For an international application entering the national stage under 35 U.S.C. 371 in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior foreign application, except as provided in 37 CFR 1.55(h), (i), and (j). See MPEP 215.02.

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

For an original application filed under 35 U.S.C. 111(a) on or after March 16, 2013, a certified copy of the foreign application must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application, except as provided in 37 CFR 1.55(h), (i), and (j). See MPEP 215.02.

For an international application entering the national stage under 35 U.S.C. 371 in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior foreign application, except as provided in 37 CFR 1.55(h), (i), and (j). See MPEP 215.02.

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

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

To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:

• The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
• The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
• The later-filed application must contain a specific reference to the prior-filed application
• The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78

To claim priority to an earlier-filed foreign application, the applicant must:

1. File the U.S. application within 12 months of the foreign application’s filing date (6 months for design applications).
2. In the U.S. application, include a claim for priority that identifies the foreign application. For applications filed on/after 9/16/12, this must be in an ADS.
3. File a certified copy of the foreign application, unless it was previously filed or is available to the USPTO via a priority document exchange program.

See MPEP 213 – 216 for the detailed requirements. Some deadlines can be extended on petition if unintentionally delayed.

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

For an original application filed under 35 U.S.C. 111(a) on or after March 16, 2013, a certified copy of the foreign application must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application, except as provided in 37 CFR 1.55(h), (i), and (j). See MPEP 215.02.

For an international application entering the national stage under 35 U.S.C. 371 in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior foreign application, except as provided in 37 CFR 1.55(h), (i), and (j). See MPEP 215.02.

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

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

To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:

• The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
• The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
• The later-filed application must contain a specific reference to the prior-filed application
• The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78

To claim priority to an earlier-filed foreign application, the applicant must:

1. File the U.S. application within 12 months of the foreign application’s filing date (6 months for design applications).
2. In the U.S. application, include a claim for priority that identifies the foreign application. For applications filed on/after 9/16/12, this must be in an ADS.
3. File a certified copy of the foreign application, unless it was previously filed or is available to the USPTO via a priority document exchange program.

See MPEP 213 – 216 for the detailed requirements. Some deadlines can be extended on petition if unintentionally delayed.