Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
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MPEP 200 - Types and Status of Application; Benefit and Priority (68)
An international design application designating the United States can claim priority based on several types of prior applications. According to MPEP 213.07:
Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.
The types of prior applications that can be used for claiming priority include:
- A prior foreign application
- An international application (PCT) designating at least one country other than the United States
- A prior international design application designating at least one country other than the United States
These priority claims must comply with the conditions and requirements set forth in 35 U.S.C. 119(a)-(d) and 172, as well as the Hague Agreement and its Regulations.
For more information on foreign priority, visit: foreign priority.
For more information on Hague Agreement, visit: Hague Agreement.
For more information on prior applications, visit: prior applications.
When examining a patent application, it’s crucial for the examiner to verify and indicate whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met. These sections relate to the right of priority for foreign applications.
The MPEP instructs: However, the examiner must still indicate in the Office action and on the bib-data sheet whether the conditions of35 U.S.C. 119(a)-(d)or(f)have been met.
(MPEP 202)
This means the examiner should:
- Review the foreign priority claim
- Determine if all conditions for the claim have been satisfied
- Indicate the status of the claim in the Office action
- Mark the bib-data sheet accordingly
If the conditions are met, this information will be reflected on the front page of the issued patent and in the Official Gazette listing. For more information on foreign priority claims, see MPEP ยง 213.
For more information on foreign priority, visit: foreign priority.
For more information on patent examination, visit: patent examination.
To claim priority based on an inventor’s certificate, applicants must meet specific requirements outlined in 37 CFR 1.55(l):
To claim the right of priority on the basis of an application for an inventor’s certificate in such a country under 35 U.S.C. 119(d), the applicant when submitting a claim for such right as specified in this section, must include an affidavit or declaration.
The affidavit or declaration must state that:
- The applicant had the option to file for either a patent or an inventor’s certificate in the foreign country
- This option existed for the particular subject matter of the invention
It’s important to note that the affidavit is only required to ascertain the general existence of this option in the foreign country, not to probe into the eligibility of the particular applicant.
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The transition application statement is a requirement for certain applications that bridge the pre-AIA and AIA periods. Here are the key points:
- It applies to nonprovisional applications filed on or after March 16, 2013, that claim priority to a foreign application filed before March 16, 2013.
- The statement is required if the application contains or contained a claim to an invention with an effective filing date on or after March 16, 2013.
- The applicant must provide this statement within a specified time period.
- International design applications are exempt from this requirement.
As stated in the MPEP: If a nonprovisional application filed on or after March 16, 2013, claims priority to a foreign application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date (as defined in 35 U.S.C. 100(i)) on or after March 16, 2013, the applicant must provide a statement to that effect within a specified time period.
This requirement helps the USPTO determine which law applies to the application.
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The time limit for filing a delayed claim for foreign priority after patent issuance is specified in 37 CFR 1.55(g). According to MPEP 216.01:
‘The time period set in 37 CFR 1.55(g) for filing a claim for priority and the certified copy required under 37 CFR 1.55(f) is the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.’
However, for patents that have already been issued, the claim must be filed within the period set forth in 37 CFR 1.55(g). This typically means that the claim should be filed as soon as possible after realizing the oversight, as any delay beyond the statutory period would require explanation and potentially affect the grant of the petition.
For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) sets the time limit for filing a certified copy of the foreign application. The certified copy 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
This time limit does not apply to design applications. For international applications entering the national stage under 35 U.S.C. 371, the time limit is set forth in 37 CFR 1.55(f)(2).
It’s important to note that there are exceptions to these time limits, as provided in 37 CFR 1.55(h), (i), and (j).
For more information on certified copy, visit: certified copy.
For more information on foreign priority, visit: foreign priority.
For more information on time limit, visit: time limit.
For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) requires that a certified copy of the foreign application 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
This time period does not apply to design applications. There are three exceptions to this requirement, as outlined in 37 CFR 1.55(h), (i), and (j).
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What is the significance of the Paris Convention in foreign priority claims?
The Paris Convention plays a crucial role in foreign priority claims for patent applications. Its significance includes:
- Establishing the right of priority for patent applications among member countries.
- Allowing applicants to file in multiple countries while maintaining the original filing date.
- Providing a 12-month priority period for utility patents (6 months for design patents).
- Ensuring equal treatment of foreign and domestic applicants in member countries.
According to MPEP 213: “The right of priority is defined in Article 4 of the Paris Convention for the Protection of Industrial Property and is based on the first filing in a Paris Convention country.” This convention facilitates international patent protection by allowing inventors to secure priority dates across multiple jurisdictions.
For a valid foreign priority claim, the U.S. application and the foreign application must name the same inventor or have at least one joint inventor in common. This requirement ensures that the right of priority is properly linked between the applications.
As stated in MPEP 213.02: “Pursuant to 35 U.S.C. 119(a), the foreign application must have been filed by the same applicant as the applicant in the United States, or by applicant’s legal representatives or assigns. Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”
The MPEP further clarifies: “Joint inventors A and B in a nonprovisional application filed in the United States Patent and Trademark Office may properly claim the benefit of an application filed in a foreign country by A and another application filed in a foreign country by B, i.e., A and B may each claim the benefit of their foreign filed applications.”
This requirement ensures that the priority right is properly linked to the inventive entity responsible for the invention in both the foreign and U.S. applications.
For more information on foreign priority, visit: foreign priority.
For more information on joint inventors, visit: joint inventors.
The affidavit required for claiming priority based on an inventor’s certificate serves a specific purpose, as outlined in MPEP 213.05:
The affidavit or declaration specified under 37 CFR 1.55(l) is only required for the purpose of ascertaining whether, in the country where the application for an inventor’s certificate originated, this option generally existed for applicants with respect to the particular subject matter of the invention involved.
The affidavit is not intended to investigate the specific applicant’s eligibility to exercise the option in their particular case. Rather, it’s meant to confirm that in the country where the inventor’s certificate was filed, applicants generally had the right to choose between applying for a patent or an inventor’s certificate for the subject matter in question.
This requirement ensures compliance with the treaty and statute governing priority rights, while recognizing that some countries may have restrictions based on factors such as employment or nationality.
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When a claim to priority and certified copy of a foreign application are received during the pendency of a patent application, the examiner generally follows these steps:
- Checks for obvious formal defects in the documents
- Verifies that the documents correspond to the application identified in the application data sheet
- For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, ensures the claim for foreign priority is timely
The examiner does not typically examine the subject matter to determine if the applicant is entitled to the benefit of the foreign filing date unless it’s necessary for patentability reasons. As stated in the MPEP, The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons.
For more information on application data sheet, visit: application data sheet.
For more information on certified copy, visit: certified copy.
For more information on foreign priority, visit: foreign priority.
For more information on patent examination, visit: patent examination.
The Priority Document Exchange (PDX) program is a system that allows participating intellectual property offices to exchange priority documents electronically. This program simplifies the process of submitting certified copies of foreign priority applications for patent applicants.
According to the MPEP, The Office website provides information concerning the priority document exchange program ( www.uspto.gov/patents/basics/international-protection/electronic-priority-document-exchange-pdx )
. This information includes participating offices and instructions for accessing foreign applications.
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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.
In the context of foreign priority claims, there’s an important distinction between a ‘country’ and a ‘regional patent office’:
- Country: A sovereign nation that has its own patent system and can issue patents directly.
- Regional Patent Office: An intergovernmental organization that processes patent applications on behalf of multiple member countries.
The MPEP states: The right of priority may be based upon an application filed in a foreign country or in a regional patent office.
(MPEP 213)
Regional patent offices, such as the European Patent Office (EPO) or the African Regional Intellectual Property Organization (ARIPO), allow applicants to file a single application that can potentially lead to patent protection in multiple member countries.
The terms ‘right of priority’ and ‘benefit of an earlier filing date’ refer to different concepts in US patent law:
- Right of priority: This term is used in the context of foreign priority under 35 U.S.C. 119(a)-(d) and 365(a) and (b). It allows a US application to claim the priority date of a foreign application filed within the previous 12 months.
- Benefit of an earlier filing date: This term is used for domestic benefit under 35 U.S.C. 119(e) and 120. It allows a US application to claim the filing date of an earlier US provisional or nonprovisional application.
As stated in MPEP 216: ‘The right of priority is a statutory right, which is not considered an application property right.’
For more information on domestic benefit, visit: domestic benefit.
For more information on foreign priority, visit: foreign priority.
For more information on right of priority, visit: right of priority.
The deadline for submitting a certified copy of a foreign priority application depends on the filing date of the U.S. application. According to MPEP 213.02:
In the case of a U.S. application filed on or after March 16, 2013, the certified copy 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.
If the certified copy is not filed within this timeframe, the applicant must file a petition to accept a delayed submission and pay the associated fee.
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The deadline for filing a foreign priority claim in a U.S. patent application depends on the type of application:
- For applications filed under 35 U.S.C. 111(a), the claim 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
- For international applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set by the PCT and its Regulations
- For design patent applications, the claim can be made at any time during the pendency of the application
As stated in MPEP 214.01: “The time periods set forth in 37 CFR 1.55(d) do not apply to design applications.”
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For applications filed before March 16, 2013, the certified copy of the foreign application must be filed within the pendency of the application. According to 37 CFR 1.55(g)(1):
The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in ยง 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application.
However, it’s important to note that if the claim for priority or the certified copy is filed after the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction.
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The ‘In re Van Esdonk’ case (187 USPQ 671, Comm’r Pat. 1975) is an important precedent in patent law regarding the perfection of foreign priority claims. Key points about this case include:
- It involved a situation where a claim to foreign priority benefits had not been filed in the application prior to patent issuance.
- The application was a continuation of an earlier application that had satisfied the requirements of 35 U.S.C. 119(a)-(d) or (f).
- The Commissioner held that perfecting a priority claim in the parent application satisfies the statute for the continuation application.
The MPEP states: In re Van Esdonk, a claim to foreign priority benefits had not been filed in the application prior to issuance of the patent. However, the application was a continuation of an earlier application in which the requirements of 35 U.S.C. 119(a)-(d) or (f) had been satisfied. Accordingly, the Commissioner held that the ‘applicants’ perfection of a priority claim under 35 U.S.C. 119 in the parent application will satisfy the statute with respect to their continuation application.’
This case is significant because it allows for the perfection of foreign priority claims in continuation applications based on the parent application’s compliance, even after patent issuance.
When submitting an English language translation of a non-English language foreign priority application, the following requirements must be met:
- The translation must be of the certified copy of the foreign application as filed
- The translation must be submitted together with a statement that the translation of the certified copy is accurate
As stated in the MPEP: When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate.
For more information on certified copy, visit: certified copy.
For more information on foreign priority, visit: foreign priority.
An unintentionally delayed priority claim occurs when a claim for foreign priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) is not presented within the time period provided by 37 CFR 1.55(d). In such cases, the claim is considered to have been waived but may be accepted if the delay was unintentional.
As stated in the MPEP: “If a claim for priority is considered to have been waived under this section, the claim may be accepted if the priority claim was unintentionally delayed.”
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An inventor’s certificate is a form of intellectual property protection offered in some countries. It can form the basis for priority rights under certain conditions, as stated in 35 U.S.C. 119(d):
Applications for inventors’ certificates filed in a foreign country in which applicants have a right to apply, at their discretion, either for a patent or for an inventor’s certificate shall be treated in this country in the same manner and have the same effect for purpose of the right of priority under this section as applications for patents…
This means that if an applicant had the option to file for either a patent or an inventor’s certificate in the foreign country, they can claim priority based on the inventor’s certificate application in the United States.
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An interim copy of a foreign priority document is a copy that is submitted before the certified copy is available. The MPEP 213.02 provides guidance on when an interim copy is acceptable:
The Office may require that an ‘interim copy’ of the foreign application be furnished in the event that the certified copy of the foreign application is not filed within the time period set forth in 37 CFR 1.55(f) and an exception in 37 CFR 1.55(h), (i), or (j) is not applicable.
An interim copy must:
- Be filed within the later of 4 months from the filing date of the application or 16 months from the filing date of the prior foreign application
- Be a copy of the original foreign application
- Be accompanied by a statement that the copy is a true copy
Note: An interim copy does not substitute the requirement for a certified copy, which must still be filed during the pendency of the application.
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What happens if there’s an error in the foreign priority application number?
If there’s an error in the foreign priority application number, it can lead to serious consequences for the priority claim. The MPEP emphasizes the importance of accuracy:
“Errors in foreign priority claims may jeopardize the applicant’s priority claim.” (MPEP 214.04)
Consequences of errors may include:
- Rejection of the priority claim
- Loss of priority date
- Potential issues with patentability if prior art emerges in the intervening period
If an error is discovered, it’s crucial to promptly file a corrected Application Data Sheet (ADS) or a petition to correct the priority claim, depending on the timing and nature of the error. Always double-check the application number against the original foreign priority document to ensure accuracy.
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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 don’t file a foreign priority claim within the specified time period, the claim is considered to have been waived. As stated in MPEP 214.01: “Claims for foreign priority not presented within the time period specified in 37 CFR 1.55 are considered to have been waived.”
However, there is a possibility to file a petition to accept an unintentionally delayed priority claim. The MPEP further states: “If a claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b) is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it includes the required identification information and is accompanied by a grantable petition to accept the unintentionally delayed claim for priority.”
For more information on the process of filing an unintentionally delayed priority claim, refer to MPEP ยง 214.02.
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If a foreign priority claim in an original application filed under 35 U.S.C. 111(a) (other than a design application) is submitted after the time period set in 37 CFR 1.55 and without a petition under 37 CFR 1.55, the examiner may notify the applicant that the foreign priority claim will not be entered.
As stated in the MPEP: If the foreign priority claim in an original application filed under 35 U.S.C. 111(a) (other than a design application) is submitted after the time period set in 37 CFR 1.55 and without a petition under 37 CFR 1.55, the examiner may use form paragraph 2.21.01 to notify applicant that the foreign priority claim will not be entered.
In such cases, the applicant must file a petition for an unintentionally delayed priority claim under 37 CFR 1.55(e) to have the priority claim considered.
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If a foreign application was filed more than 12 months before the U.S. application and priority has not been restored, the examiner will use form paragraph 2.23 to notify the applicant that the claim for priority cannot be based on that application.
As stated in the MPEP: Where the earlier foreign application was filed more than 12 months prior to the U.S. application and priority has not been restored under PCT Rule 26bis.3 for an international application or upon a granted petition under 37 CFR 1.55(c), use form paragraph 2.23.
In such cases, the applicant may file a petition under 37 CFR 1.55(c) to restore the right of priority if:
- The subsequent application was filed within two months from the expiration of the twelve-month period
- The delay was unintentional
The petition must include specific elements, such as the priority claim, petition fee, and a statement about the unintentional delay.
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To perfect a claim for foreign priority after patent issuance, several documents are required. According to MPEP 216.01, the following must be submitted:
- A petition to accept an unintentionally delayed claim for priority
- The required petition fee
- A certified copy of the foreign application
- An English language translation of the foreign application (if not in English)
- A statement that the translation is accurate
The MPEP states: ‘In addition to the petition to accept an unintentionally delayed claim for priority and the required petition fee, the claim for priority must be made in an application data sheet (if the patent issued from a utility or plant application filed on or after September 16, 2012) or in a request for a certificate of correction, and a certified copy of the foreign application must be submitted.’
It’s important to note that the requirements may vary slightly depending on the specific circumstances of the application and patent. Consulting with a patent attorney or agent is advisable for ensuring all necessary documents are properly prepared and submitted.
To claim foreign priority in a U.S. application, you must file a claim for priority and submit a certified copy of the foreign application. MPEP 213.04 states: ‘The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application.’
For applications filed on or after September 16, 2012, the priority claim must be presented in an Application Data Sheet (ADS). The certified copy must be filed within the later of 4 months from the actual filing date or 16 months from the foreign filing date, with some exceptions.
For more information on certified copy, visit: certified copy.
For more information on foreign priority, visit: foreign priority.
What are the requirements for filing a priority claim and certified copy of a foreign application?
According to 37 CFR 1.55(g)(1), the claim for priority and the certified copy of the foreign application must be filed within the pendency of the application. The MPEP states:
“The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in ยง 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application.”
This requirement applies to all applications and ensures that priority claims are properly documented before the application is granted.
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What are the requirements for claiming priority to a foreign application?
To claim priority to a foreign application, several requirements must be met:
- The U.S. application must be filed within 12 months of the foreign application (or 6 months for design patents).
- The foreign application must be from a country that grants similar privileges to U.S. applicants (Paris Convention member or WTO member).
- The applicant must file a claim for priority and a certified copy of the foreign application.
- As stated in MPEP 213: “The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed before the patent is granted.”
It’s important to note that the subject matter claimed in the U.S. application must be adequately supported by the foreign application to receive the benefit of the earlier filing date.
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For an international design application designating the United States, the requirements for claiming foreign priority are as follows:
- The claim for priority can be made in accordance with the Hague Agreement and the Hague Agreement Regulations.
- The claim must comply with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172.
- Priority can be claimed with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.
The MPEP states: Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.
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According to MPEP 214.02, a petition to accept an unintentionally delayed claim for priority requires the following:
- The priority claim: This must be submitted in an application data sheet (ADS) as required by 35 U.S.C. 119(b), unless previously submitted.
- The petition fee: As set forth in 37 CFR 1.17(m).
- A statement of unintentional delay: A statement that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional.
The MPEP states: ‘The Director may require additional information where there is a question whether the delay was unintentional.’ This means that in some cases, additional documentation may be required to support the claim of unintentional delay.
It’s important to note that these requirements apply to priority claims under various statutes, including 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), 386(a), 365(c), 119(e), 120, and 121.
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- unintentionally delayed priority claim
- petition requirements
- ADS
- petition fee
- unintentional delay statement
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The inventorship requirements for claiming foreign priority are specific and important. Here are the key points:
- The U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.
- Priority rights do not exist if the foreign and U.S. applications have completely different sole inventors.
- Joint inventors can each claim the benefit of their separately filed foreign applications.
The MPEP clarifies: Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.
This requirement ensures a direct connection between the foreign priority application and the U.S. application claiming its benefit.
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A later-filed application for patent in the United States may claim the benefit of, or priority to, a prior application under certain conditions. These conditions are outlined in various U.S. statutes and regulations:
- For domestic benefit claims: 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78
- For foreign priority claims: 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55
The specific requirements and time frames may vary based on the filing date of the later-filed nonprovisional application and the type of priority or benefit claim being made.
For more information on domestic benefit, visit: domestic benefit.
For more information on foreign priority, visit: foreign priority.
For more information on prior-filed application, visit: prior-filed application.
How to retrieve a foreign priority document through PDX?
To retrieve a foreign priority document through PDX (Priority Document Exchange), follow these steps:
- Ensure the foreign office participates in PDX or WIPO DAS.
- File an application with the USPTO claiming foreign priority.
- Submit a request to retrieve the priority document using USPTO form PTO/SB/38 or through EFS-Web.
- Provide the necessary information, including the foreign application number and filing date.
- If using WIPO DAS, include the DAS access code provided by the foreign office.
According to MPEP 215.01: Applicants need not submit a copy of the foreign application if the foreign application was filed in a participating foreign intellectual property office, and the applicant provides sufficient information to the USPTO to retrieve the priority document.
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How should the foreign priority application number be formatted in an ADS?
When entering the foreign priority application number in an Application Data Sheet (ADS), it’s crucial to follow the proper format to ensure accurate identification. The MPEP states:
“The foreign application number should be identified in an application data sheet (ADS), rather than in a separate paper.” (MPEP 214.04)
The ADS should include:
- The correct application number
- The country or intellectual property authority where the application was filed
- The filing date of the priority application
It’s important to use the exact format as it appears on the foreign priority document to avoid any discrepancies or potential issues with the priority claim.
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To properly identify foreign priority applications in a patent application, applicants should follow the guidelines provided by the World Intellectual Property Organization (WIPO). The MPEP states:
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
Specifically, applicants should refer to:
- Part 7: Examples and Industrial Property Offices Practices
- Part 7.2.1: Presentation of Application Numbers
These resources provide the recommended format for citing foreign application numbers, ensuring accurate and complete relationships among patent documents.
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When a claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but before the patent is granted, special procedures apply.
According to the MPEP: 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.
To have the foreign priority claim or certified copy considered after publication of the patent:
- A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed
- For original applications under 35 U.S.C. 111(a) or national stage applications under 35 U.S.C. 371, a grantable petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55 and the petition fee must be filed with the certificate of correction
For more information on this process, refer to MPEP ยง 216.01.
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The USPTO recognizes that some countries have restrictions on who can apply for patents versus inventor’s certificates. As stated in MPEP 213.05:
It is recognized that certain countries that grant inventors’ certificates also provide by law that their own nationals who are employed in state enterprises may only receive inventors’ certificates and not patents on inventions made in connection with their employment. This will not impair their right to be granted priority in the United States based on the filing of the inventor’s certificate.
This means that even if an applicant was restricted to filing for an inventor’s certificate in their home country due to employment or nationality, they can still claim priority in the US based on that filing. The key factor is whether the option to file for either a patent or an inventor’s certificate generally existed in the country for the particular subject matter, not whether the specific applicant had that choice.
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The USPTO determines if a foreign country qualifies for priority rights based on specific criteria outlined in the MPEP. According to MPEP 213.01:
The right of priority is recognized only if the foreign country in which the original application was filed is recognized at the time of filing the application in the United States.
The USPTO considers several factors:
- The country must be a member of the Paris Convention for the Protection of Industrial Property or have a bilateral agreement with the United States.
- The country must grant similar priority rights to U.S. citizens.
- The country must be recognized by the U.S. Department of State.
The USPTO maintains a list of recognized countries and regional patent offices in MPEP 213.01, which is updated periodically to reflect changes in international relations and treaty memberships.
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, and there are no irregularities, the USPTO acknowledges receipt in the next Office action.
According to the MPEP: 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.
The examiner may use form paragraph 2.26, which states: Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
If the foreign priority papers have been filed in a parent application, the examiner will use form paragraph 2.27 to acknowledge this fact.
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The Patent Cooperation Treaty (PCT) interacts with foreign priority claims as outlined in MPEP 213. The PCT allows applicants to file a single international patent application that can later enter the national phase in multiple countries.
Key points regarding PCT and foreign priority:
- PCT applications can claim priority from earlier national or regional applications
- The priority period for PCT applications is also 12 months from the earliest priority date
- PCT applications themselves can serve as the basis for priority claims in subsequent national or regional applications
As stated in MPEP 213, “U.S. national applications may claim priority to an international application (PCT) filed in a PCT Receiving Office other than the United States Receiving Office.” This demonstrates the flexibility of the PCT system in international patent protection strategies.
How does the Paris Convention affect priority claims in US patent applications?
The Paris Convention plays a crucial role in international priority claims for US patent applications. According to MPEP 216:
‘The right of priority is based on the Paris Convention for the Protection of Industrial Property, which is adhered to by the United States.’
The Paris Convention affects US patent applications in the following ways:
- It allows applicants to claim priority from foreign applications filed in member countries
- It establishes a 12-month priority period for utility patents and a 6-month period for design patents
- It ensures that filing an application in one member country does not invalidate the novelty of the invention in other member countries
The implementation of the Paris Convention in US law is found in 35 U.S.C. 119(a)-(d), which outlines the requirements for claiming foreign priority.
For more information on foreign priority, visit: foreign priority.
For more information on international patent applications, visit: international patent applications.
For more information on Paris Convention, visit: Paris Convention.
Incorporation by reference for foreign priority applications is an important safeguard for applicants. Here’s how it works:
- For applications filed on or after September 21, 2004, a claim under 37 CFR 1.55 for priority of a prior-filed foreign application is considered an incorporation by reference of the prior-filed foreign priority application.
- This incorporation is subject to the conditions and requirements of 37 CFR 1.57(b).
- It applies to inadvertently omitted material from the foreign priority application.
- Applicants can provide an explicit incorporation by reference statement for broader coverage.
The MPEP states: For applications filed on or after September 21, 2004, a claim under 37 CFR 1.55 for priority of a prior-filed foreign application that was present on the filing date of the application is considered an incorporation by reference of the prior-filed foreign priority application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b).
This provision helps protect applicants from accidental omissions in their U.S. applications.
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How does the Electronic Priority Document Exchange (PDX) program work with the USPTO?
The Electronic Priority Document Exchange (PDX) program is a system that allows participating intellectual property offices to exchange priority documents electronically. According to MPEP 215.01, the USPTO participates in this program, which can simplify the process of submitting certified copies of foreign priority applications.
The MPEP states: The USPTO has agreements with the European Patent Office (EPO) and the Japan Patent Office (JPO) that enable the USPTO to obtain certified copies of foreign applications filed in those offices from their electronic records management systems.
Here’s how the PDX program works with the USPTO:
- If a foreign application was filed with a participating office (e.g., EPO or JPO), the applicant can request that office to make the certified copy of the priority document available to the USPTO.
- The applicant must submit a request to retrieve the priority document through the USPTO’s electronic filing system (EFS-Web or Patent Center).
- The USPTO will then attempt to retrieve the document electronically from the foreign office.
- If successful, this electronic retrieval satisfies the requirement to file a certified copy of the foreign priority application.
It’s important to note that the applicant is still responsible for ensuring that the certified copy is received by the USPTO within the required time frame, even when using the PDX program.
The America Invents Act’s (AIA) first-inventor-to-file (FITF) provision has significant implications for perfecting foreign priority claims, especially in cases where the foreign application has a pre-March 16, 2013 filing date. Key points include:
- If a patent was examined under FITF provisions, but the foreign priority application has a pre-AIA filing date, perfecting the priority claim may require further examination.
- In such cases, a certificate of correction is not sufficient, and a reissue application is necessary.
- This situation arises because changing the effective filing date could potentially subject the patent to a different statutory framework.
The MPEP states: In situations where further examination would be required, the petition should not be granted. For example, further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA.
This requirement ensures that patents are not inadvertently subjected to different legal standards without proper examination.
How does the AIA affect priority claims for applications filed on or after March 16, 2013?
The America Invents Act (AIA) significantly changed the U.S. patent system, particularly affecting priority claims for applications filed on or after March 16, 2013. According to MPEP 216:
“AIA 35 U.S.C. 100(i)(1)(B) provides that the effective filing date for a claimed invention in a patent or application for patent (other than a reissue application or reissued patent) is the filing date of the earliest application for which the patent or application is entitled to claim a right of foreign priority or domestic benefit.”
This change means that:
- The effective filing date can now include foreign priority dates, not just domestic benefit dates.
- The first-to-file system replaced the first-to-invent system for determining priority.
- Prior art is now determined based on the effective filing date, including foreign priority dates.
These changes have significant implications for inventors and patent practitioners in terms of strategy for filing applications and claiming priority, especially in a global context.
For more information on America Invents Act, visit: America Invents Act.
For more information on effective filing date, visit: effective filing date.
For more information on foreign priority, visit: foreign priority.
PDX for U.S. design applications has specific considerations, as explained in MPEP 215.01:
The USPTO will attempt retrieval of foreign applications to which priority is claimed in a U.S. design application where possible. The Spanish Patent and Trademark Office deposits certain ES industrial design applications for access by the USPTO via the WIPO DAS. Therefore, when the applicant claims foreign priority to an ES industrial design application and provides the WIPO DAS access code, the USPTO will attempt retrieval via the WIPO DAS.
Key points for design applications:
- The USPTO attempts to retrieve foreign priority documents for design applications where possible.
- Spanish industrial design applications are accessible through WIPO DAS.
- Applicants must provide the WIPO DAS access code for Spanish industrial design applications.
- The USPTO will attempt retrieval via WIPO DAS when the access code is provided.
This process helps streamline the priority document retrieval for design applications, particularly those with Spanish priority.
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To request retrieval of a foreign priority document through the Priority Document Exchange (PDX) program, follow these steps:
- Ensure that the foreign application is from a participating office in the PDX program.
- File an application data sheet (ADS) including a proper priority claim to the foreign application.
- Submit a request for retrieval of the foreign priority document.
The MPEP 215.01 states: “To authorize retrieval of a priority document via PDX, the applicant should submit the request electronically via EFS-Web using the Priority Document Exchange Request form (PTO/SB/38) or as a pre-grant (PGPub) request via Private PAIR.” It’s important to note that the request should be made 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.
To properly identify a foreign application when claiming priority, you must provide the following information:
- Application number
- Country or intellectual property authority
- Day, month, and year of filing
As stated in MPEP 214.01: “The claim for priority must be presented in an application data sheet (ยง 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.”
For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, this information must be provided in an application data sheet. For earlier applications, it may be included in the oath or declaration if not provided in an application data sheet.
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To file a foreign priority claim in a U.S. patent application, you must:
- File the claim within the specified time limit (see previous FAQ for details).
- 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.
- 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 (ยง1.76(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.
For international applications entering the national stage in the United States under 35 U.S.C. 371, the process for filing a foreign priority claim is different from regular U.S. applications. According to MPEP 214.01:
“The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371, except as provided in paragraph (e) of this section.”
This means that you need to follow the time limits specified in the Patent Cooperation Treaty (PCT) and its regulations when filing a priority claim for an international application entering the U.S. national stage.
For more detailed information on the timing and procedure for claiming priority in national stage applications, you should refer to MPEP ยง 213.06, which specifically deals with this topic.
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When claiming priority to a foreign application filed in a non-English language, you must provide an English translation of the foreign application. The MPEP 213.02 states:
If the foreign application is not in the English language, an English translation of the foreign application is also required. See 37 CFR 1.55(g)(3).
Additionally, you must submit:
- A statement that the translation is accurate
- The certified copy of the foreign application
These documents should be filed within the prescribed time period to properly establish the priority claim.
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An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.
According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”
The petition to restore the right of priority must include:
- The priority claim identifying the prior foreign application
- The petition fee
- A statement that the delay in filing was unintentional
The USPTO may require additional information to establish that the delay was unintentional.
For more information on foreign priority, visit: foreign priority.
For more information on priority restoration, visit: priority restoration.
For more information on unintentional delay, visit: unintentional delay.
No, the time period for filing a foreign priority claim cannot be extended. As stated in MPEP 214.01: “This time period is not extendable.”
However, if you miss the deadline, there is a possibility to file a petition to accept an unintentionally delayed priority claim. The MPEP states: “If a claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b) is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it includes the required identification information and is accompanied by a grantable petition to accept the unintentionally delayed claim for priority.”
For more information on unintentionally delayed priority claims, refer to MPEP ยง 214.02.
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Yes, you can perfect a claim for foreign priority after your patent has been issued. There are two main methods:
- Certificate of Correction: This is generally the preferred method if the requirements of 37 CFR 1.55 are met and no further examination is required. As stated in the MPEP,
Except in certain situations, a certificate of correction can generally be used to perfect a claim to foreign priority where a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim is filed with a request for a certificate of correction in an issued patent.
- Reissue Application: This method is necessary in situations where further examination would be required or when the requirements of 35 U.S.C. 119(a)-(d) or (f) were not satisfied in the patented application or its parent prior to issuance.
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Yes, you can claim priority to multiple foreign applications for the same invention, provided they meet certain criteria. The MPEP 213.02 addresses this situation:
Where two or more foreign applications are combined in a single U.S. application, to take advantage of the changes to 35 U.S.C. 103 or to claim both priority and the benefit of the filing date of an earlier application, the claimed subject matter in the U.S. application is entitled only to the earliest date to which it is entitled in any of the included foreign applications.
To claim priority to multiple foreign applications:
- Each foreign application must be properly identified in the application data sheet (ADS)
- Certified copies of all foreign applications must be submitted
- The U.S. application must be filed within 12 months of the earliest filed foreign application
Note: The effective priority date for any claimed subject matter will be the earliest applicable date from the foreign applications.
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Yes, under certain conditions, an applicant can claim priority based on an application for an inventor’s certificate. MPEP 213.05 explains: ‘An inventor’s certificate may form the basis for rights of priority under 35 U.S.C. 119(d) only when the country in which it is filed gives to applicants, at their discretion, the right to apply, on the same invention, either for a patent or for an inventor’s certificate.’
To claim priority to an inventor’s certificate, the applicant must file an affidavit or declaration stating that they had the option to file for either a patent or an inventor’s certificate in the foreign country.
For more information on foreign priority, visit: foreign priority.
Can I claim priority to a provisional application filed in a foreign country?
No, you cannot claim priority to a provisional application filed in a foreign country. The MPEP 213.02 states:
‘Note that a foreign filed provisional application is not eligible for priority benefit.’
Priority claims can only be made to non-provisional applications or other types of applications that are recognized under the Paris Convention. Provisional applications are unique to the U.S. patent system and are not recognized as priority documents in foreign countries or under international agreements.
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Yes, it is possible to claim priority to a foreign application after your U.S. patent has been issued. According to MPEP 216.01, a claim for priority under 35 U.S.C. 119(a)-(d) or (f) can be made after the patent is granted, subject to certain conditions:
- The claim must be made within the time period set forth in 37 CFR 1.55(g).
- A petition to accept an unintentionally delayed claim for priority must be filed.
- The required fee must be paid.
- A certified copy of the foreign application must be submitted.
The MPEP states: ‘A claim for priority under 35 U.S.C. 119(a)-(d) or (f) for the benefit of a prior foreign application may be made after the patent issues if the claim is accompanied by a grantable petition to accept an unintentionally delayed claim for priority.’
Can I add a benefit claim to a foreign priority application after filing?
Yes, you can add a benefit claim to a foreign priority application after filing, but specific procedures must be followed. According to MPEP 211.02(a):
“In the case of a design application, an original claim under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) to a prior U.S. application or PCT international application designating the United States may be made by the filing of an amendment to the specification within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.”
For utility applications, similar time frames apply. However, if you miss these deadlines, you must file a petition under 37 CFR 1.78 along with the petition fee to add the benefit claim. The petition must include:
- The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed application
- A statement that the entire delay was unintentional
- The petition fee set forth in 37 CFR 1.17(m)
It’s important to act promptly when adding or correcting benefit claims to avoid potential issues with patentability or patent term.
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Yes, a U.S. applicant can claim priority from a provisional application filed in a foreign country, provided certain conditions are met. The MPEP 213 states:
An applicant may claim the right of priority based on a prior foreign application under the Paris Convention and 35 U.S.C. 119(a)-(d) whether the foreign application is an application for a patent or for the registration of a utility model or an industrial design.
Key points to consider:
- The foreign country must be a recognized country or regional patent office as listed in MPEP 213.01.
- The provisional application must be the first filing of the invention in any country.
- The U.S. application must be filed within 12 months of the foreign provisional filing date.
- The applicant must comply with all requirements for claiming priority, including submitting a certified copy of the foreign application.
It’s important to note that not all countries have provisional application systems, so the term ‘provisional’ may have different meanings in different jurisdictions. Always consult with a patent attorney or agent for specific advice on international priority claims.
Yes, a US patent application can claim both foreign priority and domestic benefit simultaneously. This is known as a ‘multiple priority claim’ or ‘multiple benefit claim.’ The MPEP 216 states:
‘It is possible for a U.S. application to be entitled to the benefit of an earlier U.S. filing date and also to the right of priority of a foreign application.’
Here’s how it works:
- The application can claim foreign priority under 35 U.S.C. 119(a)-(d) to a foreign application filed within the past 12 months.
- At the same time, it can claim domestic benefit under 35 U.S.C. 120 to an earlier US application.
- The earlier US application can also claim foreign priority to the same foreign application.
This allows the US application to potentially have an effective filing date that is earlier than both its actual filing date and the filing date of the US application it claims benefit from.
For more information on domestic benefit, visit: domestic benefit.
For more information on foreign priority, visit: foreign priority.
Yes, design patent applications have different requirements for filing priority claims compared to utility patent applications. The main difference is in the time period for filing the claim. As stated in MPEP 214.01:
“The time periods set forth in 37 CFR 1.55(d) do not apply to design applications.”
For design applications, the MPEP further clarifies: “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 priority claim at any time while the application is pending, which provides more flexibility compared to utility patent applications.
For more detailed information on priority claims in design applications, you can refer to MPEP ยง 1504.10 and MPEP ยง 2920.05(d).
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Yes, there can be subject matter restrictions when claiming priority based on inventor’s certificates. The MPEP 213.05 states:
Certain countries which grant both patents and inventor’s certificates issue only inventor’s certificates on certain subject matter, generally pharmaceuticals, foodstuffs, and cosmetics.
This means that for certain types of inventions, some countries may only offer inventor’s certificates and not patents. However, this doesn’t necessarily prevent an applicant from claiming priority in the US. The key requirement is that the option to file for either a patent or an inventor’s certificate must have generally existed in the country for the particular subject matter of the invention, even if it wasn’t available for the specific invention in question.
Applicants must still provide an affidavit or declaration as required by 37 CFR 1.55(l), stating that they had the option to file for either a patent or an inventor’s certificate for the subject matter forming the basis of the priority claim.
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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.
MPEP 200 - Types and Status of Application; Benefit and Priority Claims (25)
A Certificate of Correction is appropriate for perfecting a foreign priority claim in the following situations:
- When the priority claim was timely filed in the application but was not included on the patent because the requirement for a certified copy was not satisfied. In this case, a grantable petition under 37 CFR 1.55(f) or 37 CFR 1.55(g) for design applications is also required.
- When a priority claim under 37 CFR 1.55 was not timely made, but the correction sought would not require further examination.
The MPEP states: “Effective May 13, 2015, 37 CFR 1.55(g) provides that the claim for priority and the certified copy of the foreign application must be filed within the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. 37 CFR 1.55(g) eliminates the need in many instances to file a reissue application in order to perfect a claim for foreign priority.” (MPEP 216.01)
An examiner considers the merits of a foreign priority claim in the following situations:
- When a reference is found with an effective date between the foreign filing date and the U.S. filing date
- When determining if a reference’s prior art date falls within the grace period for the application under examination
- When an interference situation is under consideration
The MPEP states: “The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons. For example, the examiner considers the merits of an applicant’s claim of priority when a reference is found with an effective date between the date of the foreign filing and the date of filing in the United States, when determining whether a reference’s prior art date is within the grace period for the application under examination, and when an interference situation is under consideration.” (MPEP 216)
For a valid foreign priority claim, the U.S. application must have at least one common inventor with the foreign application. This requirement ensures that the right of priority is only available to the actual inventors or their legal representatives.
As stated in MPEP 213.02: “Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”
This means that:
1. A sole inventor in the U.S. can claim priority to a foreign application where they are the sole inventor or one of joint inventors.
2. Joint inventors in the U.S. can claim priority to a foreign application filed by any one or more of them.
3. A U.S. application cannot claim priority to a foreign application with completely different inventors.
It’s important to note that while the inventorship must overlap, it doesn’t have to be identical between the U.S. and foreign applications.
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.
A proper foreign priority claim can give a U.S. patent application the benefit of the earlier foreign filing date as its effective filing date for prior art purposes. This can be crucial for establishing novelty and non-obviousness of the invention.
35 U.S.C. 119(a) states that a U.S. application properly claiming foreign priority “shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country.”
This means that intervening prior art published after the foreign filing date but before the U.S. filing date may not be used against the application if the priority claim is valid. However, it’s important to note that the actual U.S. filing date is still used for other purposes, such as calculating patent term.
Claiming priority and claiming benefit are two different mechanisms in patent law, though both can affect the effective filing date of a patent application:
- Claiming Priority:
- Typically refers to claiming the right of priority to a foreign application under 35 U.S.C. 119(a)-(d) and (f)
- Also includes priority claims to provisional applications under 35 U.S.C. 119(e)
- Governed by 37 CFR 1.55 for foreign priority claims
- Claiming Benefit:
- Refers to claiming the benefit of an earlier filing date of a U.S. application under 35 U.S.C. 120, 121, 365(c), or 386(c)
- Typically used for continuation, divisional, or continuation-in-part applications
- Governed by 37 CFR 1.78
The MPEP discusses both types of claims: “Under certain conditions and on fulfilling certain requirements, a later-filed application for patent filed in the United States may claim the benefit of, or priority to, a prior application filed in the United States (see 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78) or in a foreign country (see 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55).”
Claiming foreign priority under 35 U.S.C. 119(a)-(d) and claiming benefit of a U.S. provisional application under 35 U.S.C. 119(e) are similar in some ways but have important differences:
1. Time limit:
– Foreign priority: Must be claimed within 12 months (6 months for design applications)
– Provisional: Must be claimed within 12 months
2. Effective filing date:
– Both can provide an earlier effective filing date for prior art purposes
3. Patent term:
– Foreign priority: Does not affect patent term
– Provisional: The 12-month period counts towards the 20-year patent term
4. Disclosure requirements:
– Both require the earlier application to provide adequate support for the claimed invention
5. Formalities:
– Foreign priority: Requires a certified copy of the foreign application
– Provisional: No certified copy required, but the provisional must be in English
6. Inventorship:
– Foreign priority: Requires at least one common inventor
– Provisional: Requires at least one common inventor
7. International effect:
– Foreign priority: Recognized in other Paris Convention countries
– Provisional: May not be recognized in some foreign jurisdictions
Both types of priority claims can be valuable for establishing an earlier effective filing date, but they have different requirements and effects that should be considered when developing a patent strategy.
Foreign priority claims and domestic benefit claims are two different ways of claiming the benefit of an earlier filing date:
- Foreign priority claims (under 35 U.S.C. 119(a)-(d)) are based on earlier applications filed in foreign countries
- Domestic benefit claims can be to earlier U.S. provisional (35 U.S.C. 119(e)) or nonprovisional (35 U.S.C. 120) applications
Key differences include:
- Time limits: 12 months for foreign priority, 12 months for provisionals, no limit for nonprovisionals
- Required documents: Certified copy needed for foreign priority, not for domestic benefit
- Effect: Foreign priority is mainly for prior art purposes, domestic benefit can confer actual pendency benefits
Both types of claims must be properly made to be effective, but the specific requirements and effects differ.
A certified copy of a foreign application is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. According to the MPEP, “Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information.” It’s important to note that a copy of the certified copy filed by the applicant will not satisfy the requirement for a certified copy.
When submitting a certified copy of a foreign application for priority purposes, the following requirements apply:
- If the certified copy is not in English, a translation is required
- The translation must be of the certified copy of the foreign application as filed
- The translation must be filed together with a statement that the translation of the certified copy is accurate
The MPEP states: “When the examiner requires the filing of the certified copy, the translation should also be required at the same time. If an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) and it must be filed together with a statement that the translation of the certified copy is accurate.” (MPEP 216)
An ‘interim copy’ is a true copy of the original foreign application that an applicant can file to meet the timeliness requirement when they cannot obtain a certified copy within the time limit. According to 37 CFR 1.55(j), the interim copy must be clearly labeled as ‘Interim Copy’ and filed with a cover sheet stating it is a true copy of the original foreign application.
The front page of a patent includes the following information regarding foreign priority claims:
- The country of the foreign application
- The filing date of the foreign application
- The number of the foreign application
This information is included for applications where the bib-data sheet has been properly endorsed. As stated in the MPEP: “The front page of the patent when it is issued, and the listing in the Official Gazette, will refer to the claim of priority, giving the country, the filing date, and the number of the foreign application in those applications in which the bib-data sheet has been endorsed.” (MPEP 202)
If priority papers are found to be deficient in material respects, such as failure to include the correct certified copy, applicants should ensure that there is sufficient time to remedy any defects. The MPEP advises: “Frequently, priority papers are found to be deficient in material respects, such as for example, the failure to include the correct certified copy, and applicants should ensure that there is sufficient time to remedy any defects.” It’s recommended to file priority papers as early as possible to allow time for correction if needed.
If the certified copy of the foreign application is filed after the date the issue fee is paid but prior to the date of grant of the patent, it will be placed in the file record but there will be no review of the papers. The patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the priority claim considered after publication of the patent.
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:
- A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323
- 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.”
When reviewing a claim to foreign priority, the examiner generally checks the following:
- That the papers contain no obvious formal defects
- That the papers correspond in number, date and country to the application identified in the application data sheet
- For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, that the claim for foreign priority is timely
The MPEP states: “When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner generally makes no examination of the papers except to see that they contain no obvious formal defects and correspond in number, date and country to the application identified in the application data sheet for an application filed on or after September 16, 2012, or oath or declaration or application data sheet for an application filed prior to September 16, 2012.” (MPEP 216)
When filing an interim copy via the USPTO patent electronic filing system:
- The main parts of the foreign priority application (Abstract, Drawings, Specification, Claims, etc.) along with the cover sheet may be filed as a single PDF image file.
- Select the document description ‘Interim Copy of the Foreign Priority Application’ when indexing.
- For plain text files (e.g., Sequence Listings), file as a .txt file and select ‘Interim Copy of the Foreign Priority (text file)’ as the document description.
- XML files (e.g., Standard ST.26 Sequence Listing) should be filed on a read-only optical disc as part of the ‘Interim Copy of Foreign Priority.’
See MPEP ยง 502.05 for more information on filing documents electronically.
To ensure proper correlation between priority papers and U.S. applications, the MPEP suggests: “It is suggested that a notation of the application number of the corresponding U.S. application be placed on the priority papers when such papers are not submitted via a priority document exchange program. Such notation should be placed directly on the priority papers themselves even where a cover letter is attached bearing the U.S. application data.” This practice helps prevent separation of cover letters and priority papers, which can cause severe problems for both the Office and applicant.
Foreign priority application information is handled as follows on the bib-data sheet:
- If a proper foreign priority claim is not listed on the bib-data sheet, the examiner should add the information and forward it for correction in the Office computer systems.
- Applications listed on the bib-data sheet but filed in countries not qualifying for benefits under 35 U.S.C. 119(a)-(d) should be lined through.
- The bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application claiming priority.
- Examiners should check this information for accuracy and make corrections if necessary.
The MPEP states: “If a foreign application listed on the oath or declaration (for applications filed prior to September 16, 2012) or application data sheet is not listed on the bib-data sheet and the foreign priority claim is proper (e.g., the foreign priority claim was timely made ), the examiner should provide the information regarding the foreign application number, the country, and the filing date on the bib-data sheet and forward the marked-up bib-data sheet to the Legal Instrument Examiner for correction in the Office computer systems.” (MPEP 202)
Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.
For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.
For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.
It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.
Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.
Claiming foreign priority can significantly affect the prior art date in your application:
- For applications subject to pre-AIA law, the foreign priority date becomes the effective U.S. filing date for prior art purposes under 35 U.S.C. 102(a), (b), and (d)
- For applications subject to AIA law, the foreign priority date is treated as the effective filing date for prior art purposes under 35 U.S.C. 102(a)(1) and (a)(2)
This means that intervening disclosures between your foreign filing date and your U.S. filing date may not be considered prior art against your application. However, it’s important to note that the claimed subject matter must be fully supported by the foreign application to get the benefit of its filing date. Additionally, the priority claim must be proper and timely made for this benefit to apply.
When an examiner finds an intervening reference (a reference with an effective date between the foreign filing date and the U.S. filing date) and a foreign priority claim is present, the examiner follows these steps:
- If the certified copy of the priority papers has not been filed, the examiner rejects the claims that may be unpatentable over the reference without considering the priority date.
- The applicant may then argue the rejection or present the foreign papers to overcome the date of the reference.
- If the applicant argues the rejection, the examiner may, in the next action:
- Specifically require the foreign papers to be filed while repeating the rejection if still applicable, or
- Simply continue the rejection
The MPEP states: “If at the time of making an action the examiner has found such an intervening reference, the examiner simply rejects whatever claims may be considered unpatentable thereover, without paying any attention to the priority date (assuming the certified copy of the priority papers has not yet been filed).” (MPEP 216)
Yes, you can file a foreign priority claim after your patent has been granted, but it requires additional steps:
- File a petition under 37 CFR 1.55(e) for an unintentionally delayed priority claim
- Submit a request for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323
- 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).”
Yes, a nonprovisional application can be entitled to different foreign filing dates for different claims. This can occur in two scenarios:
- The application may be found entitled to the filing date of a foreign application for some claims but not for others.
- An applicant may rely on two or more different foreign applications and may be entitled to the filing date of one application for certain claims and to another for other claims.
The MPEP states: “A nonprovisional application may be found entitled to the filing date of the foreign application with respect to some claims and not with respect to others. In addition, an applicant may rely on two or more different foreign applications and may be entitled to the filing date of one of them with respect to certain claims and to another with respect to other claims.” (MPEP 216)
No, a copy of the foreign patent as issued does not comply with the certified copy requirement. The MPEP states: “A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the certification indicates that it corresponds to the application as filed.” The key is that the certified copy must represent the application as originally filed, not the patent as eventually issued.
MPEP 202-Cross-Noting (3)
When examining a patent application, it’s crucial for the examiner to verify and indicate whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met. These sections relate to the right of priority for foreign applications.
The MPEP instructs: However, the examiner must still indicate in the Office action and on the bib-data sheet whether the conditions of35 U.S.C. 119(a)-(d)or(f)have been met.
(MPEP 202)
This means the examiner should:
- Review the foreign priority claim
- Determine if all conditions for the claim have been satisfied
- Indicate the status of the claim in the Office action
- Mark the bib-data sheet accordingly
If the conditions are met, this information will be reflected on the front page of the issued patent and in the Official Gazette listing. For more information on foreign priority claims, see MPEP ยง 213.
For more information on foreign priority, visit: foreign priority.
For more information on patent examination, visit: patent examination.
The front page of a patent includes the following information regarding foreign priority claims:
- The country of the foreign application
- The filing date of the foreign application
- The number of the foreign application
This information is included for applications where the bib-data sheet has been properly endorsed. As stated in the MPEP: “The front page of the patent when it is issued, and the listing in the Official Gazette, will refer to the claim of priority, giving the country, the filing date, and the number of the foreign application in those applications in which the bib-data sheet has been endorsed.” (MPEP 202)
Foreign priority application information is handled as follows on the bib-data sheet:
- If a proper foreign priority claim is not listed on the bib-data sheet, the examiner should add the information and forward it for correction in the Office computer systems.
- Applications listed on the bib-data sheet but filed in countries not qualifying for benefits under 35 U.S.C. 119(a)-(d) should be lined through.
- The bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application claiming priority.
- Examiners should check this information for accuracy and make corrections if necessary.
The MPEP states: “If a foreign application listed on the oath or declaration (for applications filed prior to September 16, 2012) or application data sheet is not listed on the bib-data sheet and the foreign priority claim is proper (e.g., the foreign priority claim was timely made ), the examiner should provide the information regarding the foreign application number, the country, and the filing date on the bib-data sheet and forward the marked-up bib-data sheet to the Legal Instrument Examiner for correction in the Office computer systems.” (MPEP 202)
MPEP 213-Right of Priority of Foreign Application (16)
An international design application designating the United States can claim priority based on several types of prior applications. According to MPEP 213.07:
Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.
The types of prior applications that can be used for claiming priority include:
- A prior foreign application
- An international application (PCT) designating at least one country other than the United States
- A prior international design application designating at least one country other than the United States
These priority claims must comply with the conditions and requirements set forth in 35 U.S.C. 119(a)-(d) and 172, as well as the Hague Agreement and its Regulations.
For more information on foreign priority, visit: foreign priority.
For more information on Hague Agreement, visit: Hague Agreement.
For more information on prior applications, visit: prior applications.
What is the significance of the Paris Convention in foreign priority claims?
The Paris Convention plays a crucial role in foreign priority claims for patent applications. Its significance includes:
- Establishing the right of priority for patent applications among member countries.
- Allowing applicants to file in multiple countries while maintaining the original filing date.
- Providing a 12-month priority period for utility patents (6 months for design patents).
- Ensuring equal treatment of foreign and domestic applicants in member countries.
According to MPEP 213: “The right of priority is defined in Article 4 of the Paris Convention for the Protection of Industrial Property and is based on the first filing in a Paris Convention country.” This convention facilitates international patent protection by allowing inventors to secure priority dates across multiple jurisdictions.
For a valid foreign priority claim, the U.S. application and the foreign application must name the same inventor or have at least one joint inventor in common. This requirement ensures that the right of priority is properly linked between the applications.
As stated in MPEP 213.02: “Pursuant to 35 U.S.C. 119(a), the foreign application must have been filed by the same applicant as the applicant in the United States, or by applicant’s legal representatives or assigns. Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”
The MPEP further clarifies: “Joint inventors A and B in a nonprovisional application filed in the United States Patent and Trademark Office may properly claim the benefit of an application filed in a foreign country by A and another application filed in a foreign country by B, i.e., A and B may each claim the benefit of their foreign filed applications.”
This requirement ensures that the priority right is properly linked to the inventive entity responsible for the invention in both the foreign and U.S. applications.
For more information on foreign priority, visit: foreign priority.
For more information on joint inventors, visit: joint inventors.
For a valid foreign priority claim, the U.S. application must have at least one common inventor with the foreign application. This requirement ensures that the right of priority is only available to the actual inventors or their legal representatives.
As stated in MPEP 213.02: “Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”
This means that:
1. A sole inventor in the U.S. can claim priority to a foreign application where they are the sole inventor or one of joint inventors.
2. Joint inventors in the U.S. can claim priority to a foreign application filed by any one or more of them.
3. A U.S. application cannot claim priority to a foreign application with completely different inventors.
It’s important to note that while the inventorship must overlap, it doesn’t have to be identical between the U.S. and foreign applications.
A proper foreign priority claim can give a U.S. patent application the benefit of the earlier foreign filing date as its effective filing date for prior art purposes. This can be crucial for establishing novelty and non-obviousness of the invention.
35 U.S.C. 119(a) states that a U.S. application properly claiming foreign priority “shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country.”
This means that intervening prior art published after the foreign filing date but before the U.S. filing date may not be used against the application if the priority claim is valid. However, it’s important to note that the actual U.S. filing date is still used for other purposes, such as calculating patent term.
Claiming foreign priority under 35 U.S.C. 119(a)-(d) and claiming benefit of a U.S. provisional application under 35 U.S.C. 119(e) are similar in some ways but have important differences:
1. Time limit:
– Foreign priority: Must be claimed within 12 months (6 months for design applications)
– Provisional: Must be claimed within 12 months
2. Effective filing date:
– Both can provide an earlier effective filing date for prior art purposes
3. Patent term:
– Foreign priority: Does not affect patent term
– Provisional: The 12-month period counts towards the 20-year patent term
4. Disclosure requirements:
– Both require the earlier application to provide adequate support for the claimed invention
5. Formalities:
– Foreign priority: Requires a certified copy of the foreign application
– Provisional: No certified copy required, but the provisional must be in English
6. Inventorship:
– Foreign priority: Requires at least one common inventor
– Provisional: Requires at least one common inventor
7. International effect:
– Foreign priority: Recognized in other Paris Convention countries
– Provisional: May not be recognized in some foreign jurisdictions
Both types of priority claims can be valuable for establishing an earlier effective filing date, but they have different requirements and effects that should be considered when developing a patent strategy.
Foreign priority claims and domestic benefit claims are two different ways of claiming the benefit of an earlier filing date:
- Foreign priority claims (under 35 U.S.C. 119(a)-(d)) are based on earlier applications filed in foreign countries
- Domestic benefit claims can be to earlier U.S. provisional (35 U.S.C. 119(e)) or nonprovisional (35 U.S.C. 120) applications
Key differences include:
- Time limits: 12 months for foreign priority, 12 months for provisionals, no limit for nonprovisionals
- Required documents: Certified copy needed for foreign priority, not for domestic benefit
- Effect: Foreign priority is mainly for prior art purposes, domestic benefit can confer actual pendency benefits
Both types of claims must be properly made to be effective, but the specific requirements and effects differ.
In the context of foreign priority claims, there’s an important distinction between a ‘country’ and a ‘regional patent office’:
- Country: A sovereign nation that has its own patent system and can issue patents directly.
- Regional Patent Office: An intergovernmental organization that processes patent applications on behalf of multiple member countries.
The MPEP states: The right of priority may be based upon an application filed in a foreign country or in a regional patent office.
(MPEP 213)
Regional patent offices, such as the European Patent Office (EPO) or the African Regional Intellectual Property Organization (ARIPO), allow applicants to file a single application that can potentially lead to patent protection in multiple member countries.
To claim foreign priority in a U.S. application, you must file a claim for priority and submit a certified copy of the foreign application. MPEP 213.04 states: ‘The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application.’
For applications filed on or after September 16, 2012, the priority claim must be presented in an Application Data Sheet (ADS). The certified copy must be filed within the later of 4 months from the actual filing date or 16 months from the foreign filing date, with some exceptions.
For more information on certified copy, visit: certified copy.
For more information on foreign priority, visit: foreign priority.
The USPTO determines if a foreign country qualifies for priority rights based on specific criteria outlined in the MPEP. According to MPEP 213.01:
The right of priority is recognized only if the foreign country in which the original application was filed is recognized at the time of filing the application in the United States.
The USPTO considers several factors:
- The country must be a member of the Paris Convention for the Protection of Industrial Property or have a bilateral agreement with the United States.
- The country must grant similar priority rights to U.S. citizens.
- The country must be recognized by the U.S. Department of State.
The USPTO maintains a list of recognized countries and regional patent offices in MPEP 213.01, which is updated periodically to reflect changes in international relations and treaty memberships.
The Patent Cooperation Treaty (PCT) interacts with foreign priority claims as outlined in MPEP 213. The PCT allows applicants to file a single international patent application that can later enter the national phase in multiple countries.
Key points regarding PCT and foreign priority:
- PCT applications can claim priority from earlier national or regional applications
- The priority period for PCT applications is also 12 months from the earliest priority date
- PCT applications themselves can serve as the basis for priority claims in subsequent national or regional applications
As stated in MPEP 213, “U.S. national applications may claim priority to an international application (PCT) filed in a PCT Receiving Office other than the United States Receiving Office.” This demonstrates the flexibility of the PCT system in international patent protection strategies.
Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.
For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.
For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.
It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.
Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.
Claiming foreign priority can significantly affect the prior art date in your application:
- For applications subject to pre-AIA law, the foreign priority date becomes the effective U.S. filing date for prior art purposes under 35 U.S.C. 102(a), (b), and (d)
- For applications subject to AIA law, the foreign priority date is treated as the effective filing date for prior art purposes under 35 U.S.C. 102(a)(1) and (a)(2)
This means that intervening disclosures between your foreign filing date and your U.S. filing date may not be considered prior art against your application. However, it’s important to note that the claimed subject matter must be fully supported by the foreign application to get the benefit of its filing date. Additionally, the priority claim must be proper and timely made for this benefit to apply.
An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.
According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”
The petition to restore the right of priority must include:
- The priority claim identifying the prior foreign application
- The petition fee
- A statement that the delay in filing was unintentional
The USPTO may require additional information to establish that the delay was unintentional.
For more information on foreign priority, visit: foreign priority.
For more information on priority restoration, visit: priority restoration.
For more information on unintentional delay, visit: unintentional delay.
Yes, under certain conditions, an applicant can claim priority based on an application for an inventor’s certificate. MPEP 213.05 explains: ‘An inventor’s certificate may form the basis for rights of priority under 35 U.S.C. 119(d) only when the country in which it is filed gives to applicants, at their discretion, the right to apply, on the same invention, either for a patent or for an inventor’s certificate.’
To claim priority to an inventor’s certificate, the applicant must file an affidavit or declaration stating that they had the option to file for either a patent or an inventor’s certificate in the foreign country.
For more information on foreign priority, visit: foreign priority.
Yes, a U.S. applicant can claim priority from a provisional application filed in a foreign country, provided certain conditions are met. The MPEP 213 states:
An applicant may claim the right of priority based on a prior foreign application under the Paris Convention and 35 U.S.C. 119(a)-(d) whether the foreign application is an application for a patent or for the registration of a utility model or an industrial design.
Key points to consider:
- The foreign country must be a recognized country or regional patent office as listed in MPEP 213.01.
- The provisional application must be the first filing of the invention in any country.
- The U.S. application must be filed within 12 months of the foreign provisional filing date.
- The applicant must comply with all requirements for claiming priority, including submitting a certified copy of the foreign application.
It’s important to note that not all countries have provisional application systems, so the term ‘provisional’ may have different meanings in different jurisdictions. Always consult with a patent attorney or agent for specific advice on international priority claims.
MPEP 214-Formal Requirements of Claim for Foreign Priority (7)
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 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 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:
- A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323
- 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.”
To file a foreign priority claim in a U.S. patent application, you must:
- File the claim within the specified time limit (see previous FAQ for details).
- 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.
- 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 (ยง1.76(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.
Yes, you can file a foreign priority claim after your patent has been granted, but it requires additional steps:
- File a petition under 37 CFR 1.55(e) for an unintentionally delayed priority claim
- Submit a request for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323
- 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).”
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.
MPEP 215-Certified Copy of Foreign Application (10)
For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) sets the time limit for filing a certified copy of the foreign application. The certified copy 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
This time limit does not apply to design applications. For international applications entering the national stage under 35 U.S.C. 371, the time limit is set forth in 37 CFR 1.55(f)(2).
It’s important to note that there are exceptions to these time limits, as provided in 37 CFR 1.55(h), (i), and (j).
For more information on certified copy, visit: certified copy.
For more information on foreign priority, visit: foreign priority.
For more information on time limit, visit: time limit.
A certified copy of a foreign application is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. According to the MPEP, “Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information.” It’s important to note that a copy of the certified copy filed by the applicant will not satisfy the requirement for a certified copy.
An ‘interim copy’ is a true copy of the original foreign application that an applicant can file to meet the timeliness requirement when they cannot obtain a certified copy within the time limit. According to 37 CFR 1.55(j), the interim copy must be clearly labeled as ‘Interim Copy’ and filed with a cover sheet stating it is a true copy of the original foreign application.
If priority papers are found to be deficient in material respects, such as failure to include the correct certified copy, applicants should ensure that there is sufficient time to remedy any defects. The MPEP advises: “Frequently, priority papers are found to be deficient in material respects, such as for example, the failure to include the correct certified copy, and applicants should ensure that there is sufficient time to remedy any defects.” It’s recommended to file priority papers as early as possible to allow time for correction if needed.
If the certified copy of the foreign application is filed after the date the issue fee is paid but prior to the date of grant of the patent, it will be placed in the file record but there will be no review of the papers. The patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the priority claim considered after publication of the patent.
When filing an interim copy via the USPTO patent electronic filing system:
- The main parts of the foreign priority application (Abstract, Drawings, Specification, Claims, etc.) along with the cover sheet may be filed as a single PDF image file.
- Select the document description ‘Interim Copy of the Foreign Priority Application’ when indexing.
- For plain text files (e.g., Sequence Listings), file as a .txt file and select ‘Interim Copy of the Foreign Priority (text file)’ as the document description.
- XML files (e.g., Standard ST.26 Sequence Listing) should be filed on a read-only optical disc as part of the ‘Interim Copy of Foreign Priority.’
See MPEP ยง 502.05 for more information on filing documents electronically.
To ensure proper correlation between priority papers and U.S. applications, the MPEP suggests: “It is suggested that a notation of the application number of the corresponding U.S. application be placed on the priority papers when such papers are not submitted via a priority document exchange program. Such notation should be placed directly on the priority papers themselves even where a cover letter is attached bearing the U.S. application data.” This practice helps prevent separation of cover letters and priority papers, which can cause severe problems for both the Office and applicant.
How does the Electronic Priority Document Exchange (PDX) program work with the USPTO?
The Electronic Priority Document Exchange (PDX) program is a system that allows participating intellectual property offices to exchange priority documents electronically. According to MPEP 215.01, the USPTO participates in this program, which can simplify the process of submitting certified copies of foreign priority applications.
The MPEP states: The USPTO has agreements with the European Patent Office (EPO) and the Japan Patent Office (JPO) that enable the USPTO to obtain certified copies of foreign applications filed in those offices from their electronic records management systems.
Here’s how the PDX program works with the USPTO:
- If a foreign application was filed with a participating office (e.g., EPO or JPO), the applicant can request that office to make the certified copy of the priority document available to the USPTO.
- The applicant must submit a request to retrieve the priority document through the USPTO’s electronic filing system (EFS-Web or Patent Center).
- The USPTO will then attempt to retrieve the document electronically from the foreign office.
- If successful, this electronic retrieval satisfies the requirement to file a certified copy of the foreign priority application.
It’s important to note that the applicant is still responsible for ensuring that the certified copy is received by the USPTO within the required time frame, even when using the PDX program.
To request retrieval of a foreign priority document through the Priority Document Exchange (PDX) program, follow these steps:
- Ensure that the foreign application is from a participating office in the PDX program.
- File an application data sheet (ADS) including a proper priority claim to the foreign application.
- Submit a request for retrieval of the foreign priority document.
The MPEP 215.01 states: “To authorize retrieval of a priority document via PDX, the applicant should submit the request electronically via EFS-Web using the Priority Document Exchange Request form (PTO/SB/38) or as a pre-grant (PGPub) request via Private PAIR.” It’s important to note that the request should be made 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.
No, a copy of the foreign patent as issued does not comply with the certified copy requirement. The MPEP states: “A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the certification indicates that it corresponds to the application as filed.” The key is that the certified copy must represent the application as originally filed, not the patent as eventually issued.
MPEP 216 - Entitlement to Priority (17)
A Certificate of Correction is appropriate for perfecting a foreign priority claim in the following situations:
- When the priority claim was timely filed in the application but was not included on the patent because the requirement for a certified copy was not satisfied. In this case, a grantable petition under 37 CFR 1.55(f) or 37 CFR 1.55(g) for design applications is also required.
- When a priority claim under 37 CFR 1.55 was not timely made, but the correction sought would not require further examination.
The MPEP states: “Effective May 13, 2015, 37 CFR 1.55(g) provides that the claim for priority and the certified copy of the foreign application must be filed within the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. 37 CFR 1.55(g) eliminates the need in many instances to file a reissue application in order to perfect a claim for foreign priority.” (MPEP 216.01)
An examiner considers the merits of a foreign priority claim in the following situations:
- When a reference is found with an effective date between the foreign filing date and the U.S. filing date
- When determining if a reference’s prior art date falls within the grace period for the application under examination
- When an interference situation is under consideration
The MPEP states: “The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons. For example, the examiner considers the merits of an applicant’s claim of priority when a reference is found with an effective date between the date of the foreign filing and the date of filing in the United States, when determining whether a reference’s prior art date is within the grace period for the application under examination, and when an interference situation is under consideration.” (MPEP 216)
The time limit for filing a delayed claim for foreign priority after patent issuance is specified in 37 CFR 1.55(g). According to MPEP 216.01:
‘The time period set in 37 CFR 1.55(g) for filing a claim for priority and the certified copy required under 37 CFR 1.55(f) is the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.’
However, for patents that have already been issued, the claim must be filed within the period set forth in 37 CFR 1.55(g). This typically means that the claim should be filed as soon as possible after realizing the oversight, as any delay beyond the statutory period would require explanation and potentially affect the grant of the petition.
When a claim to priority and certified copy of a foreign application are received during the pendency of a patent application, the examiner generally follows these steps:
- Checks for obvious formal defects in the documents
- Verifies that the documents correspond to the application identified in the application data sheet
- For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, ensures the claim for foreign priority is timely
The examiner does not typically examine the subject matter to determine if the applicant is entitled to the benefit of the foreign filing date unless it’s necessary for patentability reasons. As stated in the MPEP, The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons.
For more information on application data sheet, visit: application data sheet.
For more information on certified copy, visit: certified copy.
For more information on foreign priority, visit: foreign priority.
For more information on patent examination, visit: patent examination.
The terms ‘right of priority’ and ‘benefit of an earlier filing date’ refer to different concepts in US patent law:
- Right of priority: This term is used in the context of foreign priority under 35 U.S.C. 119(a)-(d) and 365(a) and (b). It allows a US application to claim the priority date of a foreign application filed within the previous 12 months.
- Benefit of an earlier filing date: This term is used for domestic benefit under 35 U.S.C. 119(e) and 120. It allows a US application to claim the filing date of an earlier US provisional or nonprovisional application.
As stated in MPEP 216: ‘The right of priority is a statutory right, which is not considered an application property right.’
For more information on domestic benefit, visit: domestic benefit.
For more information on foreign priority, visit: foreign priority.
For more information on right of priority, visit: right of priority.
The ‘In re Van Esdonk’ case (187 USPQ 671, Comm’r Pat. 1975) is an important precedent in patent law regarding the perfection of foreign priority claims. Key points about this case include:
- It involved a situation where a claim to foreign priority benefits had not been filed in the application prior to patent issuance.
- The application was a continuation of an earlier application that had satisfied the requirements of 35 U.S.C. 119(a)-(d) or (f).
- The Commissioner held that perfecting a priority claim in the parent application satisfies the statute for the continuation application.
The MPEP states: In re Van Esdonk, a claim to foreign priority benefits had not been filed in the application prior to issuance of the patent. However, the application was a continuation of an earlier application in which the requirements of 35 U.S.C. 119(a)-(d) or (f) had been satisfied. Accordingly, the Commissioner held that the ‘applicants’ perfection of a priority claim under 35 U.S.C. 119 in the parent application will satisfy the statute with respect to their continuation application.’
This case is significant because it allows for the perfection of foreign priority claims in continuation applications based on the parent application’s compliance, even after patent issuance.
When submitting an English language translation of a non-English language foreign priority application, the following requirements must be met:
- The translation must be of the certified copy of the foreign application as filed
- The translation must be submitted together with a statement that the translation of the certified copy is accurate
As stated in the MPEP: When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate.
For more information on certified copy, visit: certified copy.
For more information on foreign priority, visit: foreign priority.
When submitting a certified copy of a foreign application for priority purposes, the following requirements apply:
- If the certified copy is not in English, a translation is required
- The translation must be of the certified copy of the foreign application as filed
- The translation must be filed together with a statement that the translation of the certified copy is accurate
The MPEP states: “When the examiner requires the filing of the certified copy, the translation should also be required at the same time. If an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) and it must be filed together with a statement that the translation of the certified copy is accurate.” (MPEP 216)
When reviewing a claim to foreign priority, the examiner generally checks the following:
- That the papers contain no obvious formal defects
- That the papers correspond in number, date and country to the application identified in the application data sheet
- For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, that the claim for foreign priority is timely
The MPEP states: “When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner generally makes no examination of the papers except to see that they contain no obvious formal defects and correspond in number, date and country to the application identified in the application data sheet for an application filed on or after September 16, 2012, or oath or declaration or application data sheet for an application filed prior to September 16, 2012.” (MPEP 216)
To perfect a claim for foreign priority after patent issuance, several documents are required. According to MPEP 216.01, the following must be submitted:
- A petition to accept an unintentionally delayed claim for priority
- The required petition fee
- A certified copy of the foreign application
- An English language translation of the foreign application (if not in English)
- A statement that the translation is accurate
The MPEP states: ‘In addition to the petition to accept an unintentionally delayed claim for priority and the required petition fee, the claim for priority must be made in an application data sheet (if the patent issued from a utility or plant application filed on or after September 16, 2012) or in a request for a certificate of correction, and a certified copy of the foreign application must be submitted.’
It’s important to note that the requirements may vary slightly depending on the specific circumstances of the application and patent. Consulting with a patent attorney or agent is advisable for ensuring all necessary documents are properly prepared and submitted.
How does the Paris Convention affect priority claims in US patent applications?
The Paris Convention plays a crucial role in international priority claims for US patent applications. According to MPEP 216:
‘The right of priority is based on the Paris Convention for the Protection of Industrial Property, which is adhered to by the United States.’
The Paris Convention affects US patent applications in the following ways:
- It allows applicants to claim priority from foreign applications filed in member countries
- It establishes a 12-month priority period for utility patents and a 6-month period for design patents
- It ensures that filing an application in one member country does not invalidate the novelty of the invention in other member countries
The implementation of the Paris Convention in US law is found in 35 U.S.C. 119(a)-(d), which outlines the requirements for claiming foreign priority.
For more information on foreign priority, visit: foreign priority.
For more information on international patent applications, visit: international patent applications.
For more information on Paris Convention, visit: Paris Convention.
The America Invents Act’s (AIA) first-inventor-to-file (FITF) provision has significant implications for perfecting foreign priority claims, especially in cases where the foreign application has a pre-March 16, 2013 filing date. Key points include:
- If a patent was examined under FITF provisions, but the foreign priority application has a pre-AIA filing date, perfecting the priority claim may require further examination.
- In such cases, a certificate of correction is not sufficient, and a reissue application is necessary.
- This situation arises because changing the effective filing date could potentially subject the patent to a different statutory framework.
The MPEP states: In situations where further examination would be required, the petition should not be granted. For example, further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA.
This requirement ensures that patents are not inadvertently subjected to different legal standards without proper examination.
How does the AIA affect priority claims for applications filed on or after March 16, 2013?
The America Invents Act (AIA) significantly changed the U.S. patent system, particularly affecting priority claims for applications filed on or after March 16, 2013. According to MPEP 216:
“AIA 35 U.S.C. 100(i)(1)(B) provides that the effective filing date for a claimed invention in a patent or application for patent (other than a reissue application or reissued patent) is the filing date of the earliest application for which the patent or application is entitled to claim a right of foreign priority or domestic benefit.”
This change means that:
- The effective filing date can now include foreign priority dates, not just domestic benefit dates.
- The first-to-file system replaced the first-to-invent system for determining priority.
- Prior art is now determined based on the effective filing date, including foreign priority dates.
These changes have significant implications for inventors and patent practitioners in terms of strategy for filing applications and claiming priority, especially in a global context.
For more information on America Invents Act, visit: America Invents Act.
For more information on effective filing date, visit: effective filing date.
For more information on foreign priority, visit: foreign priority.
When an examiner finds an intervening reference (a reference with an effective date between the foreign filing date and the U.S. filing date) and a foreign priority claim is present, the examiner follows these steps:
- If the certified copy of the priority papers has not been filed, the examiner rejects the claims that may be unpatentable over the reference without considering the priority date.
- The applicant may then argue the rejection or present the foreign papers to overcome the date of the reference.
- If the applicant argues the rejection, the examiner may, in the next action:
- Specifically require the foreign papers to be filed while repeating the rejection if still applicable, or
- Simply continue the rejection
The MPEP states: “If at the time of making an action the examiner has found such an intervening reference, the examiner simply rejects whatever claims may be considered unpatentable thereover, without paying any attention to the priority date (assuming the certified copy of the priority papers has not yet been filed).” (MPEP 216)
Yes, it is possible to claim priority to a foreign application after your U.S. patent has been issued. According to MPEP 216.01, a claim for priority under 35 U.S.C. 119(a)-(d) or (f) can be made after the patent is granted, subject to certain conditions:
- The claim must be made within the time period set forth in 37 CFR 1.55(g).
- A petition to accept an unintentionally delayed claim for priority must be filed.
- The required fee must be paid.
- A certified copy of the foreign application must be submitted.
The MPEP states: ‘A claim for priority under 35 U.S.C. 119(a)-(d) or (f) for the benefit of a prior foreign application may be made after the patent issues if the claim is accompanied by a grantable petition to accept an unintentionally delayed claim for priority.’
Yes, a US patent application can claim both foreign priority and domestic benefit simultaneously. This is known as a ‘multiple priority claim’ or ‘multiple benefit claim.’ The MPEP 216 states:
‘It is possible for a U.S. application to be entitled to the benefit of an earlier U.S. filing date and also to the right of priority of a foreign application.’
Here’s how it works:
- The application can claim foreign priority under 35 U.S.C. 119(a)-(d) to a foreign application filed within the past 12 months.
- At the same time, it can claim domestic benefit under 35 U.S.C. 120 to an earlier US application.
- The earlier US application can also claim foreign priority to the same foreign application.
This allows the US application to potentially have an effective filing date that is earlier than both its actual filing date and the filing date of the US application it claims benefit from.
For more information on domestic benefit, visit: domestic benefit.
For more information on foreign priority, visit: foreign priority.
Yes, a nonprovisional application can be entitled to different foreign filing dates for different claims. This can occur in two scenarios:
- The application may be found entitled to the filing date of a foreign application for some claims but not for others.
- An applicant may rely on two or more different foreign applications and may be entitled to the filing date of one application for certain claims and to another for other claims.
The MPEP states: “A nonprovisional application may be found entitled to the filing date of the foreign application with respect to some claims and not with respect to others. In addition, an applicant may rely on two or more different foreign applications and may be entitled to the filing date of one of them with respect to certain claims and to another with respect to other claims.” (MPEP 216)
Patent Law (95)
A Certificate of Correction is appropriate for perfecting a foreign priority claim in the following situations:
- When the priority claim was timely filed in the application but was not included on the patent because the requirement for a certified copy was not satisfied. In this case, a grantable petition under 37 CFR 1.55(f) or 37 CFR 1.55(g) for design applications is also required.
- When a priority claim under 37 CFR 1.55 was not timely made, but the correction sought would not require further examination.
The MPEP states: “Effective May 13, 2015, 37 CFR 1.55(g) provides that the claim for priority and the certified copy of the foreign application must be filed within the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. 37 CFR 1.55(g) eliminates the need in many instances to file a reissue application in order to perfect a claim for foreign priority.” (MPEP 216.01)
An examiner considers the merits of a foreign priority claim in the following situations:
- When a reference is found with an effective date between the foreign filing date and the U.S. filing date
- When determining if a reference’s prior art date falls within the grace period for the application under examination
- When an interference situation is under consideration
The MPEP states: “The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons. For example, the examiner considers the merits of an applicant’s claim of priority when a reference is found with an effective date between the date of the foreign filing and the date of filing in the United States, when determining whether a reference’s prior art date is within the grace period for the application under examination, and when an interference situation is under consideration.” (MPEP 216)
An international design application designating the United States can claim priority based on several types of prior applications. According to MPEP 213.07:
Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.
The types of prior applications that can be used for claiming priority include:
- A prior foreign application
- An international application (PCT) designating at least one country other than the United States
- A prior international design application designating at least one country other than the United States
These priority claims must comply with the conditions and requirements set forth in 35 U.S.C. 119(a)-(d) and 172, as well as the Hague Agreement and its Regulations.
For more information on foreign priority, visit: foreign priority.
For more information on Hague Agreement, visit: Hague Agreement.
For more information on prior applications, visit: prior applications.
When examining a patent application, it’s crucial for the examiner to verify and indicate whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met. These sections relate to the right of priority for foreign applications.
The MPEP instructs: However, the examiner must still indicate in the Office action and on the bib-data sheet whether the conditions of35 U.S.C. 119(a)-(d)or(f)have been met.
(MPEP 202)
This means the examiner should:
- Review the foreign priority claim
- Determine if all conditions for the claim have been satisfied
- Indicate the status of the claim in the Office action
- Mark the bib-data sheet accordingly
If the conditions are met, this information will be reflected on the front page of the issued patent and in the Official Gazette listing. For more information on foreign priority claims, see MPEP ยง 213.
For more information on foreign priority, visit: foreign priority.
For more information on patent examination, visit: patent examination.
To claim priority based on an inventor’s certificate, applicants must meet specific requirements outlined in 37 CFR 1.55(l):
To claim the right of priority on the basis of an application for an inventor’s certificate in such a country under 35 U.S.C. 119(d), the applicant when submitting a claim for such right as specified in this section, must include an affidavit or declaration.
The affidavit or declaration must state that:
- The applicant had the option to file for either a patent or an inventor’s certificate in the foreign country
- This option existed for the particular subject matter of the invention
It’s important to note that the affidavit is only required to ascertain the general existence of this option in the foreign country, not to probe into the eligibility of the particular applicant.
To learn more:
The transition application statement is a requirement for certain applications that bridge the pre-AIA and AIA periods. Here are the key points:
- It applies to nonprovisional applications filed on or after March 16, 2013, that claim priority to a foreign application filed before March 16, 2013.
- The statement is required if the application contains or contained a claim to an invention with an effective filing date on or after March 16, 2013.
- The applicant must provide this statement within a specified time period.
- International design applications are exempt from this requirement.
As stated in the MPEP: If a nonprovisional application filed on or after March 16, 2013, claims priority to a foreign application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date (as defined in 35 U.S.C. 100(i)) on or after March 16, 2013, the applicant must provide a statement to that effect within a specified time period.
This requirement helps the USPTO determine which law applies to the application.
To learn more:
The time limit for filing a delayed claim for foreign priority after patent issuance is specified in 37 CFR 1.55(g). According to MPEP 216.01:
‘The time period set in 37 CFR 1.55(g) for filing a claim for priority and the certified copy required under 37 CFR 1.55(f) is the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.’
However, for patents that have already been issued, the claim must be filed within the period set forth in 37 CFR 1.55(g). This typically means that the claim should be filed as soon as possible after realizing the oversight, as any delay beyond the statutory period would require explanation and potentially affect the grant of the petition.
For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) sets the time limit for filing a certified copy of the foreign application. The certified copy 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
This time limit does not apply to design applications. For international applications entering the national stage under 35 U.S.C. 371, the time limit is set forth in 37 CFR 1.55(f)(2).
It’s important to note that there are exceptions to these time limits, as provided in 37 CFR 1.55(h), (i), and (j).
For more information on certified copy, visit: certified copy.
For more information on foreign priority, visit: foreign priority.
For more information on time limit, visit: time limit.
For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) requires that a certified copy of the foreign application 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
This time period does not apply to design applications. There are three exceptions to this requirement, as outlined in 37 CFR 1.55(h), (i), and (j).
To learn more:
What is the significance of the Paris Convention in foreign priority claims?
The Paris Convention plays a crucial role in foreign priority claims for patent applications. Its significance includes:
- Establishing the right of priority for patent applications among member countries.
- Allowing applicants to file in multiple countries while maintaining the original filing date.
- Providing a 12-month priority period for utility patents (6 months for design patents).
- Ensuring equal treatment of foreign and domestic applicants in member countries.
According to MPEP 213: “The right of priority is defined in Article 4 of the Paris Convention for the Protection of Industrial Property and is based on the first filing in a Paris Convention country.” This convention facilitates international patent protection by allowing inventors to secure priority dates across multiple jurisdictions.
For a valid foreign priority claim, the U.S. application and the foreign application must name the same inventor or have at least one joint inventor in common. This requirement ensures that the right of priority is properly linked between the applications.
As stated in MPEP 213.02: “Pursuant to 35 U.S.C. 119(a), the foreign application must have been filed by the same applicant as the applicant in the United States, or by applicant’s legal representatives or assigns. Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”
The MPEP further clarifies: “Joint inventors A and B in a nonprovisional application filed in the United States Patent and Trademark Office may properly claim the benefit of an application filed in a foreign country by A and another application filed in a foreign country by B, i.e., A and B may each claim the benefit of their foreign filed applications.”
This requirement ensures that the priority right is properly linked to the inventive entity responsible for the invention in both the foreign and U.S. applications.
For more information on foreign priority, visit: foreign priority.
For more information on joint inventors, visit: joint inventors.
For a valid foreign priority claim, the U.S. application must have at least one common inventor with the foreign application. This requirement ensures that the right of priority is only available to the actual inventors or their legal representatives.
As stated in MPEP 213.02: “Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”
This means that:
1. A sole inventor in the U.S. can claim priority to a foreign application where they are the sole inventor or one of joint inventors.
2. Joint inventors in the U.S. can claim priority to a foreign application filed by any one or more of them.
3. A U.S. application cannot claim priority to a foreign application with completely different inventors.
It’s important to note that while the inventorship must overlap, it doesn’t have to be identical between the U.S. and foreign applications.
The affidavit required for claiming priority based on an inventor’s certificate serves a specific purpose, as outlined in MPEP 213.05:
The affidavit or declaration specified under 37 CFR 1.55(l) is only required for the purpose of ascertaining whether, in the country where the application for an inventor’s certificate originated, this option generally existed for applicants with respect to the particular subject matter of the invention involved.
The affidavit is not intended to investigate the specific applicant’s eligibility to exercise the option in their particular case. Rather, it’s meant to confirm that in the country where the inventor’s certificate was filed, applicants generally had the right to choose between applying for a patent or an inventor’s certificate for the subject matter in question.
This requirement ensures compliance with the treaty and statute governing priority rights, while recognizing that some countries may have restrictions based on factors such as employment or nationality.
To learn more:
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.
When a claim to priority and certified copy of a foreign application are received during the pendency of a patent application, the examiner generally follows these steps:
- Checks for obvious formal defects in the documents
- Verifies that the documents correspond to the application identified in the application data sheet
- For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, ensures the claim for foreign priority is timely
The examiner does not typically examine the subject matter to determine if the applicant is entitled to the benefit of the foreign filing date unless it’s necessary for patentability reasons. As stated in the MPEP, The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons.
For more information on application data sheet, visit: application data sheet.
For more information on certified copy, visit: certified copy.
For more information on foreign priority, visit: foreign priority.
For more information on patent examination, visit: patent examination.
The Priority Document Exchange (PDX) program is a system that allows participating intellectual property offices to exchange priority documents electronically. This program simplifies the process of submitting certified copies of foreign priority applications for patent applicants.
According to the MPEP, The Office website provides information concerning the priority document exchange program ( www.uspto.gov/patents/basics/international-protection/electronic-priority-document-exchange-pdx )
. This information includes participating offices and instructions for accessing foreign applications.
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A proper foreign priority claim can give a U.S. patent application the benefit of the earlier foreign filing date as its effective filing date for prior art purposes. This can be crucial for establishing novelty and non-obviousness of the invention.
35 U.S.C. 119(a) states that a U.S. application properly claiming foreign priority “shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country.”
This means that intervening prior art published after the foreign filing date but before the U.S. filing date may not be used against the application if the priority claim is valid. However, it’s important to note that the actual U.S. filing date is still used for other purposes, such as calculating patent term.
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.
Claiming priority and claiming benefit are two different mechanisms in patent law, though both can affect the effective filing date of a patent application:
- Claiming Priority:
- Typically refers to claiming the right of priority to a foreign application under 35 U.S.C. 119(a)-(d) and (f)
- Also includes priority claims to provisional applications under 35 U.S.C. 119(e)
- Governed by 37 CFR 1.55 for foreign priority claims
- Claiming Benefit:
- Refers to claiming the benefit of an earlier filing date of a U.S. application under 35 U.S.C. 120, 121, 365(c), or 386(c)
- Typically used for continuation, divisional, or continuation-in-part applications
- Governed by 37 CFR 1.78
The MPEP discusses both types of claims: “Under certain conditions and on fulfilling certain requirements, a later-filed application for patent filed in the United States may claim the benefit of, or priority to, a prior application filed in the United States (see 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78) or in a foreign country (see 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55).”
Claiming foreign priority under 35 U.S.C. 119(a)-(d) and claiming benefit of a U.S. provisional application under 35 U.S.C. 119(e) are similar in some ways but have important differences:
1. Time limit:
– Foreign priority: Must be claimed within 12 months (6 months for design applications)
– Provisional: Must be claimed within 12 months
2. Effective filing date:
– Both can provide an earlier effective filing date for prior art purposes
3. Patent term:
– Foreign priority: Does not affect patent term
– Provisional: The 12-month period counts towards the 20-year patent term
4. Disclosure requirements:
– Both require the earlier application to provide adequate support for the claimed invention
5. Formalities:
– Foreign priority: Requires a certified copy of the foreign application
– Provisional: No certified copy required, but the provisional must be in English
6. Inventorship:
– Foreign priority: Requires at least one common inventor
– Provisional: Requires at least one common inventor
7. International effect:
– Foreign priority: Recognized in other Paris Convention countries
– Provisional: May not be recognized in some foreign jurisdictions
Both types of priority claims can be valuable for establishing an earlier effective filing date, but they have different requirements and effects that should be considered when developing a patent strategy.
Foreign priority claims and domestic benefit claims are two different ways of claiming the benefit of an earlier filing date:
- Foreign priority claims (under 35 U.S.C. 119(a)-(d)) are based on earlier applications filed in foreign countries
- Domestic benefit claims can be to earlier U.S. provisional (35 U.S.C. 119(e)) or nonprovisional (35 U.S.C. 120) applications
Key differences include:
- Time limits: 12 months for foreign priority, 12 months for provisionals, no limit for nonprovisionals
- Required documents: Certified copy needed for foreign priority, not for domestic benefit
- Effect: Foreign priority is mainly for prior art purposes, domestic benefit can confer actual pendency benefits
Both types of claims must be properly made to be effective, but the specific requirements and effects differ.
In the context of foreign priority claims, there’s an important distinction between a ‘country’ and a ‘regional patent office’:
- Country: A sovereign nation that has its own patent system and can issue patents directly.
- Regional Patent Office: An intergovernmental organization that processes patent applications on behalf of multiple member countries.
The MPEP states: The right of priority may be based upon an application filed in a foreign country or in a regional patent office.
(MPEP 213)
Regional patent offices, such as the European Patent Office (EPO) or the African Regional Intellectual Property Organization (ARIPO), allow applicants to file a single application that can potentially lead to patent protection in multiple member countries.
The terms ‘right of priority’ and ‘benefit of an earlier filing date’ refer to different concepts in US patent law:
- Right of priority: This term is used in the context of foreign priority under 35 U.S.C. 119(a)-(d) and 365(a) and (b). It allows a US application to claim the priority date of a foreign application filed within the previous 12 months.
- Benefit of an earlier filing date: This term is used for domestic benefit under 35 U.S.C. 119(e) and 120. It allows a US application to claim the filing date of an earlier US provisional or nonprovisional application.
As stated in MPEP 216: ‘The right of priority is a statutory right, which is not considered an application property right.’
For more information on domestic benefit, visit: domestic benefit.
For more information on foreign priority, visit: foreign priority.
For more information on right of priority, visit: right of priority.
The deadline for submitting a certified copy of a foreign priority application depends on the filing date of the U.S. application. According to MPEP 213.02:
In the case of a U.S. application filed on or after March 16, 2013, the certified copy 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.
If the certified copy is not filed within this timeframe, the applicant must file a petition to accept a delayed submission and pay the associated fee.
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The deadline for filing a foreign priority claim in a U.S. patent application depends on the type of application:
- For applications filed under 35 U.S.C. 111(a), the claim 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
- For international applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set by the PCT and its Regulations
- For design patent applications, the claim can be made at any time during the pendency of the application
As stated in MPEP 214.01: “The time periods set forth in 37 CFR 1.55(d) do not apply to design applications.”
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For applications filed before March 16, 2013, the certified copy of the foreign application must be filed within the pendency of the application. According to 37 CFR 1.55(g)(1):
The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in ยง 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application.
However, it’s important to note that if the claim for priority or the certified copy is filed after the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction.
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The ‘In re Van Esdonk’ case (187 USPQ 671, Comm’r Pat. 1975) is an important precedent in patent law regarding the perfection of foreign priority claims. Key points about this case include:
- It involved a situation where a claim to foreign priority benefits had not been filed in the application prior to patent issuance.
- The application was a continuation of an earlier application that had satisfied the requirements of 35 U.S.C. 119(a)-(d) or (f).
- The Commissioner held that perfecting a priority claim in the parent application satisfies the statute for the continuation application.
The MPEP states: In re Van Esdonk, a claim to foreign priority benefits had not been filed in the application prior to issuance of the patent. However, the application was a continuation of an earlier application in which the requirements of 35 U.S.C. 119(a)-(d) or (f) had been satisfied. Accordingly, the Commissioner held that the ‘applicants’ perfection of a priority claim under 35 U.S.C. 119 in the parent application will satisfy the statute with respect to their continuation application.’
This case is significant because it allows for the perfection of foreign priority claims in continuation applications based on the parent application’s compliance, even after patent issuance.
A certified copy of a foreign application is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. According to the MPEP, “Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information.” It’s important to note that a copy of the certified copy filed by the applicant will not satisfy the requirement for a certified copy.
When submitting an English language translation of a non-English language foreign priority application, the following requirements must be met:
- The translation must be of the certified copy of the foreign application as filed
- The translation must be submitted together with a statement that the translation of the certified copy is accurate
As stated in the MPEP: When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate.
For more information on certified copy, visit: certified copy.
For more information on foreign priority, visit: foreign priority.
When submitting a certified copy of a foreign application for priority purposes, the following requirements apply:
- If the certified copy is not in English, a translation is required
- The translation must be of the certified copy of the foreign application as filed
- The translation must be filed together with a statement that the translation of the certified copy is accurate
The MPEP states: “When the examiner requires the filing of the certified copy, the translation should also be required at the same time. If an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) and it must be filed together with a statement that the translation of the certified copy is accurate.” (MPEP 216)
An unintentionally delayed priority claim occurs when a claim for foreign priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) is not presented within the time period provided by 37 CFR 1.55(d). In such cases, the claim is considered to have been waived but may be accepted if the delay was unintentional.
As stated in the MPEP: “If a claim for priority is considered to have been waived under this section, the claim may be accepted if the priority claim was unintentionally delayed.”
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An inventor’s certificate is a form of intellectual property protection offered in some countries. It can form the basis for priority rights under certain conditions, as stated in 35 U.S.C. 119(d):
Applications for inventors’ certificates filed in a foreign country in which applicants have a right to apply, at their discretion, either for a patent or for an inventor’s certificate shall be treated in this country in the same manner and have the same effect for purpose of the right of priority under this section as applications for patents…
This means that if an applicant had the option to file for either a patent or an inventor’s certificate in the foreign country, they can claim priority based on the inventor’s certificate application in the United States.
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An interim copy of a foreign priority document is a copy that is submitted before the certified copy is available. The MPEP 213.02 provides guidance on when an interim copy is acceptable:
The Office may require that an ‘interim copy’ of the foreign application be furnished in the event that the certified copy of the foreign application is not filed within the time period set forth in 37 CFR 1.55(f) and an exception in 37 CFR 1.55(h), (i), or (j) is not applicable.
An interim copy must:
- Be filed within the later of 4 months from the filing date of the application or 16 months from the filing date of the prior foreign application
- Be a copy of the original foreign application
- Be accompanied by a statement that the copy is a true copy
Note: An interim copy does not substitute the requirement for a certified copy, which must still be filed during the pendency of the application.
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An ‘interim copy’ is a true copy of the original foreign application that an applicant can file to meet the timeliness requirement when they cannot obtain a certified copy within the time limit. According to 37 CFR 1.55(j), the interim copy must be clearly labeled as ‘Interim Copy’ and filed with a cover sheet stating it is a true copy of the original foreign application.
The front page of a patent includes the following information regarding foreign priority claims:
- The country of the foreign application
- The filing date of the foreign application
- The number of the foreign application
This information is included for applications where the bib-data sheet has been properly endorsed. As stated in the MPEP: “The front page of the patent when it is issued, and the listing in the Official Gazette, will refer to the claim of priority, giving the country, the filing date, and the number of the foreign application in those applications in which the bib-data sheet has been endorsed.” (MPEP 202)
What happens if there’s an error in the foreign priority application number?
If there’s an error in the foreign priority application number, it can lead to serious consequences for the priority claim. The MPEP emphasizes the importance of accuracy:
“Errors in foreign priority claims may jeopardize the applicant’s priority claim.” (MPEP 214.04)
Consequences of errors may include:
- Rejection of the priority claim
- Loss of priority date
- Potential issues with patentability if prior art emerges in the intervening period
If an error is discovered, it’s crucial to promptly file a corrected Application Data Sheet (ADS) or a petition to correct the priority claim, depending on the timing and nature of the error. Always double-check the application number against the original foreign priority document to ensure accuracy.
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If priority papers are found to be deficient in material respects, such as failure to include the correct certified copy, applicants should ensure that there is sufficient time to remedy any defects. The MPEP advises: “Frequently, priority papers are found to be deficient in material respects, such as for example, the failure to include the correct certified copy, and applicants should ensure that there is sufficient time to remedy any defects.” It’s recommended to file priority papers as early as possible to allow time for correction if needed.
If the certified copy of the foreign application is filed after the date the issue fee is paid but prior to the date of grant of the patent, it will be placed in the file record but there will be no review of the papers. The patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the priority claim considered after publication of the patent.
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:
- A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323
- 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.”
If you don’t file a foreign priority claim within the specified time period, the claim is considered to have been waived. As stated in MPEP 214.01: “Claims for foreign priority not presented within the time period specified in 37 CFR 1.55 are considered to have been waived.”
However, there is a possibility to file a petition to accept an unintentionally delayed priority claim. The MPEP further states: “If a claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b) is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it includes the required identification information and is accompanied by a grantable petition to accept the unintentionally delayed claim for priority.”
For more information on the process of filing an unintentionally delayed priority claim, refer to MPEP ยง 214.02.
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If a foreign priority claim in an original application filed under 35 U.S.C. 111(a) (other than a design application) is submitted after the time period set in 37 CFR 1.55 and without a petition under 37 CFR 1.55, the examiner may notify the applicant that the foreign priority claim will not be entered.
As stated in the MPEP: If the foreign priority claim in an original application filed under 35 U.S.C. 111(a) (other than a design application) is submitted after the time period set in 37 CFR 1.55 and without a petition under 37 CFR 1.55, the examiner may use form paragraph 2.21.01 to notify applicant that the foreign priority claim will not be entered.
In such cases, the applicant must file a petition for an unintentionally delayed priority claim under 37 CFR 1.55(e) to have the priority claim considered.
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If a foreign application was filed more than 12 months before the U.S. application and priority has not been restored, the examiner will use form paragraph 2.23 to notify the applicant that the claim for priority cannot be based on that application.
As stated in the MPEP: Where the earlier foreign application was filed more than 12 months prior to the U.S. application and priority has not been restored under PCT Rule 26bis.3 for an international application or upon a granted petition under 37 CFR 1.55(c), use form paragraph 2.23.
In such cases, the applicant may file a petition under 37 CFR 1.55(c) to restore the right of priority if:
- The subsequent application was filed within two months from the expiration of the twelve-month period
- The delay was unintentional
The petition must include specific elements, such as the priority claim, petition fee, and a statement about the unintentional delay.
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When reviewing a claim to foreign priority, the examiner generally checks the following:
- That the papers contain no obvious formal defects
- That the papers correspond in number, date and country to the application identified in the application data sheet
- For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, that the claim for foreign priority is timely
The MPEP states: “When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner generally makes no examination of the papers except to see that they contain no obvious formal defects and correspond in number, date and country to the application identified in the application data sheet for an application filed on or after September 16, 2012, or oath or declaration or application data sheet for an application filed prior to September 16, 2012.” (MPEP 216)
To perfect a claim for foreign priority after patent issuance, several documents are required. According to MPEP 216.01, the following must be submitted:
- A petition to accept an unintentionally delayed claim for priority
- The required petition fee
- A certified copy of the foreign application
- An English language translation of the foreign application (if not in English)
- A statement that the translation is accurate
The MPEP states: ‘In addition to the petition to accept an unintentionally delayed claim for priority and the required petition fee, the claim for priority must be made in an application data sheet (if the patent issued from a utility or plant application filed on or after September 16, 2012) or in a request for a certificate of correction, and a certified copy of the foreign application must be submitted.’
It’s important to note that the requirements may vary slightly depending on the specific circumstances of the application and patent. Consulting with a patent attorney or agent is advisable for ensuring all necessary documents are properly prepared and submitted.
To claim foreign priority in a U.S. application, you must file a claim for priority and submit a certified copy of the foreign application. MPEP 213.04 states: ‘The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application.’
For applications filed on or after September 16, 2012, the priority claim must be presented in an Application Data Sheet (ADS). The certified copy must be filed within the later of 4 months from the actual filing date or 16 months from the foreign filing date, with some exceptions.
For more information on certified copy, visit: certified copy.
For more information on foreign priority, visit: foreign priority.
What are the requirements for filing a priority claim and certified copy of a foreign application?
According to 37 CFR 1.55(g)(1), the claim for priority and the certified copy of the foreign application must be filed within the pendency of the application. The MPEP states:
“The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in ยง 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application.”
This requirement applies to all applications and ensures that priority claims are properly documented before the application is granted.
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What are the requirements for claiming priority to a foreign application?
To claim priority to a foreign application, several requirements must be met:
- The U.S. application must be filed within 12 months of the foreign application (or 6 months for design patents).
- The foreign application must be from a country that grants similar privileges to U.S. applicants (Paris Convention member or WTO member).
- The applicant must file a claim for priority and a certified copy of the foreign application.
- As stated in MPEP 213: “The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed before the patent is granted.”
It’s important to note that the subject matter claimed in the U.S. application must be adequately supported by the foreign application to receive the benefit of the earlier filing date.
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For an international design application designating the United States, the requirements for claiming foreign priority are as follows:
- The claim for priority can be made in accordance with the Hague Agreement and the Hague Agreement Regulations.
- The claim must comply with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172.
- Priority can be claimed with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.
The MPEP states: Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.
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According to MPEP 214.02, a petition to accept an unintentionally delayed claim for priority requires the following:
- The priority claim: This must be submitted in an application data sheet (ADS) as required by 35 U.S.C. 119(b), unless previously submitted.
- The petition fee: As set forth in 37 CFR 1.17(m).
- A statement of unintentional delay: A statement that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional.
The MPEP states: ‘The Director may require additional information where there is a question whether the delay was unintentional.’ This means that in some cases, additional documentation may be required to support the claim of unintentional delay.
It’s important to note that these requirements apply to priority claims under various statutes, including 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), 386(a), 365(c), 119(e), 120, and 121.
To learn more:
- unintentionally delayed priority claim
- petition requirements
- ADS
- petition fee
- unintentional delay statement
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The inventorship requirements for claiming foreign priority are specific and important. Here are the key points:
- The U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.
- Priority rights do not exist if the foreign and U.S. applications have completely different sole inventors.
- Joint inventors can each claim the benefit of their separately filed foreign applications.
The MPEP clarifies: Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.
This requirement ensures a direct connection between the foreign priority application and the U.S. application claiming its benefit.
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A later-filed application for patent in the United States may claim the benefit of, or priority to, a prior application under certain conditions. These conditions are outlined in various U.S. statutes and regulations:
- For domestic benefit claims: 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78
- For foreign priority claims: 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55
The specific requirements and time frames may vary based on the filing date of the later-filed nonprovisional application and the type of priority or benefit claim being made.
For more information on domestic benefit, visit: domestic benefit.
For more information on foreign priority, visit: foreign priority.
For more information on prior-filed application, visit: prior-filed application.
How to retrieve a foreign priority document through PDX?
To retrieve a foreign priority document through PDX (Priority Document Exchange), follow these steps:
- Ensure the foreign office participates in PDX or WIPO DAS.
- File an application with the USPTO claiming foreign priority.
- Submit a request to retrieve the priority document using USPTO form PTO/SB/38 or through EFS-Web.
- Provide the necessary information, including the foreign application number and filing date.
- If using WIPO DAS, include the DAS access code provided by the foreign office.
According to MPEP 215.01: Applicants need not submit a copy of the foreign application if the foreign application was filed in a participating foreign intellectual property office, and the applicant provides sufficient information to the USPTO to retrieve the priority document.
To learn more:
When filing an interim copy via the USPTO patent electronic filing system:
- The main parts of the foreign priority application (Abstract, Drawings, Specification, Claims, etc.) along with the cover sheet may be filed as a single PDF image file.
- Select the document description ‘Interim Copy of the Foreign Priority Application’ when indexing.
- For plain text files (e.g., Sequence Listings), file as a .txt file and select ‘Interim Copy of the Foreign Priority (text file)’ as the document description.
- XML files (e.g., Standard ST.26 Sequence Listing) should be filed on a read-only optical disc as part of the ‘Interim Copy of Foreign Priority.’
See MPEP ยง 502.05 for more information on filing documents electronically.
How should the foreign priority application number be formatted in an ADS?
When entering the foreign priority application number in an Application Data Sheet (ADS), it’s crucial to follow the proper format to ensure accurate identification. The MPEP states:
“The foreign application number should be identified in an application data sheet (ADS), rather than in a separate paper.” (MPEP 214.04)
The ADS should include:
- The correct application number
- The country or intellectual property authority where the application was filed
- The filing date of the priority application
It’s important to use the exact format as it appears on the foreign priority document to avoid any discrepancies or potential issues with the priority claim.
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To ensure proper correlation between priority papers and U.S. applications, the MPEP suggests: “It is suggested that a notation of the application number of the corresponding U.S. application be placed on the priority papers when such papers are not submitted via a priority document exchange program. Such notation should be placed directly on the priority papers themselves even where a cover letter is attached bearing the U.S. application data.” This practice helps prevent separation of cover letters and priority papers, which can cause severe problems for both the Office and applicant.
To properly identify foreign priority applications in a patent application, applicants should follow the guidelines provided by the World Intellectual Property Organization (WIPO). The MPEP states:
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
Specifically, applicants should refer to:
- Part 7: Examples and Industrial Property Offices Practices
- Part 7.2.1: Presentation of Application Numbers
These resources provide the recommended format for citing foreign application numbers, ensuring accurate and complete relationships among patent documents.
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When a claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but before the patent is granted, special procedures apply.
According to the MPEP: 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.
To have the foreign priority claim or certified copy considered after publication of the patent:
- A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed
- For original applications under 35 U.S.C. 111(a) or national stage applications under 35 U.S.C. 371, a grantable petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55 and the petition fee must be filed with the certificate of correction
For more information on this process, refer to MPEP ยง 216.01.
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Foreign priority application information is handled as follows on the bib-data sheet:
- If a proper foreign priority claim is not listed on the bib-data sheet, the examiner should add the information and forward it for correction in the Office computer systems.
- Applications listed on the bib-data sheet but filed in countries not qualifying for benefits under 35 U.S.C. 119(a)-(d) should be lined through.
- The bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application claiming priority.
- Examiners should check this information for accuracy and make corrections if necessary.
The MPEP states: “If a foreign application listed on the oath or declaration (for applications filed prior to September 16, 2012) or application data sheet is not listed on the bib-data sheet and the foreign priority claim is proper (e.g., the foreign priority claim was timely made ), the examiner should provide the information regarding the foreign application number, the country, and the filing date on the bib-data sheet and forward the marked-up bib-data sheet to the Legal Instrument Examiner for correction in the Office computer systems.” (MPEP 202)
The USPTO recognizes that some countries have restrictions on who can apply for patents versus inventor’s certificates. As stated in MPEP 213.05:
It is recognized that certain countries that grant inventors’ certificates also provide by law that their own nationals who are employed in state enterprises may only receive inventors’ certificates and not patents on inventions made in connection with their employment. This will not impair their right to be granted priority in the United States based on the filing of the inventor’s certificate.
This means that even if an applicant was restricted to filing for an inventor’s certificate in their home country due to employment or nationality, they can still claim priority in the US based on that filing. The key factor is whether the option to file for either a patent or an inventor’s certificate generally existed in the country for the particular subject matter, not whether the specific applicant had that choice.
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The USPTO determines if a foreign country qualifies for priority rights based on specific criteria outlined in the MPEP. According to MPEP 213.01:
The right of priority is recognized only if the foreign country in which the original application was filed is recognized at the time of filing the application in the United States.
The USPTO considers several factors:
- The country must be a member of the Paris Convention for the Protection of Industrial Property or have a bilateral agreement with the United States.
- The country must grant similar priority rights to U.S. citizens.
- The country must be recognized by the U.S. Department of State.
The USPTO maintains a list of recognized countries and regional patent offices in MPEP 213.01, which is updated periodically to reflect changes in international relations and treaty memberships.
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, and there are no irregularities, the USPTO acknowledges receipt in the next Office action.
According to the MPEP: 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.
The examiner may use form paragraph 2.26, which states: Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
If the foreign priority papers have been filed in a parent application, the examiner will use form paragraph 2.27 to acknowledge this fact.
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The Patent Cooperation Treaty (PCT) interacts with foreign priority claims as outlined in MPEP 213. The PCT allows applicants to file a single international patent application that can later enter the national phase in multiple countries.
Key points regarding PCT and foreign priority:
- PCT applications can claim priority from earlier national or regional applications
- The priority period for PCT applications is also 12 months from the earliest priority date
- PCT applications themselves can serve as the basis for priority claims in subsequent national or regional applications
As stated in MPEP 213, “U.S. national applications may claim priority to an international application (PCT) filed in a PCT Receiving Office other than the United States Receiving Office.” This demonstrates the flexibility of the PCT system in international patent protection strategies.
How does the Paris Convention affect priority claims in US patent applications?
The Paris Convention plays a crucial role in international priority claims for US patent applications. According to MPEP 216:
‘The right of priority is based on the Paris Convention for the Protection of Industrial Property, which is adhered to by the United States.’
The Paris Convention affects US patent applications in the following ways:
- It allows applicants to claim priority from foreign applications filed in member countries
- It establishes a 12-month priority period for utility patents and a 6-month period for design patents
- It ensures that filing an application in one member country does not invalidate the novelty of the invention in other member countries
The implementation of the Paris Convention in US law is found in 35 U.S.C. 119(a)-(d), which outlines the requirements for claiming foreign priority.
For more information on foreign priority, visit: foreign priority.
For more information on international patent applications, visit: international patent applications.
For more information on Paris Convention, visit: Paris Convention.
Incorporation by reference for foreign priority applications is an important safeguard for applicants. Here’s how it works:
- For applications filed on or after September 21, 2004, a claim under 37 CFR 1.55 for priority of a prior-filed foreign application is considered an incorporation by reference of the prior-filed foreign priority application.
- This incorporation is subject to the conditions and requirements of 37 CFR 1.57(b).
- It applies to inadvertently omitted material from the foreign priority application.
- Applicants can provide an explicit incorporation by reference statement for broader coverage.
The MPEP states: For applications filed on or after September 21, 2004, a claim under 37 CFR 1.55 for priority of a prior-filed foreign application that was present on the filing date of the application is considered an incorporation by reference of the prior-filed foreign priority application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b).
This provision helps protect applicants from accidental omissions in their U.S. applications.
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How does the Electronic Priority Document Exchange (PDX) program work with the USPTO?
The Electronic Priority Document Exchange (PDX) program is a system that allows participating intellectual property offices to exchange priority documents electronically. According to MPEP 215.01, the USPTO participates in this program, which can simplify the process of submitting certified copies of foreign priority applications.
The MPEP states: The USPTO has agreements with the European Patent Office (EPO) and the Japan Patent Office (JPO) that enable the USPTO to obtain certified copies of foreign applications filed in those offices from their electronic records management systems.
Here’s how the PDX program works with the USPTO:
- If a foreign application was filed with a participating office (e.g., EPO or JPO), the applicant can request that office to make the certified copy of the priority document available to the USPTO.
- The applicant must submit a request to retrieve the priority document through the USPTO’s electronic filing system (EFS-Web or Patent Center).
- The USPTO will then attempt to retrieve the document electronically from the foreign office.
- If successful, this electronic retrieval satisfies the requirement to file a certified copy of the foreign priority application.
It’s important to note that the applicant is still responsible for ensuring that the certified copy is received by the USPTO within the required time frame, even when using the PDX program.
The America Invents Act’s (AIA) first-inventor-to-file (FITF) provision has significant implications for perfecting foreign priority claims, especially in cases where the foreign application has a pre-March 16, 2013 filing date. Key points include:
- If a patent was examined under FITF provisions, but the foreign priority application has a pre-AIA filing date, perfecting the priority claim may require further examination.
- In such cases, a certificate of correction is not sufficient, and a reissue application is necessary.
- This situation arises because changing the effective filing date could potentially subject the patent to a different statutory framework.
The MPEP states: In situations where further examination would be required, the petition should not be granted. For example, further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA.
This requirement ensures that patents are not inadvertently subjected to different legal standards without proper examination.
How does the AIA affect priority claims for applications filed on or after March 16, 2013?
The America Invents Act (AIA) significantly changed the U.S. patent system, particularly affecting priority claims for applications filed on or after March 16, 2013. According to MPEP 216:
“AIA 35 U.S.C. 100(i)(1)(B) provides that the effective filing date for a claimed invention in a patent or application for patent (other than a reissue application or reissued patent) is the filing date of the earliest application for which the patent or application is entitled to claim a right of foreign priority or domestic benefit.”
This change means that:
- The effective filing date can now include foreign priority dates, not just domestic benefit dates.
- The first-to-file system replaced the first-to-invent system for determining priority.
- Prior art is now determined based on the effective filing date, including foreign priority dates.
These changes have significant implications for inventors and patent practitioners in terms of strategy for filing applications and claiming priority, especially in a global context.
For more information on America Invents Act, visit: America Invents Act.
For more information on effective filing date, visit: effective filing date.
For more information on foreign priority, visit: foreign priority.
PDX for U.S. design applications has specific considerations, as explained in MPEP 215.01:
The USPTO will attempt retrieval of foreign applications to which priority is claimed in a U.S. design application where possible. The Spanish Patent and Trademark Office deposits certain ES industrial design applications for access by the USPTO via the WIPO DAS. Therefore, when the applicant claims foreign priority to an ES industrial design application and provides the WIPO DAS access code, the USPTO will attempt retrieval via the WIPO DAS.
Key points for design applications:
- The USPTO attempts to retrieve foreign priority documents for design applications where possible.
- Spanish industrial design applications are accessible through WIPO DAS.
- Applicants must provide the WIPO DAS access code for Spanish industrial design applications.
- The USPTO will attempt retrieval via WIPO DAS when the access code is provided.
This process helps streamline the priority document retrieval for design applications, particularly those with Spanish priority.
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Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.
For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.
For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.
It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.
Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.
Claiming foreign priority can significantly affect the prior art date in your application:
- For applications subject to pre-AIA law, the foreign priority date becomes the effective U.S. filing date for prior art purposes under 35 U.S.C. 102(a), (b), and (d)
- For applications subject to AIA law, the foreign priority date is treated as the effective filing date for prior art purposes under 35 U.S.C. 102(a)(1) and (a)(2)
This means that intervening disclosures between your foreign filing date and your U.S. filing date may not be considered prior art against your application. However, it’s important to note that the claimed subject matter must be fully supported by the foreign application to get the benefit of its filing date. Additionally, the priority claim must be proper and timely made for this benefit to apply.
When an examiner finds an intervening reference (a reference with an effective date between the foreign filing date and the U.S. filing date) and a foreign priority claim is present, the examiner follows these steps:
- If the certified copy of the priority papers has not been filed, the examiner rejects the claims that may be unpatentable over the reference without considering the priority date.
- The applicant may then argue the rejection or present the foreign papers to overcome the date of the reference.
- If the applicant argues the rejection, the examiner may, in the next action:
- Specifically require the foreign papers to be filed while repeating the rejection if still applicable, or
- Simply continue the rejection
The MPEP states: “If at the time of making an action the examiner has found such an intervening reference, the examiner simply rejects whatever claims may be considered unpatentable thereover, without paying any attention to the priority date (assuming the certified copy of the priority papers has not yet been filed).” (MPEP 216)
For pre-AIA applications, the Application Data Sheet (ADS) plays a crucial role in establishing priority claims:
1. For domestic priority: MPEP 601.05(b) states, “Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120.” This means that including domestic priority information in the ADS satisfies the requirement for a specific reference to earlier filed applications.
2. For foreign priority: The MPEP notes, “Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and 37 CFR 1.55.”
In both cases, including priority information in the ADS eliminates the need to make these claims elsewhere in the application, such as in the specification.
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In patent applications filed before September 16, 2012, an Application Data Sheet (ADS) can significantly impact the priority claim process. The ADS can be used to:
- Provide domestic benefit information
- Include foreign priority information
- Correct or update priority claims within certain timeframes
According to MPEP 601.05(b): “For applications filed before September 16, 2012, an application data sheet may be used to provide or correct benefit claim information, such as cross-references to one or more prior-filed applications… The benefit claim must be set forth in the ADS in order to be considered properly submitted.”
It’s crucial to note that while the ADS can be used to submit priority information, applicants must still comply with other statutory requirements and deadlines for claiming priority. The ADS provides a centralized location for this information, potentially simplifying the application process and reducing errors in priority claims.
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To request retrieval of a foreign priority document through the Priority Document Exchange (PDX) program, follow these steps:
- Ensure that the foreign application is from a participating office in the PDX program.
- File an application data sheet (ADS) including a proper priority claim to the foreign application.
- Submit a request for retrieval of the foreign priority document.
The MPEP 215.01 states: “To authorize retrieval of a priority document via PDX, the applicant should submit the request electronically via EFS-Web using the Priority Document Exchange Request form (PTO/SB/38) or as a pre-grant (PGPub) request via Private PAIR.” It’s important to note that the request should be made 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.
To properly identify a foreign application when claiming priority, you must provide the following information:
- Application number
- Country or intellectual property authority
- Day, month, and year of filing
As stated in MPEP 214.01: “The claim for priority must be presented in an application data sheet (ยง 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.”
For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, this information must be provided in an application data sheet. For earlier applications, it may be included in the oath or declaration if not provided in an application data sheet.
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To file a foreign priority claim in a U.S. patent application, you must:
- File the claim within the specified time limit (see previous FAQ for details).
- 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.
- 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 (ยง1.76(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.
For international applications entering the national stage in the United States under 35 U.S.C. 371, the process for filing a foreign priority claim is different from regular U.S. applications. According to MPEP 214.01:
“The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371, except as provided in paragraph (e) of this section.”
This means that you need to follow the time limits specified in the Patent Cooperation Treaty (PCT) and its regulations when filing a priority claim for an international application entering the U.S. national stage.
For more detailed information on the timing and procedure for claiming priority in national stage applications, you should refer to MPEP ยง 213.06, which specifically deals with this topic.
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When claiming priority to a foreign application filed in a non-English language, you must provide an English translation of the foreign application. The MPEP 213.02 states:
If the foreign application is not in the English language, an English translation of the foreign application is also required. See 37 CFR 1.55(g)(3).
Additionally, you must submit:
- A statement that the translation is accurate
- The certified copy of the foreign application
These documents should be filed within the prescribed time period to properly establish the priority claim.
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An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.
According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”
The petition to restore the right of priority must include:
- The priority claim identifying the prior foreign application
- The petition fee
- A statement that the delay in filing was unintentional
The USPTO may require additional information to establish that the delay was unintentional.
For more information on foreign priority, visit: foreign priority.
For more information on priority restoration, visit: priority restoration.
For more information on unintentional delay, visit: unintentional delay.
No, the time period for filing a foreign priority claim cannot be extended. As stated in MPEP 214.01: “This time period is not extendable.”
However, if you miss the deadline, there is a possibility to file a petition to accept an unintentionally delayed priority claim. The MPEP states: “If a claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b) is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it includes the required identification information and is accompanied by a grantable petition to accept the unintentionally delayed claim for priority.”
For more information on unintentionally delayed priority claims, refer to MPEP ยง 214.02.
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Yes, you can perfect a claim for foreign priority after your patent has been issued. There are two main methods:
- Certificate of Correction: This is generally the preferred method if the requirements of 37 CFR 1.55 are met and no further examination is required. As stated in the MPEP,
Except in certain situations, a certificate of correction can generally be used to perfect a claim to foreign priority where a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim is filed with a request for a certificate of correction in an issued patent.
- Reissue Application: This method is necessary in situations where further examination would be required or when the requirements of 35 U.S.C. 119(a)-(d) or (f) were not satisfied in the patented application or its parent prior to issuance.
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Yes, you can file a foreign priority claim after your patent has been granted, but it requires additional steps:
- File a petition under 37 CFR 1.55(e) for an unintentionally delayed priority claim
- Submit a request for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323
- 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).”
Yes, you can claim priority to multiple foreign applications for the same invention, provided they meet certain criteria. The MPEP 213.02 addresses this situation:
Where two or more foreign applications are combined in a single U.S. application, to take advantage of the changes to 35 U.S.C. 103 or to claim both priority and the benefit of the filing date of an earlier application, the claimed subject matter in the U.S. application is entitled only to the earliest date to which it is entitled in any of the included foreign applications.
To claim priority to multiple foreign applications:
- Each foreign application must be properly identified in the application data sheet (ADS)
- Certified copies of all foreign applications must be submitted
- The U.S. application must be filed within 12 months of the earliest filed foreign application
Note: The effective priority date for any claimed subject matter will be the earliest applicable date from the foreign applications.
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Yes, under certain conditions, an applicant can claim priority based on an application for an inventor’s certificate. MPEP 213.05 explains: ‘An inventor’s certificate may form the basis for rights of priority under 35 U.S.C. 119(d) only when the country in which it is filed gives to applicants, at their discretion, the right to apply, on the same invention, either for a patent or for an inventor’s certificate.’
To claim priority to an inventor’s certificate, the applicant must file an affidavit or declaration stating that they had the option to file for either a patent or an inventor’s certificate in the foreign country.
For more information on foreign priority, visit: foreign priority.
Can I claim priority to a provisional application filed in a foreign country?
No, you cannot claim priority to a provisional application filed in a foreign country. The MPEP 213.02 states:
‘Note that a foreign filed provisional application is not eligible for priority benefit.’
Priority claims can only be made to non-provisional applications or other types of applications that are recognized under the Paris Convention. Provisional applications are unique to the U.S. patent system and are not recognized as priority documents in foreign countries or under international agreements.
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Yes, it is possible to claim priority to a foreign application after your U.S. patent has been issued. According to MPEP 216.01, a claim for priority under 35 U.S.C. 119(a)-(d) or (f) can be made after the patent is granted, subject to certain conditions:
- The claim must be made within the time period set forth in 37 CFR 1.55(g).
- A petition to accept an unintentionally delayed claim for priority must be filed.
- The required fee must be paid.
- A certified copy of the foreign application must be submitted.
The MPEP states: ‘A claim for priority under 35 U.S.C. 119(a)-(d) or (f) for the benefit of a prior foreign application may be made after the patent issues if the claim is accompanied by a grantable petition to accept an unintentionally delayed claim for priority.’
Can I add a benefit claim to a foreign priority application after filing?
Yes, you can add a benefit claim to a foreign priority application after filing, but specific procedures must be followed. According to MPEP 211.02(a):
“In the case of a design application, an original claim under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) to a prior U.S. application or PCT international application designating the United States may be made by the filing of an amendment to the specification within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.”
For utility applications, similar time frames apply. However, if you miss these deadlines, you must file a petition under 37 CFR 1.78 along with the petition fee to add the benefit claim. The petition must include:
- The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed application
- A statement that the entire delay was unintentional
- The petition fee set forth in 37 CFR 1.17(m)
It’s important to act promptly when adding or correcting benefit claims to avoid potential issues with patentability or patent term.
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Yes, a U.S. applicant can claim priority from a provisional application filed in a foreign country, provided certain conditions are met. The MPEP 213 states:
An applicant may claim the right of priority based on a prior foreign application under the Paris Convention and 35 U.S.C. 119(a)-(d) whether the foreign application is an application for a patent or for the registration of a utility model or an industrial design.
Key points to consider:
- The foreign country must be a recognized country or regional patent office as listed in MPEP 213.01.
- The provisional application must be the first filing of the invention in any country.
- The U.S. application must be filed within 12 months of the foreign provisional filing date.
- The applicant must comply with all requirements for claiming priority, including submitting a certified copy of the foreign application.
It’s important to note that not all countries have provisional application systems, so the term ‘provisional’ may have different meanings in different jurisdictions. Always consult with a patent attorney or agent for specific advice on international priority claims.
Yes, a US patent application can claim both foreign priority and domestic benefit simultaneously. This is known as a ‘multiple priority claim’ or ‘multiple benefit claim.’ The MPEP 216 states:
‘It is possible for a U.S. application to be entitled to the benefit of an earlier U.S. filing date and also to the right of priority of a foreign application.’
Here’s how it works:
- The application can claim foreign priority under 35 U.S.C. 119(a)-(d) to a foreign application filed within the past 12 months.
- At the same time, it can claim domestic benefit under 35 U.S.C. 120 to an earlier US application.
- The earlier US application can also claim foreign priority to the same foreign application.
This allows the US application to potentially have an effective filing date that is earlier than both its actual filing date and the filing date of the US application it claims benefit from.
For more information on domestic benefit, visit: domestic benefit.
For more information on foreign priority, visit: foreign priority.
Yes, a nonprovisional application can be entitled to different foreign filing dates for different claims. This can occur in two scenarios:
- The application may be found entitled to the filing date of a foreign application for some claims but not for others.
- An applicant may rely on two or more different foreign applications and may be entitled to the filing date of one application for certain claims and to another for other claims.
The MPEP states: “A nonprovisional application may be found entitled to the filing date of the foreign application with respect to some claims and not with respect to others. In addition, an applicant may rely on two or more different foreign applications and may be entitled to the filing date of one of them with respect to certain claims and to another with respect to other claims.” (MPEP 216)
No, a copy of the foreign patent as issued does not comply with the certified copy requirement. The MPEP states: “A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the certification indicates that it corresponds to the application as filed.” The key is that the certified copy must represent the application as originally filed, not the patent as eventually issued.
Yes, design patent applications have different requirements for filing priority claims compared to utility patent applications. The main difference is in the time period for filing the claim. As stated in MPEP 214.01:
“The time periods set forth in 37 CFR 1.55(d) do not apply to design applications.”
For design applications, the MPEP further clarifies: “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 priority claim at any time while the application is pending, which provides more flexibility compared to utility patent applications.
For more detailed information on priority claims in design applications, you can refer to MPEP ยง 1504.10 and MPEP ยง 2920.05(d).
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Yes, there can be subject matter restrictions when claiming priority based on inventor’s certificates. The MPEP 213.05 states:
Certain countries which grant both patents and inventor’s certificates issue only inventor’s certificates on certain subject matter, generally pharmaceuticals, foodstuffs, and cosmetics.
This means that for certain types of inventions, some countries may only offer inventor’s certificates and not patents. However, this doesn’t necessarily prevent an applicant from claiming priority in the US. The key requirement is that the option to file for either a patent or an inventor’s certificate must have generally existed in the country for the particular subject matter of the invention, even if it wasn’t available for the specific invention in question.
Applicants must still provide an affidavit or declaration as required by 37 CFR 1.55(l), stating that they had the option to file for either a patent or an inventor’s certificate for the subject matter forming the basis of the priority claim.
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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.
Patent Procedure (95)
A Certificate of Correction is appropriate for perfecting a foreign priority claim in the following situations:
- When the priority claim was timely filed in the application but was not included on the patent because the requirement for a certified copy was not satisfied. In this case, a grantable petition under 37 CFR 1.55(f) or 37 CFR 1.55(g) for design applications is also required.
- When a priority claim under 37 CFR 1.55 was not timely made, but the correction sought would not require further examination.
The MPEP states: “Effective May 13, 2015, 37 CFR 1.55(g) provides that the claim for priority and the certified copy of the foreign application must be filed within the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. 37 CFR 1.55(g) eliminates the need in many instances to file a reissue application in order to perfect a claim for foreign priority.” (MPEP 216.01)
An examiner considers the merits of a foreign priority claim in the following situations:
- When a reference is found with an effective date between the foreign filing date and the U.S. filing date
- When determining if a reference’s prior art date falls within the grace period for the application under examination
- When an interference situation is under consideration
The MPEP states: “The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons. For example, the examiner considers the merits of an applicant’s claim of priority when a reference is found with an effective date between the date of the foreign filing and the date of filing in the United States, when determining whether a reference’s prior art date is within the grace period for the application under examination, and when an interference situation is under consideration.” (MPEP 216)
An international design application designating the United States can claim priority based on several types of prior applications. According to MPEP 213.07:
Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.
The types of prior applications that can be used for claiming priority include:
- A prior foreign application
- An international application (PCT) designating at least one country other than the United States
- A prior international design application designating at least one country other than the United States
These priority claims must comply with the conditions and requirements set forth in 35 U.S.C. 119(a)-(d) and 172, as well as the Hague Agreement and its Regulations.
For more information on foreign priority, visit: foreign priority.
For more information on Hague Agreement, visit: Hague Agreement.
For more information on prior applications, visit: prior applications.
When examining a patent application, it’s crucial for the examiner to verify and indicate whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met. These sections relate to the right of priority for foreign applications.
The MPEP instructs: However, the examiner must still indicate in the Office action and on the bib-data sheet whether the conditions of35 U.S.C. 119(a)-(d)or(f)have been met.
(MPEP 202)
This means the examiner should:
- Review the foreign priority claim
- Determine if all conditions for the claim have been satisfied
- Indicate the status of the claim in the Office action
- Mark the bib-data sheet accordingly
If the conditions are met, this information will be reflected on the front page of the issued patent and in the Official Gazette listing. For more information on foreign priority claims, see MPEP ยง 213.
For more information on foreign priority, visit: foreign priority.
For more information on patent examination, visit: patent examination.
To claim priority based on an inventor’s certificate, applicants must meet specific requirements outlined in 37 CFR 1.55(l):
To claim the right of priority on the basis of an application for an inventor’s certificate in such a country under 35 U.S.C. 119(d), the applicant when submitting a claim for such right as specified in this section, must include an affidavit or declaration.
The affidavit or declaration must state that:
- The applicant had the option to file for either a patent or an inventor’s certificate in the foreign country
- This option existed for the particular subject matter of the invention
It’s important to note that the affidavit is only required to ascertain the general existence of this option in the foreign country, not to probe into the eligibility of the particular applicant.
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The transition application statement is a requirement for certain applications that bridge the pre-AIA and AIA periods. Here are the key points:
- It applies to nonprovisional applications filed on or after March 16, 2013, that claim priority to a foreign application filed before March 16, 2013.
- The statement is required if the application contains or contained a claim to an invention with an effective filing date on or after March 16, 2013.
- The applicant must provide this statement within a specified time period.
- International design applications are exempt from this requirement.
As stated in the MPEP: If a nonprovisional application filed on or after March 16, 2013, claims priority to a foreign application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date (as defined in 35 U.S.C. 100(i)) on or after March 16, 2013, the applicant must provide a statement to that effect within a specified time period.
This requirement helps the USPTO determine which law applies to the application.
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The time limit for filing a delayed claim for foreign priority after patent issuance is specified in 37 CFR 1.55(g). According to MPEP 216.01:
‘The time period set in 37 CFR 1.55(g) for filing a claim for priority and the certified copy required under 37 CFR 1.55(f) is the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.’
However, for patents that have already been issued, the claim must be filed within the period set forth in 37 CFR 1.55(g). This typically means that the claim should be filed as soon as possible after realizing the oversight, as any delay beyond the statutory period would require explanation and potentially affect the grant of the petition.
For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) sets the time limit for filing a certified copy of the foreign application. The certified copy 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
This time limit does not apply to design applications. For international applications entering the national stage under 35 U.S.C. 371, the time limit is set forth in 37 CFR 1.55(f)(2).
It’s important to note that there are exceptions to these time limits, as provided in 37 CFR 1.55(h), (i), and (j).
For more information on certified copy, visit: certified copy.
For more information on foreign priority, visit: foreign priority.
For more information on time limit, visit: time limit.
For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) requires that a certified copy of the foreign application 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
This time period does not apply to design applications. There are three exceptions to this requirement, as outlined in 37 CFR 1.55(h), (i), and (j).
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What is the significance of the Paris Convention in foreign priority claims?
The Paris Convention plays a crucial role in foreign priority claims for patent applications. Its significance includes:
- Establishing the right of priority for patent applications among member countries.
- Allowing applicants to file in multiple countries while maintaining the original filing date.
- Providing a 12-month priority period for utility patents (6 months for design patents).
- Ensuring equal treatment of foreign and domestic applicants in member countries.
According to MPEP 213: “The right of priority is defined in Article 4 of the Paris Convention for the Protection of Industrial Property and is based on the first filing in a Paris Convention country.” This convention facilitates international patent protection by allowing inventors to secure priority dates across multiple jurisdictions.
For a valid foreign priority claim, the U.S. application and the foreign application must name the same inventor or have at least one joint inventor in common. This requirement ensures that the right of priority is properly linked between the applications.
As stated in MPEP 213.02: “Pursuant to 35 U.S.C. 119(a), the foreign application must have been filed by the same applicant as the applicant in the United States, or by applicant’s legal representatives or assigns. Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”
The MPEP further clarifies: “Joint inventors A and B in a nonprovisional application filed in the United States Patent and Trademark Office may properly claim the benefit of an application filed in a foreign country by A and another application filed in a foreign country by B, i.e., A and B may each claim the benefit of their foreign filed applications.”
This requirement ensures that the priority right is properly linked to the inventive entity responsible for the invention in both the foreign and U.S. applications.
For more information on foreign priority, visit: foreign priority.
For more information on joint inventors, visit: joint inventors.
For a valid foreign priority claim, the U.S. application must have at least one common inventor with the foreign application. This requirement ensures that the right of priority is only available to the actual inventors or their legal representatives.
As stated in MPEP 213.02: “Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”
This means that:
1. A sole inventor in the U.S. can claim priority to a foreign application where they are the sole inventor or one of joint inventors.
2. Joint inventors in the U.S. can claim priority to a foreign application filed by any one or more of them.
3. A U.S. application cannot claim priority to a foreign application with completely different inventors.
It’s important to note that while the inventorship must overlap, it doesn’t have to be identical between the U.S. and foreign applications.
The affidavit required for claiming priority based on an inventor’s certificate serves a specific purpose, as outlined in MPEP 213.05:
The affidavit or declaration specified under 37 CFR 1.55(l) is only required for the purpose of ascertaining whether, in the country where the application for an inventor’s certificate originated, this option generally existed for applicants with respect to the particular subject matter of the invention involved.
The affidavit is not intended to investigate the specific applicant’s eligibility to exercise the option in their particular case. Rather, it’s meant to confirm that in the country where the inventor’s certificate was filed, applicants generally had the right to choose between applying for a patent or an inventor’s certificate for the subject matter in question.
This requirement ensures compliance with the treaty and statute governing priority rights, while recognizing that some countries may have restrictions based on factors such as employment or nationality.
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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.
When a claim to priority and certified copy of a foreign application are received during the pendency of a patent application, the examiner generally follows these steps:
- Checks for obvious formal defects in the documents
- Verifies that the documents correspond to the application identified in the application data sheet
- For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, ensures the claim for foreign priority is timely
The examiner does not typically examine the subject matter to determine if the applicant is entitled to the benefit of the foreign filing date unless it’s necessary for patentability reasons. As stated in the MPEP, The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons.
For more information on application data sheet, visit: application data sheet.
For more information on certified copy, visit: certified copy.
For more information on foreign priority, visit: foreign priority.
For more information on patent examination, visit: patent examination.
The Priority Document Exchange (PDX) program is a system that allows participating intellectual property offices to exchange priority documents electronically. This program simplifies the process of submitting certified copies of foreign priority applications for patent applicants.
According to the MPEP, The Office website provides information concerning the priority document exchange program ( www.uspto.gov/patents/basics/international-protection/electronic-priority-document-exchange-pdx )
. This information includes participating offices and instructions for accessing foreign applications.
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A proper foreign priority claim can give a U.S. patent application the benefit of the earlier foreign filing date as its effective filing date for prior art purposes. This can be crucial for establishing novelty and non-obviousness of the invention.
35 U.S.C. 119(a) states that a U.S. application properly claiming foreign priority “shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country.”
This means that intervening prior art published after the foreign filing date but before the U.S. filing date may not be used against the application if the priority claim is valid. However, it’s important to note that the actual U.S. filing date is still used for other purposes, such as calculating patent term.
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.
Claiming priority and claiming benefit are two different mechanisms in patent law, though both can affect the effective filing date of a patent application:
- Claiming Priority:
- Typically refers to claiming the right of priority to a foreign application under 35 U.S.C. 119(a)-(d) and (f)
- Also includes priority claims to provisional applications under 35 U.S.C. 119(e)
- Governed by 37 CFR 1.55 for foreign priority claims
- Claiming Benefit:
- Refers to claiming the benefit of an earlier filing date of a U.S. application under 35 U.S.C. 120, 121, 365(c), or 386(c)
- Typically used for continuation, divisional, or continuation-in-part applications
- Governed by 37 CFR 1.78
The MPEP discusses both types of claims: “Under certain conditions and on fulfilling certain requirements, a later-filed application for patent filed in the United States may claim the benefit of, or priority to, a prior application filed in the United States (see 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78) or in a foreign country (see 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55).”
Claiming foreign priority under 35 U.S.C. 119(a)-(d) and claiming benefit of a U.S. provisional application under 35 U.S.C. 119(e) are similar in some ways but have important differences:
1. Time limit:
– Foreign priority: Must be claimed within 12 months (6 months for design applications)
– Provisional: Must be claimed within 12 months
2. Effective filing date:
– Both can provide an earlier effective filing date for prior art purposes
3. Patent term:
– Foreign priority: Does not affect patent term
– Provisional: The 12-month period counts towards the 20-year patent term
4. Disclosure requirements:
– Both require the earlier application to provide adequate support for the claimed invention
5. Formalities:
– Foreign priority: Requires a certified copy of the foreign application
– Provisional: No certified copy required, but the provisional must be in English
6. Inventorship:
– Foreign priority: Requires at least one common inventor
– Provisional: Requires at least one common inventor
7. International effect:
– Foreign priority: Recognized in other Paris Convention countries
– Provisional: May not be recognized in some foreign jurisdictions
Both types of priority claims can be valuable for establishing an earlier effective filing date, but they have different requirements and effects that should be considered when developing a patent strategy.
Foreign priority claims and domestic benefit claims are two different ways of claiming the benefit of an earlier filing date:
- Foreign priority claims (under 35 U.S.C. 119(a)-(d)) are based on earlier applications filed in foreign countries
- Domestic benefit claims can be to earlier U.S. provisional (35 U.S.C. 119(e)) or nonprovisional (35 U.S.C. 120) applications
Key differences include:
- Time limits: 12 months for foreign priority, 12 months for provisionals, no limit for nonprovisionals
- Required documents: Certified copy needed for foreign priority, not for domestic benefit
- Effect: Foreign priority is mainly for prior art purposes, domestic benefit can confer actual pendency benefits
Both types of claims must be properly made to be effective, but the specific requirements and effects differ.
In the context of foreign priority claims, there’s an important distinction between a ‘country’ and a ‘regional patent office’:
- Country: A sovereign nation that has its own patent system and can issue patents directly.
- Regional Patent Office: An intergovernmental organization that processes patent applications on behalf of multiple member countries.
The MPEP states: The right of priority may be based upon an application filed in a foreign country or in a regional patent office.
(MPEP 213)
Regional patent offices, such as the European Patent Office (EPO) or the African Regional Intellectual Property Organization (ARIPO), allow applicants to file a single application that can potentially lead to patent protection in multiple member countries.
The terms ‘right of priority’ and ‘benefit of an earlier filing date’ refer to different concepts in US patent law:
- Right of priority: This term is used in the context of foreign priority under 35 U.S.C. 119(a)-(d) and 365(a) and (b). It allows a US application to claim the priority date of a foreign application filed within the previous 12 months.
- Benefit of an earlier filing date: This term is used for domestic benefit under 35 U.S.C. 119(e) and 120. It allows a US application to claim the filing date of an earlier US provisional or nonprovisional application.
As stated in MPEP 216: ‘The right of priority is a statutory right, which is not considered an application property right.’
For more information on domestic benefit, visit: domestic benefit.
For more information on foreign priority, visit: foreign priority.
For more information on right of priority, visit: right of priority.
The deadline for submitting a certified copy of a foreign priority application depends on the filing date of the U.S. application. According to MPEP 213.02:
In the case of a U.S. application filed on or after March 16, 2013, the certified copy 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.
If the certified copy is not filed within this timeframe, the applicant must file a petition to accept a delayed submission and pay the associated fee.
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The deadline for filing a foreign priority claim in a U.S. patent application depends on the type of application:
- For applications filed under 35 U.S.C. 111(a), the claim 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
- For international applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set by the PCT and its Regulations
- For design patent applications, the claim can be made at any time during the pendency of the application
As stated in MPEP 214.01: “The time periods set forth in 37 CFR 1.55(d) do not apply to design applications.”
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For applications filed before March 16, 2013, the certified copy of the foreign application must be filed within the pendency of the application. According to 37 CFR 1.55(g)(1):
The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in ยง 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application.
However, it’s important to note that if the claim for priority or the certified copy is filed after the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction.
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The ‘In re Van Esdonk’ case (187 USPQ 671, Comm’r Pat. 1975) is an important precedent in patent law regarding the perfection of foreign priority claims. Key points about this case include:
- It involved a situation where a claim to foreign priority benefits had not been filed in the application prior to patent issuance.
- The application was a continuation of an earlier application that had satisfied the requirements of 35 U.S.C. 119(a)-(d) or (f).
- The Commissioner held that perfecting a priority claim in the parent application satisfies the statute for the continuation application.
The MPEP states: In re Van Esdonk, a claim to foreign priority benefits had not been filed in the application prior to issuance of the patent. However, the application was a continuation of an earlier application in which the requirements of 35 U.S.C. 119(a)-(d) or (f) had been satisfied. Accordingly, the Commissioner held that the ‘applicants’ perfection of a priority claim under 35 U.S.C. 119 in the parent application will satisfy the statute with respect to their continuation application.’
This case is significant because it allows for the perfection of foreign priority claims in continuation applications based on the parent application’s compliance, even after patent issuance.
A certified copy of a foreign application is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. According to the MPEP, “Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information.” It’s important to note that a copy of the certified copy filed by the applicant will not satisfy the requirement for a certified copy.
When submitting an English language translation of a non-English language foreign priority application, the following requirements must be met:
- The translation must be of the certified copy of the foreign application as filed
- The translation must be submitted together with a statement that the translation of the certified copy is accurate
As stated in the MPEP: When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate.
For more information on certified copy, visit: certified copy.
For more information on foreign priority, visit: foreign priority.
When submitting a certified copy of a foreign application for priority purposes, the following requirements apply:
- If the certified copy is not in English, a translation is required
- The translation must be of the certified copy of the foreign application as filed
- The translation must be filed together with a statement that the translation of the certified copy is accurate
The MPEP states: “When the examiner requires the filing of the certified copy, the translation should also be required at the same time. If an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) and it must be filed together with a statement that the translation of the certified copy is accurate.” (MPEP 216)
An unintentionally delayed priority claim occurs when a claim for foreign priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) is not presented within the time period provided by 37 CFR 1.55(d). In such cases, the claim is considered to have been waived but may be accepted if the delay was unintentional.
As stated in the MPEP: “If a claim for priority is considered to have been waived under this section, the claim may be accepted if the priority claim was unintentionally delayed.”
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An inventor’s certificate is a form of intellectual property protection offered in some countries. It can form the basis for priority rights under certain conditions, as stated in 35 U.S.C. 119(d):
Applications for inventors’ certificates filed in a foreign country in which applicants have a right to apply, at their discretion, either for a patent or for an inventor’s certificate shall be treated in this country in the same manner and have the same effect for purpose of the right of priority under this section as applications for patents…
This means that if an applicant had the option to file for either a patent or an inventor’s certificate in the foreign country, they can claim priority based on the inventor’s certificate application in the United States.
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An interim copy of a foreign priority document is a copy that is submitted before the certified copy is available. The MPEP 213.02 provides guidance on when an interim copy is acceptable:
The Office may require that an ‘interim copy’ of the foreign application be furnished in the event that the certified copy of the foreign application is not filed within the time period set forth in 37 CFR 1.55(f) and an exception in 37 CFR 1.55(h), (i), or (j) is not applicable.
An interim copy must:
- Be filed within the later of 4 months from the filing date of the application or 16 months from the filing date of the prior foreign application
- Be a copy of the original foreign application
- Be accompanied by a statement that the copy is a true copy
Note: An interim copy does not substitute the requirement for a certified copy, which must still be filed during the pendency of the application.
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An ‘interim copy’ is a true copy of the original foreign application that an applicant can file to meet the timeliness requirement when they cannot obtain a certified copy within the time limit. According to 37 CFR 1.55(j), the interim copy must be clearly labeled as ‘Interim Copy’ and filed with a cover sheet stating it is a true copy of the original foreign application.
The front page of a patent includes the following information regarding foreign priority claims:
- The country of the foreign application
- The filing date of the foreign application
- The number of the foreign application
This information is included for applications where the bib-data sheet has been properly endorsed. As stated in the MPEP: “The front page of the patent when it is issued, and the listing in the Official Gazette, will refer to the claim of priority, giving the country, the filing date, and the number of the foreign application in those applications in which the bib-data sheet has been endorsed.” (MPEP 202)
What happens if there’s an error in the foreign priority application number?
If there’s an error in the foreign priority application number, it can lead to serious consequences for the priority claim. The MPEP emphasizes the importance of accuracy:
“Errors in foreign priority claims may jeopardize the applicant’s priority claim.” (MPEP 214.04)
Consequences of errors may include:
- Rejection of the priority claim
- Loss of priority date
- Potential issues with patentability if prior art emerges in the intervening period
If an error is discovered, it’s crucial to promptly file a corrected Application Data Sheet (ADS) or a petition to correct the priority claim, depending on the timing and nature of the error. Always double-check the application number against the original foreign priority document to ensure accuracy.
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If priority papers are found to be deficient in material respects, such as failure to include the correct certified copy, applicants should ensure that there is sufficient time to remedy any defects. The MPEP advises: “Frequently, priority papers are found to be deficient in material respects, such as for example, the failure to include the correct certified copy, and applicants should ensure that there is sufficient time to remedy any defects.” It’s recommended to file priority papers as early as possible to allow time for correction if needed.
If the certified copy of the foreign application is filed after the date the issue fee is paid but prior to the date of grant of the patent, it will be placed in the file record but there will be no review of the papers. The patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the priority claim considered after publication of the patent.
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:
- A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323
- 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.”
If you don’t file a foreign priority claim within the specified time period, the claim is considered to have been waived. As stated in MPEP 214.01: “Claims for foreign priority not presented within the time period specified in 37 CFR 1.55 are considered to have been waived.”
However, there is a possibility to file a petition to accept an unintentionally delayed priority claim. The MPEP further states: “If a claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b) is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it includes the required identification information and is accompanied by a grantable petition to accept the unintentionally delayed claim for priority.”
For more information on the process of filing an unintentionally delayed priority claim, refer to MPEP ยง 214.02.
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If a foreign priority claim in an original application filed under 35 U.S.C. 111(a) (other than a design application) is submitted after the time period set in 37 CFR 1.55 and without a petition under 37 CFR 1.55, the examiner may notify the applicant that the foreign priority claim will not be entered.
As stated in the MPEP: If the foreign priority claim in an original application filed under 35 U.S.C. 111(a) (other than a design application) is submitted after the time period set in 37 CFR 1.55 and without a petition under 37 CFR 1.55, the examiner may use form paragraph 2.21.01 to notify applicant that the foreign priority claim will not be entered.
In such cases, the applicant must file a petition for an unintentionally delayed priority claim under 37 CFR 1.55(e) to have the priority claim considered.
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If a foreign application was filed more than 12 months before the U.S. application and priority has not been restored, the examiner will use form paragraph 2.23 to notify the applicant that the claim for priority cannot be based on that application.
As stated in the MPEP: Where the earlier foreign application was filed more than 12 months prior to the U.S. application and priority has not been restored under PCT Rule 26bis.3 for an international application or upon a granted petition under 37 CFR 1.55(c), use form paragraph 2.23.
In such cases, the applicant may file a petition under 37 CFR 1.55(c) to restore the right of priority if:
- The subsequent application was filed within two months from the expiration of the twelve-month period
- The delay was unintentional
The petition must include specific elements, such as the priority claim, petition fee, and a statement about the unintentional delay.
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When reviewing a claim to foreign priority, the examiner generally checks the following:
- That the papers contain no obvious formal defects
- That the papers correspond in number, date and country to the application identified in the application data sheet
- For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, that the claim for foreign priority is timely
The MPEP states: “When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner generally makes no examination of the papers except to see that they contain no obvious formal defects and correspond in number, date and country to the application identified in the application data sheet for an application filed on or after September 16, 2012, or oath or declaration or application data sheet for an application filed prior to September 16, 2012.” (MPEP 216)
To perfect a claim for foreign priority after patent issuance, several documents are required. According to MPEP 216.01, the following must be submitted:
- A petition to accept an unintentionally delayed claim for priority
- The required petition fee
- A certified copy of the foreign application
- An English language translation of the foreign application (if not in English)
- A statement that the translation is accurate
The MPEP states: ‘In addition to the petition to accept an unintentionally delayed claim for priority and the required petition fee, the claim for priority must be made in an application data sheet (if the patent issued from a utility or plant application filed on or after September 16, 2012) or in a request for a certificate of correction, and a certified copy of the foreign application must be submitted.’
It’s important to note that the requirements may vary slightly depending on the specific circumstances of the application and patent. Consulting with a patent attorney or agent is advisable for ensuring all necessary documents are properly prepared and submitted.
To claim foreign priority in a U.S. application, you must file a claim for priority and submit a certified copy of the foreign application. MPEP 213.04 states: ‘The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application.’
For applications filed on or after September 16, 2012, the priority claim must be presented in an Application Data Sheet (ADS). The certified copy must be filed within the later of 4 months from the actual filing date or 16 months from the foreign filing date, with some exceptions.
For more information on certified copy, visit: certified copy.
For more information on foreign priority, visit: foreign priority.
What are the requirements for filing a priority claim and certified copy of a foreign application?
According to 37 CFR 1.55(g)(1), the claim for priority and the certified copy of the foreign application must be filed within the pendency of the application. The MPEP states:
“The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in ยง 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application.”
This requirement applies to all applications and ensures that priority claims are properly documented before the application is granted.
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What are the requirements for claiming priority to a foreign application?
To claim priority to a foreign application, several requirements must be met:
- The U.S. application must be filed within 12 months of the foreign application (or 6 months for design patents).
- The foreign application must be from a country that grants similar privileges to U.S. applicants (Paris Convention member or WTO member).
- The applicant must file a claim for priority and a certified copy of the foreign application.
- As stated in MPEP 213: “The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed before the patent is granted.”
It’s important to note that the subject matter claimed in the U.S. application must be adequately supported by the foreign application to receive the benefit of the earlier filing date.
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For an international design application designating the United States, the requirements for claiming foreign priority are as follows:
- The claim for priority can be made in accordance with the Hague Agreement and the Hague Agreement Regulations.
- The claim must comply with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172.
- Priority can be claimed with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.
The MPEP states: Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.
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According to MPEP 214.02, a petition to accept an unintentionally delayed claim for priority requires the following:
- The priority claim: This must be submitted in an application data sheet (ADS) as required by 35 U.S.C. 119(b), unless previously submitted.
- The petition fee: As set forth in 37 CFR 1.17(m).
- A statement of unintentional delay: A statement that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional.
The MPEP states: ‘The Director may require additional information where there is a question whether the delay was unintentional.’ This means that in some cases, additional documentation may be required to support the claim of unintentional delay.
It’s important to note that these requirements apply to priority claims under various statutes, including 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), 386(a), 365(c), 119(e), 120, and 121.
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- unintentionally delayed priority claim
- petition requirements
- ADS
- petition fee
- unintentional delay statement
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The inventorship requirements for claiming foreign priority are specific and important. Here are the key points:
- The U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.
- Priority rights do not exist if the foreign and U.S. applications have completely different sole inventors.
- Joint inventors can each claim the benefit of their separately filed foreign applications.
The MPEP clarifies: Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.
This requirement ensures a direct connection between the foreign priority application and the U.S. application claiming its benefit.
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A later-filed application for patent in the United States may claim the benefit of, or priority to, a prior application under certain conditions. These conditions are outlined in various U.S. statutes and regulations:
- For domestic benefit claims: 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78
- For foreign priority claims: 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55
The specific requirements and time frames may vary based on the filing date of the later-filed nonprovisional application and the type of priority or benefit claim being made.
For more information on domestic benefit, visit: domestic benefit.
For more information on foreign priority, visit: foreign priority.
For more information on prior-filed application, visit: prior-filed application.
How to retrieve a foreign priority document through PDX?
To retrieve a foreign priority document through PDX (Priority Document Exchange), follow these steps:
- Ensure the foreign office participates in PDX or WIPO DAS.
- File an application with the USPTO claiming foreign priority.
- Submit a request to retrieve the priority document using USPTO form PTO/SB/38 or through EFS-Web.
- Provide the necessary information, including the foreign application number and filing date.
- If using WIPO DAS, include the DAS access code provided by the foreign office.
According to MPEP 215.01: Applicants need not submit a copy of the foreign application if the foreign application was filed in a participating foreign intellectual property office, and the applicant provides sufficient information to the USPTO to retrieve the priority document.
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When filing an interim copy via the USPTO patent electronic filing system:
- The main parts of the foreign priority application (Abstract, Drawings, Specification, Claims, etc.) along with the cover sheet may be filed as a single PDF image file.
- Select the document description ‘Interim Copy of the Foreign Priority Application’ when indexing.
- For plain text files (e.g., Sequence Listings), file as a .txt file and select ‘Interim Copy of the Foreign Priority (text file)’ as the document description.
- XML files (e.g., Standard ST.26 Sequence Listing) should be filed on a read-only optical disc as part of the ‘Interim Copy of Foreign Priority.’
See MPEP ยง 502.05 for more information on filing documents electronically.
How should the foreign priority application number be formatted in an ADS?
When entering the foreign priority application number in an Application Data Sheet (ADS), it’s crucial to follow the proper format to ensure accurate identification. The MPEP states:
“The foreign application number should be identified in an application data sheet (ADS), rather than in a separate paper.” (MPEP 214.04)
The ADS should include:
- The correct application number
- The country or intellectual property authority where the application was filed
- The filing date of the priority application
It’s important to use the exact format as it appears on the foreign priority document to avoid any discrepancies or potential issues with the priority claim.
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To ensure proper correlation between priority papers and U.S. applications, the MPEP suggests: “It is suggested that a notation of the application number of the corresponding U.S. application be placed on the priority papers when such papers are not submitted via a priority document exchange program. Such notation should be placed directly on the priority papers themselves even where a cover letter is attached bearing the U.S. application data.” This practice helps prevent separation of cover letters and priority papers, which can cause severe problems for both the Office and applicant.
To properly identify foreign priority applications in a patent application, applicants should follow the guidelines provided by the World Intellectual Property Organization (WIPO). The MPEP states:
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
Specifically, applicants should refer to:
- Part 7: Examples and Industrial Property Offices Practices
- Part 7.2.1: Presentation of Application Numbers
These resources provide the recommended format for citing foreign application numbers, ensuring accurate and complete relationships among patent documents.
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When a claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but before the patent is granted, special procedures apply.
According to the MPEP: 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.
To have the foreign priority claim or certified copy considered after publication of the patent:
- A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed
- For original applications under 35 U.S.C. 111(a) or national stage applications under 35 U.S.C. 371, a grantable petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55 and the petition fee must be filed with the certificate of correction
For more information on this process, refer to MPEP ยง 216.01.
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Foreign priority application information is handled as follows on the bib-data sheet:
- If a proper foreign priority claim is not listed on the bib-data sheet, the examiner should add the information and forward it for correction in the Office computer systems.
- Applications listed on the bib-data sheet but filed in countries not qualifying for benefits under 35 U.S.C. 119(a)-(d) should be lined through.
- The bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application claiming priority.
- Examiners should check this information for accuracy and make corrections if necessary.
The MPEP states: “If a foreign application listed on the oath or declaration (for applications filed prior to September 16, 2012) or application data sheet is not listed on the bib-data sheet and the foreign priority claim is proper (e.g., the foreign priority claim was timely made ), the examiner should provide the information regarding the foreign application number, the country, and the filing date on the bib-data sheet and forward the marked-up bib-data sheet to the Legal Instrument Examiner for correction in the Office computer systems.” (MPEP 202)
The USPTO recognizes that some countries have restrictions on who can apply for patents versus inventor’s certificates. As stated in MPEP 213.05:
It is recognized that certain countries that grant inventors’ certificates also provide by law that their own nationals who are employed in state enterprises may only receive inventors’ certificates and not patents on inventions made in connection with their employment. This will not impair their right to be granted priority in the United States based on the filing of the inventor’s certificate.
This means that even if an applicant was restricted to filing for an inventor’s certificate in their home country due to employment or nationality, they can still claim priority in the US based on that filing. The key factor is whether the option to file for either a patent or an inventor’s certificate generally existed in the country for the particular subject matter, not whether the specific applicant had that choice.
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The USPTO determines if a foreign country qualifies for priority rights based on specific criteria outlined in the MPEP. According to MPEP 213.01:
The right of priority is recognized only if the foreign country in which the original application was filed is recognized at the time of filing the application in the United States.
The USPTO considers several factors:
- The country must be a member of the Paris Convention for the Protection of Industrial Property or have a bilateral agreement with the United States.
- The country must grant similar priority rights to U.S. citizens.
- The country must be recognized by the U.S. Department of State.
The USPTO maintains a list of recognized countries and regional patent offices in MPEP 213.01, which is updated periodically to reflect changes in international relations and treaty memberships.
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, and there are no irregularities, the USPTO acknowledges receipt in the next Office action.
According to the MPEP: 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.
The examiner may use form paragraph 2.26, which states: Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
If the foreign priority papers have been filed in a parent application, the examiner will use form paragraph 2.27 to acknowledge this fact.
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The Patent Cooperation Treaty (PCT) interacts with foreign priority claims as outlined in MPEP 213. The PCT allows applicants to file a single international patent application that can later enter the national phase in multiple countries.
Key points regarding PCT and foreign priority:
- PCT applications can claim priority from earlier national or regional applications
- The priority period for PCT applications is also 12 months from the earliest priority date
- PCT applications themselves can serve as the basis for priority claims in subsequent national or regional applications
As stated in MPEP 213, “U.S. national applications may claim priority to an international application (PCT) filed in a PCT Receiving Office other than the United States Receiving Office.” This demonstrates the flexibility of the PCT system in international patent protection strategies.
How does the Paris Convention affect priority claims in US patent applications?
The Paris Convention plays a crucial role in international priority claims for US patent applications. According to MPEP 216:
‘The right of priority is based on the Paris Convention for the Protection of Industrial Property, which is adhered to by the United States.’
The Paris Convention affects US patent applications in the following ways:
- It allows applicants to claim priority from foreign applications filed in member countries
- It establishes a 12-month priority period for utility patents and a 6-month period for design patents
- It ensures that filing an application in one member country does not invalidate the novelty of the invention in other member countries
The implementation of the Paris Convention in US law is found in 35 U.S.C. 119(a)-(d), which outlines the requirements for claiming foreign priority.
For more information on foreign priority, visit: foreign priority.
For more information on international patent applications, visit: international patent applications.
For more information on Paris Convention, visit: Paris Convention.
Incorporation by reference for foreign priority applications is an important safeguard for applicants. Here’s how it works:
- For applications filed on or after September 21, 2004, a claim under 37 CFR 1.55 for priority of a prior-filed foreign application is considered an incorporation by reference of the prior-filed foreign priority application.
- This incorporation is subject to the conditions and requirements of 37 CFR 1.57(b).
- It applies to inadvertently omitted material from the foreign priority application.
- Applicants can provide an explicit incorporation by reference statement for broader coverage.
The MPEP states: For applications filed on or after September 21, 2004, a claim under 37 CFR 1.55 for priority of a prior-filed foreign application that was present on the filing date of the application is considered an incorporation by reference of the prior-filed foreign priority application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b).
This provision helps protect applicants from accidental omissions in their U.S. applications.
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How does the Electronic Priority Document Exchange (PDX) program work with the USPTO?
The Electronic Priority Document Exchange (PDX) program is a system that allows participating intellectual property offices to exchange priority documents electronically. According to MPEP 215.01, the USPTO participates in this program, which can simplify the process of submitting certified copies of foreign priority applications.
The MPEP states: The USPTO has agreements with the European Patent Office (EPO) and the Japan Patent Office (JPO) that enable the USPTO to obtain certified copies of foreign applications filed in those offices from their electronic records management systems.
Here’s how the PDX program works with the USPTO:
- If a foreign application was filed with a participating office (e.g., EPO or JPO), the applicant can request that office to make the certified copy of the priority document available to the USPTO.
- The applicant must submit a request to retrieve the priority document through the USPTO’s electronic filing system (EFS-Web or Patent Center).
- The USPTO will then attempt to retrieve the document electronically from the foreign office.
- If successful, this electronic retrieval satisfies the requirement to file a certified copy of the foreign priority application.
It’s important to note that the applicant is still responsible for ensuring that the certified copy is received by the USPTO within the required time frame, even when using the PDX program.
The America Invents Act’s (AIA) first-inventor-to-file (FITF) provision has significant implications for perfecting foreign priority claims, especially in cases where the foreign application has a pre-March 16, 2013 filing date. Key points include:
- If a patent was examined under FITF provisions, but the foreign priority application has a pre-AIA filing date, perfecting the priority claim may require further examination.
- In such cases, a certificate of correction is not sufficient, and a reissue application is necessary.
- This situation arises because changing the effective filing date could potentially subject the patent to a different statutory framework.
The MPEP states: In situations where further examination would be required, the petition should not be granted. For example, further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA.
This requirement ensures that patents are not inadvertently subjected to different legal standards without proper examination.
How does the AIA affect priority claims for applications filed on or after March 16, 2013?
The America Invents Act (AIA) significantly changed the U.S. patent system, particularly affecting priority claims for applications filed on or after March 16, 2013. According to MPEP 216:
“AIA 35 U.S.C. 100(i)(1)(B) provides that the effective filing date for a claimed invention in a patent or application for patent (other than a reissue application or reissued patent) is the filing date of the earliest application for which the patent or application is entitled to claim a right of foreign priority or domestic benefit.”
This change means that:
- The effective filing date can now include foreign priority dates, not just domestic benefit dates.
- The first-to-file system replaced the first-to-invent system for determining priority.
- Prior art is now determined based on the effective filing date, including foreign priority dates.
These changes have significant implications for inventors and patent practitioners in terms of strategy for filing applications and claiming priority, especially in a global context.
For more information on America Invents Act, visit: America Invents Act.
For more information on effective filing date, visit: effective filing date.
For more information on foreign priority, visit: foreign priority.
PDX for U.S. design applications has specific considerations, as explained in MPEP 215.01:
The USPTO will attempt retrieval of foreign applications to which priority is claimed in a U.S. design application where possible. The Spanish Patent and Trademark Office deposits certain ES industrial design applications for access by the USPTO via the WIPO DAS. Therefore, when the applicant claims foreign priority to an ES industrial design application and provides the WIPO DAS access code, the USPTO will attempt retrieval via the WIPO DAS.
Key points for design applications:
- The USPTO attempts to retrieve foreign priority documents for design applications where possible.
- Spanish industrial design applications are accessible through WIPO DAS.
- Applicants must provide the WIPO DAS access code for Spanish industrial design applications.
- The USPTO will attempt retrieval via WIPO DAS when the access code is provided.
This process helps streamline the priority document retrieval for design applications, particularly those with Spanish priority.
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Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.
For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.
For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.
It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.
Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.
Claiming foreign priority can significantly affect the prior art date in your application:
- For applications subject to pre-AIA law, the foreign priority date becomes the effective U.S. filing date for prior art purposes under 35 U.S.C. 102(a), (b), and (d)
- For applications subject to AIA law, the foreign priority date is treated as the effective filing date for prior art purposes under 35 U.S.C. 102(a)(1) and (a)(2)
This means that intervening disclosures between your foreign filing date and your U.S. filing date may not be considered prior art against your application. However, it’s important to note that the claimed subject matter must be fully supported by the foreign application to get the benefit of its filing date. Additionally, the priority claim must be proper and timely made for this benefit to apply.
When an examiner finds an intervening reference (a reference with an effective date between the foreign filing date and the U.S. filing date) and a foreign priority claim is present, the examiner follows these steps:
- If the certified copy of the priority papers has not been filed, the examiner rejects the claims that may be unpatentable over the reference without considering the priority date.
- The applicant may then argue the rejection or present the foreign papers to overcome the date of the reference.
- If the applicant argues the rejection, the examiner may, in the next action:
- Specifically require the foreign papers to be filed while repeating the rejection if still applicable, or
- Simply continue the rejection
The MPEP states: “If at the time of making an action the examiner has found such an intervening reference, the examiner simply rejects whatever claims may be considered unpatentable thereover, without paying any attention to the priority date (assuming the certified copy of the priority papers has not yet been filed).” (MPEP 216)
For pre-AIA applications, the Application Data Sheet (ADS) plays a crucial role in establishing priority claims:
1. For domestic priority: MPEP 601.05(b) states, “Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120.” This means that including domestic priority information in the ADS satisfies the requirement for a specific reference to earlier filed applications.
2. For foreign priority: The MPEP notes, “Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and 37 CFR 1.55.”
In both cases, including priority information in the ADS eliminates the need to make these claims elsewhere in the application, such as in the specification.
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In patent applications filed before September 16, 2012, an Application Data Sheet (ADS) can significantly impact the priority claim process. The ADS can be used to:
- Provide domestic benefit information
- Include foreign priority information
- Correct or update priority claims within certain timeframes
According to MPEP 601.05(b): “For applications filed before September 16, 2012, an application data sheet may be used to provide or correct benefit claim information, such as cross-references to one or more prior-filed applications… The benefit claim must be set forth in the ADS in order to be considered properly submitted.”
It’s crucial to note that while the ADS can be used to submit priority information, applicants must still comply with other statutory requirements and deadlines for claiming priority. The ADS provides a centralized location for this information, potentially simplifying the application process and reducing errors in priority claims.
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To request retrieval of a foreign priority document through the Priority Document Exchange (PDX) program, follow these steps:
- Ensure that the foreign application is from a participating office in the PDX program.
- File an application data sheet (ADS) including a proper priority claim to the foreign application.
- Submit a request for retrieval of the foreign priority document.
The MPEP 215.01 states: “To authorize retrieval of a priority document via PDX, the applicant should submit the request electronically via EFS-Web using the Priority Document Exchange Request form (PTO/SB/38) or as a pre-grant (PGPub) request via Private PAIR.” It’s important to note that the request should be made 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.
To properly identify a foreign application when claiming priority, you must provide the following information:
- Application number
- Country or intellectual property authority
- Day, month, and year of filing
As stated in MPEP 214.01: “The claim for priority must be presented in an application data sheet (ยง 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.”
For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, this information must be provided in an application data sheet. For earlier applications, it may be included in the oath or declaration if not provided in an application data sheet.
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To file a foreign priority claim in a U.S. patent application, you must:
- File the claim within the specified time limit (see previous FAQ for details).
- 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.
- 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 (ยง1.76(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.
For international applications entering the national stage in the United States under 35 U.S.C. 371, the process for filing a foreign priority claim is different from regular U.S. applications. According to MPEP 214.01:
“The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371, except as provided in paragraph (e) of this section.”
This means that you need to follow the time limits specified in the Patent Cooperation Treaty (PCT) and its regulations when filing a priority claim for an international application entering the U.S. national stage.
For more detailed information on the timing and procedure for claiming priority in national stage applications, you should refer to MPEP ยง 213.06, which specifically deals with this topic.
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When claiming priority to a foreign application filed in a non-English language, you must provide an English translation of the foreign application. The MPEP 213.02 states:
If the foreign application is not in the English language, an English translation of the foreign application is also required. See 37 CFR 1.55(g)(3).
Additionally, you must submit:
- A statement that the translation is accurate
- The certified copy of the foreign application
These documents should be filed within the prescribed time period to properly establish the priority claim.
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An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.
According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”
The petition to restore the right of priority must include:
- The priority claim identifying the prior foreign application
- The petition fee
- A statement that the delay in filing was unintentional
The USPTO may require additional information to establish that the delay was unintentional.
For more information on foreign priority, visit: foreign priority.
For more information on priority restoration, visit: priority restoration.
For more information on unintentional delay, visit: unintentional delay.
No, the time period for filing a foreign priority claim cannot be extended. As stated in MPEP 214.01: “This time period is not extendable.”
However, if you miss the deadline, there is a possibility to file a petition to accept an unintentionally delayed priority claim. The MPEP states: “If a claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b) is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it includes the required identification information and is accompanied by a grantable petition to accept the unintentionally delayed claim for priority.”
For more information on unintentionally delayed priority claims, refer to MPEP ยง 214.02.
To learn more:
Yes, you can perfect a claim for foreign priority after your patent has been issued. There are two main methods:
- Certificate of Correction: This is generally the preferred method if the requirements of 37 CFR 1.55 are met and no further examination is required. As stated in the MPEP,
Except in certain situations, a certificate of correction can generally be used to perfect a claim to foreign priority where a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim is filed with a request for a certificate of correction in an issued patent.
- Reissue Application: This method is necessary in situations where further examination would be required or when the requirements of 35 U.S.C. 119(a)-(d) or (f) were not satisfied in the patented application or its parent prior to issuance.
To learn more:
Yes, you can file a foreign priority claim after your patent has been granted, but it requires additional steps:
- File a petition under 37 CFR 1.55(e) for an unintentionally delayed priority claim
- Submit a request for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323
- 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).”
Yes, you can claim priority to multiple foreign applications for the same invention, provided they meet certain criteria. The MPEP 213.02 addresses this situation:
Where two or more foreign applications are combined in a single U.S. application, to take advantage of the changes to 35 U.S.C. 103 or to claim both priority and the benefit of the filing date of an earlier application, the claimed subject matter in the U.S. application is entitled only to the earliest date to which it is entitled in any of the included foreign applications.
To claim priority to multiple foreign applications:
- Each foreign application must be properly identified in the application data sheet (ADS)
- Certified copies of all foreign applications must be submitted
- The U.S. application must be filed within 12 months of the earliest filed foreign application
Note: The effective priority date for any claimed subject matter will be the earliest applicable date from the foreign applications.
To learn more:
Yes, under certain conditions, an applicant can claim priority based on an application for an inventor’s certificate. MPEP 213.05 explains: ‘An inventor’s certificate may form the basis for rights of priority under 35 U.S.C. 119(d) only when the country in which it is filed gives to applicants, at their discretion, the right to apply, on the same invention, either for a patent or for an inventor’s certificate.’
To claim priority to an inventor’s certificate, the applicant must file an affidavit or declaration stating that they had the option to file for either a patent or an inventor’s certificate in the foreign country.
For more information on foreign priority, visit: foreign priority.
Can I claim priority to a provisional application filed in a foreign country?
No, you cannot claim priority to a provisional application filed in a foreign country. The MPEP 213.02 states:
‘Note that a foreign filed provisional application is not eligible for priority benefit.’
Priority claims can only be made to non-provisional applications or other types of applications that are recognized under the Paris Convention. Provisional applications are unique to the U.S. patent system and are not recognized as priority documents in foreign countries or under international agreements.
To learn more:
Yes, it is possible to claim priority to a foreign application after your U.S. patent has been issued. According to MPEP 216.01, a claim for priority under 35 U.S.C. 119(a)-(d) or (f) can be made after the patent is granted, subject to certain conditions:
- The claim must be made within the time period set forth in 37 CFR 1.55(g).
- A petition to accept an unintentionally delayed claim for priority must be filed.
- The required fee must be paid.
- A certified copy of the foreign application must be submitted.
The MPEP states: ‘A claim for priority under 35 U.S.C. 119(a)-(d) or (f) for the benefit of a prior foreign application may be made after the patent issues if the claim is accompanied by a grantable petition to accept an unintentionally delayed claim for priority.’
Can I add a benefit claim to a foreign priority application after filing?
Yes, you can add a benefit claim to a foreign priority application after filing, but specific procedures must be followed. According to MPEP 211.02(a):
“In the case of a design application, an original claim under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) to a prior U.S. application or PCT international application designating the United States may be made by the filing of an amendment to the specification within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.”
For utility applications, similar time frames apply. However, if you miss these deadlines, you must file a petition under 37 CFR 1.78 along with the petition fee to add the benefit claim. The petition must include:
- The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed application
- A statement that the entire delay was unintentional
- The petition fee set forth in 37 CFR 1.17(m)
It’s important to act promptly when adding or correcting benefit claims to avoid potential issues with patentability or patent term.
To learn more:
Yes, a U.S. applicant can claim priority from a provisional application filed in a foreign country, provided certain conditions are met. The MPEP 213 states:
An applicant may claim the right of priority based on a prior foreign application under the Paris Convention and 35 U.S.C. 119(a)-(d) whether the foreign application is an application for a patent or for the registration of a utility model or an industrial design.
Key points to consider:
- The foreign country must be a recognized country or regional patent office as listed in MPEP 213.01.
- The provisional application must be the first filing of the invention in any country.
- The U.S. application must be filed within 12 months of the foreign provisional filing date.
- The applicant must comply with all requirements for claiming priority, including submitting a certified copy of the foreign application.
It’s important to note that not all countries have provisional application systems, so the term ‘provisional’ may have different meanings in different jurisdictions. Always consult with a patent attorney or agent for specific advice on international priority claims.
Yes, a US patent application can claim both foreign priority and domestic benefit simultaneously. This is known as a ‘multiple priority claim’ or ‘multiple benefit claim.’ The MPEP 216 states:
‘It is possible for a U.S. application to be entitled to the benefit of an earlier U.S. filing date and also to the right of priority of a foreign application.’
Here’s how it works:
- The application can claim foreign priority under 35 U.S.C. 119(a)-(d) to a foreign application filed within the past 12 months.
- At the same time, it can claim domestic benefit under 35 U.S.C. 120 to an earlier US application.
- The earlier US application can also claim foreign priority to the same foreign application.
This allows the US application to potentially have an effective filing date that is earlier than both its actual filing date and the filing date of the US application it claims benefit from.
For more information on domestic benefit, visit: domestic benefit.
For more information on foreign priority, visit: foreign priority.
Yes, a nonprovisional application can be entitled to different foreign filing dates for different claims. This can occur in two scenarios:
- The application may be found entitled to the filing date of a foreign application for some claims but not for others.
- An applicant may rely on two or more different foreign applications and may be entitled to the filing date of one application for certain claims and to another for other claims.
The MPEP states: “A nonprovisional application may be found entitled to the filing date of the foreign application with respect to some claims and not with respect to others. In addition, an applicant may rely on two or more different foreign applications and may be entitled to the filing date of one of them with respect to certain claims and to another with respect to other claims.” (MPEP 216)
No, a copy of the foreign patent as issued does not comply with the certified copy requirement. The MPEP states: “A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the certification indicates that it corresponds to the application as filed.” The key is that the certified copy must represent the application as originally filed, not the patent as eventually issued.
Yes, design patent applications have different requirements for filing priority claims compared to utility patent applications. The main difference is in the time period for filing the claim. As stated in MPEP 214.01:
“The time periods set forth in 37 CFR 1.55(d) do not apply to design applications.”
For design applications, the MPEP further clarifies: “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 priority claim at any time while the application is pending, which provides more flexibility compared to utility patent applications.
For more detailed information on priority claims in design applications, you can refer to MPEP ยง 1504.10 and MPEP ยง 2920.05(d).
To learn more:
Yes, there can be subject matter restrictions when claiming priority based on inventor’s certificates. The MPEP 213.05 states:
Certain countries which grant both patents and inventor’s certificates issue only inventor’s certificates on certain subject matter, generally pharmaceuticals, foodstuffs, and cosmetics.
This means that for certain types of inventions, some countries may only offer inventor’s certificates and not patents. However, this doesn’t necessarily prevent an applicant from claiming priority in the US. The key requirement is that the option to file for either a patent or an inventor’s certificate must have generally existed in the country for the particular subject matter of the invention, even if it wasn’t available for the specific invention in question.
Applicants must still provide an affidavit or declaration as required by 37 CFR 1.55(l), stating that they had the option to file for either a patent or an inventor’s certificate for the subject matter forming the basis of the priority claim.
To learn more:
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.