Patent Law FAQ

The time limit for filing a certified copy of a foreign application depends on the type of application:

1. For applications under 35 U.S.C. 111(a): 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, as stated in 37 CFR 1.55(f)(1).
2. For applications under 35 U.S.C. 371 (national stage applications): A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT, as per 37 CFR 1.55(f)(2).

If these time limits are not met, a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in § 1.17(g) must accompany the certified copy.

To learn more:

• certified copy
• foreign application
• time limit
• 37 CFR 1.55

To learn more:

• 37 CFR 1.55

What is the significance of the ‘time period set in 37 CFR 1.55’ for filing priority claims?

The time period set in 37 CFR 1.55 is crucial for securing your priority claim in a patent application. MPEP 213.04 states: ‘The time period set in 37 CFR 1.55 for filing a priority claim and certified copy cannot be extended.’ This strict deadline ensures that priority claims are made promptly, allowing for efficient examination and preventing delays in the patent process. Failing to meet this deadline can result in the waiver of your priority claim, potentially affecting the patentability of your invention if intervening prior art exists. It’s essential to be aware of and adhere to this time period to protect your invention’s priority date.

To learn more:

• 37 CFR 1.55
• priority claim
• filing deadline
• patent application

To learn more:

• 37 CFR 1.55

The deadline for filing an unintentionally delayed priority claim is the later of:

• Four months from the actual filing date of the later-filed application, or
• Sixteen months from the filing date of the prior application

This is stated in 37 CFR 1.55(d)(1) for foreign priority claims and 37 CFR 1.78(a)(4) for domestic benefit claims. However, a petition may be filed to accept an unintentionally delayed claim under 37 CFR 1.55(e) or 37 CFR 1.78(c) and (e) after this period.

As stated in MPEP 214.02: ‘A petition to accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) requires:’

• 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 (§ 1.76(b)(6)), identifying 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, unless previously submitted;
• The petition fee as set forth in § 1.17(m); and
• A statement that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional.

To learn more:

• unintentionally delayed priority claim
• deadline
• petition
• 37 CFR 1.55
• 37 CFR 1.78

To learn more:

• 37 CFR 1.55
• 37 CFR 1.78

What happens if I fail to file a priority claim within the time period set in 37 CFR 1.55?

If you fail to file a priority claim within the time period set in 37 CFR 1.55, your priority claim will be considered waived. The MPEP states: ‘If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.’ This means that if you miss the deadline, you may lose the benefit of the earlier filing date, which could potentially affect the patentability of your invention if intervening prior art exists.

To learn more:

• priority claim
• filing deadline
• 37 CFR 1.55
• certificate of correction

To learn more:

• 37 CFR 1.55

To file a certificate of correction to perfect a foreign priority claim, you must meet the following requirements:

1. The priority claim under 37 CFR 1.55 was timely filed in the application but was not included on the patent due to failure to provide a certified copy.
2. A grantable petition under 37 CFR 1.55(f) or (g) must be filed, which includes:
   • The fee set forth in 37 CFR 1.17(g)
   • A showing of good and sufficient cause for the delay in filing the certified copy
3. The correction must not require further examination.

As stated in the MPEP, Where the priority claim required under 37 CFR 1.55 was timely filed in the application but was not included on the patent because the requirement under 37 CFR 1.55 for a certified copy was not satisfied, the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a grantable petition under 37 CFR 1.55(f) or, in the case of a design application, a grantable petition under 37 CFR 1.55(g).

To learn more:

• certificate of correction
• foreign priority claim
• patent correction
• 37 CFR 1.55

To learn more:

• 37 CFR 1.55

In a continuing application, you can satisfy the requirement for a certified copy of a foreign application without actually filing the certified copy again. According to 37 CFR 1.55(h):

The requirement for a certified copy of the foreign application will be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and the prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.

This means that if you have already filed a certified copy in a parent application, you can simply identify that application as containing the certified copy when filing your continuing application. This approach can save time and reduce the paperwork required for perfecting priority claims in continuing applications.

To learn more:

• certified copy
• foreign application
• continuing application
• 37 CFR 1.55

To learn more:

• 37 CFR 1.55

For transition applications, 37 CFR 1.55 and 1.78 require a statement if:

• The application contains or contained a claim with an effective filing date on or after March 16, 2013
• The statement must be provided within specified time limits

The MPEP notes: “The statement provisions of 37 CFR 1.55 and 1.78 require that if the later-filed transition application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect.” (MPEP 210)

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 requirements for claiming priority to a foreign application under 37 CFR 1.55 include:

• A claim for priority identifying the foreign application
• For applications filed on or after September 16, 2012, the claim for priority must be in the application data sheet (ADS)
• For applications filed before September 16, 2012, the claim for priority must be in the ADS or in the oath or declaration
• Filing a certified copy of the foreign application within specified time periods
• Meeting other requirements such as translations for non-English language applications

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, 35 U.S.C. 119(b)(1) requires a claim for priority identifying the foreign application. … Thus for all applications filed on or after September 16, 2012, a claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b) to the prior application must be presented in the application data sheet.”

The key requirements for claiming foreign priority under 37 CFR 1.55 include:

• Filing a claim for priority in the application data sheet (for applications filed on or after September 16, 2012)
• Filing the application within the required time period
• Providing a certified copy of the foreign application
• Providing an English translation if necessary

37 CFR 1.55(d) “contains provisions relating to the time for filing a priority claim in an application filed under 35 U.S.C. 111(a) and in an application entering the national stage under 35 U.S.C. 371” (MPEP 210)

Under 37 CFR 1.55(i), the requirement for a certified copy of the foreign application will be considered satisfied if:

1. The foreign application was filed in a foreign intellectual property office participating with the USPTO in a bilateral or multilateral priority document exchange agreement;
2. The claim for priority is presented in an application data sheet, identifying the foreign application and including the information necessary for the participating foreign office to provide the USPTO with access to the foreign application; and
3. The copy of the foreign application is received by the USPTO from the participating foreign office, or a certified copy is filed, within the time period specified in 37 CFR 1.55(g)(1).

In addition, if the foreign application was not filed in a participating office directly, but a certified copy was filed in an application subsequently filed in a participating office that permits the USPTO to obtain a copy, the applicant must also file a request in a separate document that the USPTO obtain a copy of the foreign application from the participating office. See MPEP 215.01.

Yes, under 37 CFR 1.55(j), the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f) will be considered satisfied if:

1. A copy of the original foreign application clearly labeled as “Interim Copy,” including the specification, and any drawings or claims upon which it is based, is filed in the Office together with a separate cover sheet identifying the foreign application and stating that the copy is a true copy of the original application as filed; and
2. The copy of the foreign application and cover sheet are filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), or four months from the date the national stage commenced under 35 U.S.C. 371(b) or (f) of an international application.

However, a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. See MPEP 215.02(b).

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.

Under 37 CFR 1.55(i), the requirement for a certified copy of the foreign application will be considered satisfied if:

1. The foreign application was filed in a foreign intellectual property office participating with the USPTO in a bilateral or multilateral priority document exchange agreement;
2. The claim for priority is presented in an application data sheet, identifying the foreign application and including the information necessary for the participating foreign office to provide the USPTO with access to the foreign application; and
3. The copy of the foreign application is received by the USPTO from the participating foreign office, or a certified copy is filed, within the time period specified in 37 CFR 1.55(g)(1).

In addition, if the foreign application was not filed in a participating office directly, but a certified copy was filed in an application subsequently filed in a participating office that permits the USPTO to obtain a copy, the applicant must also file a request in a separate document that the USPTO obtain a copy of the foreign application from the participating office. See MPEP 215.01.

Yes, under 37 CFR 1.55(j), the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f) will be considered satisfied if:

1. A copy of the original foreign application clearly labeled as “Interim Copy,” including the specification, and any drawings or claims upon which it is based, is filed in the Office together with a separate cover sheet identifying the foreign application and stating that the copy is a true copy of the original application as filed; and
2. The copy of the foreign application and cover sheet are filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), or four months from the date the national stage commenced under 35 U.S.C. 371(b) or (f) of an international application.

However, a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. See MPEP 215.02(b).

For transition applications, 37 CFR 1.55 and 1.78 require a statement if:

• The application contains or contained a claim with an effective filing date on or after March 16, 2013
• The statement must be provided within specified time limits

The MPEP notes: “The statement provisions of 37 CFR 1.55 and 1.78 require that if the later-filed transition application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect.” (MPEP 210)

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 time limit for filing a certified copy of a foreign application depends on the type of application:

1. For applications under 35 U.S.C. 111(a): 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, as stated in 37 CFR 1.55(f)(1).
2. For applications under 35 U.S.C. 371 (national stage applications): A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT, as per 37 CFR 1.55(f)(2).

If these time limits are not met, a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in § 1.17(g) must accompany the certified copy.

To learn more:

• certified copy
• foreign application
• time limit
• 37 CFR 1.55

To learn more:

• 37 CFR 1.55

What is the significance of the ‘time period set in 37 CFR 1.55’ for filing priority claims?

The time period set in 37 CFR 1.55 is crucial for securing your priority claim in a patent application. MPEP 213.04 states: ‘The time period set in 37 CFR 1.55 for filing a priority claim and certified copy cannot be extended.’ This strict deadline ensures that priority claims are made promptly, allowing for efficient examination and preventing delays in the patent process. Failing to meet this deadline can result in the waiver of your priority claim, potentially affecting the patentability of your invention if intervening prior art exists. It’s essential to be aware of and adhere to this time period to protect your invention’s priority date.

To learn more:

• 37 CFR 1.55
• priority claim
• filing deadline
• patent application

To learn more:

• 37 CFR 1.55

The deadline for filing an unintentionally delayed priority claim is the later of:

• Four months from the actual filing date of the later-filed application, or
• Sixteen months from the filing date of the prior application

This is stated in 37 CFR 1.55(d)(1) for foreign priority claims and 37 CFR 1.78(a)(4) for domestic benefit claims. However, a petition may be filed to accept an unintentionally delayed claim under 37 CFR 1.55(e) or 37 CFR 1.78(c) and (e) after this period.

As stated in MPEP 214.02: ‘A petition to accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) requires:’

• 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 (§ 1.76(b)(6)), identifying 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, unless previously submitted;
• The petition fee as set forth in § 1.17(m); and
• A statement that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional.

To learn more:

• unintentionally delayed priority claim
• deadline
• petition
• 37 CFR 1.55
• 37 CFR 1.78

To learn more:

• 37 CFR 1.55
• 37 CFR 1.78

What happens if I fail to file a priority claim within the time period set in 37 CFR 1.55?

If you fail to file a priority claim within the time period set in 37 CFR 1.55, your priority claim will be considered waived. The MPEP states: ‘If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.’ This means that if you miss the deadline, you may lose the benefit of the earlier filing date, which could potentially affect the patentability of your invention if intervening prior art exists.

To learn more:

• priority claim
• filing deadline
• 37 CFR 1.55
• certificate of correction

To learn more:

• 37 CFR 1.55

To file a certificate of correction to perfect a foreign priority claim, you must meet the following requirements:

1. The priority claim under 37 CFR 1.55 was timely filed in the application but was not included on the patent due to failure to provide a certified copy.
2. A grantable petition under 37 CFR 1.55(f) or (g) must be filed, which includes:
   • The fee set forth in 37 CFR 1.17(g)
   • A showing of good and sufficient cause for the delay in filing the certified copy
3. The correction must not require further examination.

As stated in the MPEP, Where the priority claim required under 37 CFR 1.55 was timely filed in the application but was not included on the patent because the requirement under 37 CFR 1.55 for a certified copy was not satisfied, the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a grantable petition under 37 CFR 1.55(f) or, in the case of a design application, a grantable petition under 37 CFR 1.55(g).

To learn more:

• certificate of correction
• foreign priority claim
• patent correction
• 37 CFR 1.55

To learn more:

• 37 CFR 1.55

The requirements for claiming priority to a foreign application under 37 CFR 1.55 include:

• A claim for priority identifying the foreign application
• For applications filed on or after September 16, 2012, the claim for priority must be in the application data sheet (ADS)
• For applications filed before September 16, 2012, the claim for priority must be in the ADS or in the oath or declaration
• Filing a certified copy of the foreign application within specified time periods
• Meeting other requirements such as translations for non-English language applications

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, 35 U.S.C. 119(b)(1) requires a claim for priority identifying the foreign application. … Thus for all applications filed on or after September 16, 2012, a claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b) to the prior application must be presented in the application data sheet.”

The key requirements for claiming foreign priority under 37 CFR 1.55 include:

• Filing a claim for priority in the application data sheet (for applications filed on or after September 16, 2012)
• Filing the application within the required time period
• Providing a certified copy of the foreign application
• Providing an English translation if necessary

37 CFR 1.55(d) “contains provisions relating to the time for filing a priority claim in an application filed under 35 U.S.C. 111(a) and in an application entering the national stage under 35 U.S.C. 371” (MPEP 210)

Under 37 CFR 1.55(i), the requirement for a certified copy of the foreign application will be considered satisfied if:

1. The foreign application was filed in a foreign intellectual property office participating with the USPTO in a bilateral or multilateral priority document exchange agreement;
2. The claim for priority is presented in an application data sheet, identifying the foreign application and including the information necessary for the participating foreign office to provide the USPTO with access to the foreign application; and
3. The copy of the foreign application is received by the USPTO from the participating foreign office, or a certified copy is filed, within the time period specified in 37 CFR 1.55(g)(1).

In addition, if the foreign application was not filed in a participating office directly, but a certified copy was filed in an application subsequently filed in a participating office that permits the USPTO to obtain a copy, the applicant must also file a request in a separate document that the USPTO obtain a copy of the foreign application from the participating office. See MPEP 215.01.

In a continuing application, you can satisfy the requirement for a certified copy of a foreign application without actually filing the certified copy again. According to 37 CFR 1.55(h):

The requirement for a certified copy of the foreign application will be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and the prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.

This means that if you have already filed a certified copy in a parent application, you can simply identify that application as containing the certified copy when filing your continuing application. This approach can save time and reduce the paperwork required for perfecting priority claims in continuing applications.

To learn more:

• certified copy
• foreign application
• continuing application
• 37 CFR 1.55

To learn more:

• 37 CFR 1.55

Yes, under 37 CFR 1.55(j), the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f) will be considered satisfied if:

1. A copy of the original foreign application clearly labeled as “Interim Copy,” including the specification, and any drawings or claims upon which it is based, is filed in the Office together with a separate cover sheet identifying the foreign application and stating that the copy is a true copy of the original application as filed; and
2. The copy of the foreign application and cover sheet are filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), or four months from the date the national stage commenced under 35 U.S.C. 371(b) or (f) of an international application.

However, a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. See MPEP 215.02(b).

For transition applications, 37 CFR 1.55 and 1.78 require a statement if:

• The application contains or contained a claim with an effective filing date on or after March 16, 2013
• The statement must be provided within specified time limits

The MPEP notes: “The statement provisions of 37 CFR 1.55 and 1.78 require that if the later-filed transition application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect.” (MPEP 210)

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 time limit for filing a certified copy of a foreign application depends on the type of application:

1. For applications under 35 U.S.C. 111(a): 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, as stated in 37 CFR 1.55(f)(1).
2. For applications under 35 U.S.C. 371 (national stage applications): A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT, as per 37 CFR 1.55(f)(2).

If these time limits are not met, a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in § 1.17(g) must accompany the certified copy.

To learn more:

• certified copy
• foreign application
• time limit
• 37 CFR 1.55

To learn more:

• 37 CFR 1.55

What is the significance of the ‘time period set in 37 CFR 1.55’ for filing priority claims?

The time period set in 37 CFR 1.55 is crucial for securing your priority claim in a patent application. MPEP 213.04 states: ‘The time period set in 37 CFR 1.55 for filing a priority claim and certified copy cannot be extended.’ This strict deadline ensures that priority claims are made promptly, allowing for efficient examination and preventing delays in the patent process. Failing to meet this deadline can result in the waiver of your priority claim, potentially affecting the patentability of your invention if intervening prior art exists. It’s essential to be aware of and adhere to this time period to protect your invention’s priority date.

To learn more:

• 37 CFR 1.55
• priority claim
• filing deadline
• patent application

To learn more:

• 37 CFR 1.55

The deadline for filing an unintentionally delayed priority claim is the later of:

• Four months from the actual filing date of the later-filed application, or
• Sixteen months from the filing date of the prior application

This is stated in 37 CFR 1.55(d)(1) for foreign priority claims and 37 CFR 1.78(a)(4) for domestic benefit claims. However, a petition may be filed to accept an unintentionally delayed claim under 37 CFR 1.55(e) or 37 CFR 1.78(c) and (e) after this period.

As stated in MPEP 214.02: ‘A petition to accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) requires:’

• 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 (§ 1.76(b)(6)), identifying 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, unless previously submitted;
• The petition fee as set forth in § 1.17(m); and
• A statement that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional.

To learn more:

• unintentionally delayed priority claim
• deadline
• petition
• 37 CFR 1.55
• 37 CFR 1.78

To learn more:

• 37 CFR 1.55
• 37 CFR 1.78

What happens if I fail to file a priority claim within the time period set in 37 CFR 1.55?

If you fail to file a priority claim within the time period set in 37 CFR 1.55, your priority claim will be considered waived. The MPEP states: ‘If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.’ This means that if you miss the deadline, you may lose the benefit of the earlier filing date, which could potentially affect the patentability of your invention if intervening prior art exists.

To learn more:

• priority claim
• filing deadline
• 37 CFR 1.55
• certificate of correction

To learn more:

• 37 CFR 1.55

To file a certificate of correction to perfect a foreign priority claim, you must meet the following requirements:

1. The priority claim under 37 CFR 1.55 was timely filed in the application but was not included on the patent due to failure to provide a certified copy.
2. A grantable petition under 37 CFR 1.55(f) or (g) must be filed, which includes:
   • The fee set forth in 37 CFR 1.17(g)
   • A showing of good and sufficient cause for the delay in filing the certified copy
3. The correction must not require further examination.

As stated in the MPEP, Where the priority claim required under 37 CFR 1.55 was timely filed in the application but was not included on the patent because the requirement under 37 CFR 1.55 for a certified copy was not satisfied, the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, accompanied by a grantable petition under 37 CFR 1.55(f) or, in the case of a design application, a grantable petition under 37 CFR 1.55(g).

To learn more:

• certificate of correction
• foreign priority claim
• patent correction
• 37 CFR 1.55

To learn more:

• 37 CFR 1.55

The requirements for claiming priority to a foreign application under 37 CFR 1.55 include:

• A claim for priority identifying the foreign application
• For applications filed on or after September 16, 2012, the claim for priority must be in the application data sheet (ADS)
• For applications filed before September 16, 2012, the claim for priority must be in the ADS or in the oath or declaration
• Filing a certified copy of the foreign application within specified time periods
• Meeting other requirements such as translations for non-English language applications

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, 35 U.S.C. 119(b)(1) requires a claim for priority identifying the foreign application. … Thus for all applications filed on or after September 16, 2012, a claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b) to the prior application must be presented in the application data sheet.”

The key requirements for claiming foreign priority under 37 CFR 1.55 include:

• Filing a claim for priority in the application data sheet (for applications filed on or after September 16, 2012)
• Filing the application within the required time period
• Providing a certified copy of the foreign application
• Providing an English translation if necessary

37 CFR 1.55(d) “contains provisions relating to the time for filing a priority claim in an application filed under 35 U.S.C. 111(a) and in an application entering the national stage under 35 U.S.C. 371” (MPEP 210)

Under 37 CFR 1.55(i), the requirement for a certified copy of the foreign application will be considered satisfied if:

1. The foreign application was filed in a foreign intellectual property office participating with the USPTO in a bilateral or multilateral priority document exchange agreement;
2. The claim for priority is presented in an application data sheet, identifying the foreign application and including the information necessary for the participating foreign office to provide the USPTO with access to the foreign application; and
3. The copy of the foreign application is received by the USPTO from the participating foreign office, or a certified copy is filed, within the time period specified in 37 CFR 1.55(g)(1).

In addition, if the foreign application was not filed in a participating office directly, but a certified copy was filed in an application subsequently filed in a participating office that permits the USPTO to obtain a copy, the applicant must also file a request in a separate document that the USPTO obtain a copy of the foreign application from the participating office. See MPEP 215.01.

In a continuing application, you can satisfy the requirement for a certified copy of a foreign application without actually filing the certified copy again. According to 37 CFR 1.55(h):

The requirement for a certified copy of the foreign application will be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and the prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.

This means that if you have already filed a certified copy in a parent application, you can simply identify that application as containing the certified copy when filing your continuing application. This approach can save time and reduce the paperwork required for perfecting priority claims in continuing applications.

To learn more:

• certified copy
• foreign application
• continuing application
• 37 CFR 1.55

To learn more:

• 37 CFR 1.55

Yes, under 37 CFR 1.55(j), the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f) will be considered satisfied if:

1. A copy of the original foreign application clearly labeled as “Interim Copy,” including the specification, and any drawings or claims upon which it is based, is filed in the Office together with a separate cover sheet identifying the foreign application and stating that the copy is a true copy of the original application as filed; and
2. The copy of the foreign application and cover sheet are filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), or four months from the date the national stage commenced under 35 U.S.C. 371(b) or (f) of an international application.

However, a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. See MPEP 215.02(b).