Patent Law FAQ

An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.

According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”

The petition to restore the right of priority must include:

• The priority claim identifying the prior foreign application
• The petition fee
• A statement that the delay in filing was unintentional

The USPTO may require additional information to establish that the delay was unintentional.

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

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

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

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.

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)

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.

Claiming priority and claiming benefit are two different mechanisms in patent law, though both can affect the effective filing date of a patent application:

1. 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
2. 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).”

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)

AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows:

• The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement).
• The foreign priority application must be entitled to a right of priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b).
• If these conditions are met, the effective filing date is the filing date of the foreign priority application.

As stated in MPEP 2154.01(b): “AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (‘U.S. patent document’) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the earliest filing date for which a benefit is sought (AIA 35 U.S.C. 102(d)(2)).”

To learn more:

• AIA
• effective filing date
• foreign priority
• 35 U.S.C. 102(d)

An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.

According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”

The petition to restore the right of priority must include:

• The priority claim identifying the prior foreign application
• The petition fee
• A statement that the delay in filing was unintentional

The USPTO may require additional information to establish that the delay was unintentional.

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

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

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

Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.

For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.

For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.

It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.

Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.

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.

AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows:

• The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement).
• The foreign priority application must be entitled to a right of priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b).
• If these conditions are met, the effective filing date is the filing date of the foreign priority application.

As stated in MPEP 2154.01(b): “AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (‘U.S. patent document’) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the earliest filing date for which a benefit is sought (AIA 35 U.S.C. 102(d)(2)).”

To learn more:

• AIA
• effective filing date
• foreign priority
• 35 U.S.C. 102(d)

An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.

According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”

The petition to restore the right of priority must include:

• The priority claim identifying the prior foreign application
• The petition fee
• A statement that the delay in filing was unintentional

The USPTO may require additional information to establish that the delay was unintentional.

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

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

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

Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.

For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.

For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.

It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.

Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.

AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows:

• The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement).
• The foreign priority application must be entitled to a right of priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b).
• If these conditions are met, the effective filing date is the filing date of the foreign priority application.

As stated in MPEP 2154.01(b): “AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (‘U.S. patent document’) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the earliest filing date for which a benefit is sought (AIA 35 U.S.C. 102(d)(2)).”

To learn more:

• AIA
• effective filing date
• foreign priority
• 35 U.S.C. 102(d)

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)

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.

Claiming priority and claiming benefit are two different mechanisms in patent law, though both can affect the effective filing date of a patent application:

1. 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
2. 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).”

An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.

According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”

The petition to restore the right of priority must include:

• The priority claim identifying the prior foreign application
• The petition fee
• A statement that the delay in filing was unintentional

The USPTO may require additional information to establish that the delay was unintentional.

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

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

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

Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.

For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.

For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.

It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.

Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.

AIA 35 U.S.C. 102(d) determines the effective filing date for subject matter in foreign priority applications as follows:

• The subject matter must be disclosed in the foreign priority application in compliance with 35 U.S.C. 112(a) (except for the best mode requirement).
• The foreign priority application must be entitled to a right of priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b).
• If these conditions are met, the effective filing date is the filing date of the foreign priority application.

As stated in MPEP 2154.01(b): “AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S. patent application publication, or WIPO published application (‘U.S. patent document’) is prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described in the patent or published application as of either its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the earliest filing date for which a benefit is sought (AIA 35 U.S.C. 102(d)(2)).”

To learn more:

• AIA
• effective filing date
• foreign priority
• 35 U.S.C. 102(d)

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)

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.

Claiming priority and claiming benefit are two different mechanisms in patent law, though both can affect the effective filing date of a patent application:

1. 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
2. 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).”