Patent Law FAQ

The MPEP provides a table of states (countries) for which the right of priority under 35 U.S.C. 119(a)-(d) is recognized. These countries fall into three categories:

• Parties to the Patent Cooperation Treaty (PCT)
• Parties to the Paris Convention for the Protection of Industrial Property
• Members of the World Trade Organization (WTO)

The MPEP states: “Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a)-(d) has been recognized.”

For the most current list of recognized countries, refer to the WIPO website at www.wipo.int/pct/en/paris_wto_pct.html.

Regional patent offices play a crucial role in the international patent system, particularly for priority claims. MPEP 213.01 recognizes several regional patent offices whose applications can serve as the basis for priority claims in the United States. These include:

• European Patent Office (EPO)
• Eurasian Patent Office (EAPO)
• African Intellectual Property Organization (OAPI)
• African Regional Intellectual Property Organization (ARIPO)

The significance of these regional offices is explained in MPEP 213.01:

‘The United States will recognize claims for right of priority based on applications filed under such multilateral international agreements as the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT).’

This recognition allows applicants to file a single application with a regional patent office and still maintain priority rights in the United States. It streamlines the international patent application process and provides more flexibility for inventors seeking protection in multiple countries.

Several international agreements can form the basis for a priority claim in patent applications. The MPEP mentions:

• The Paris Convention for the Protection of Industrial Property
• The Hague Agreement Concerning the International Registration of Industrial Designs
• The Benelux Designs Convention
• The Convention on the Grant of European Patents (European Patent Office)
• The Patent Cooperation Treaty (PCT)
• The International Convention for the Protection of New Varieties of Plants (UPOV)

The MPEP states: “Under Article 4A of the Paris Convention for the Protection of Industrial Property, a right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design filed under the national law of a foreign country adhering to the Convention, or on a foreign application filed under a bilateral or multilateral treaty concluded between two or more such countries.”

These agreements facilitate the international protection of intellectual property rights and enable applicants to claim priority based on applications filed in various jurisdictions.

The USPTO treats a proper priority claim to an application filed in a participating foreign intellectual property office as a request to obtain a copy of the foreign application. The MPEP states:

The Office treats a proper priority claim under 37 CFR 1.55 to an application filed in a participating foreign intellectual property office as a request that the Office obtain a copy of the foreign application from the participating intellectual property office.

This means that applicants do not need to submit a separate request for the USPTO to retrieve the foreign application if they have made a proper priority claim and the foreign office is a PDX participant.

Taiwan’s unique political status has implications for patent priority claims in US applications. According to MPEP 213.01:

‘Applicants from Taiwan may claim priority under 35 U.S.C. 119(a)-(d) to applications filed in Taiwan which are filed by or on behalf of the governing authority on Taiwan.’

This special provision allows Taiwanese applicants to claim priority despite Taiwan not being officially recognized as a sovereign state by the United States. The MPEP further clarifies:

Applications from Taiwan must meet the following criteria to be eligible for priority claims:

• The application must be filed by or on behalf of the governing authority on Taiwan
• The priority claim must be made in accordance with the standard procedures outlined in 35 U.S.C. 119(a)-(d)

This arrangement ensures that inventors and companies in Taiwan can participate in the international patent system and maintain priority rights for their inventions when seeking protection in the United States.

Foreign priority claims are an important aspect of patent applications and are reflected on the bib-data sheet. The examiner should verify that foreign applications listed on the oath, declaration, or application data sheet are correctly listed on the bib-data sheet.

According to the MPEP: A bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application that the U.S. application is claiming the priority of. The examiner should check this information for accuracy. (MPEP 202)

If there are errors:

• On the oath, declaration, or application data sheet: The examiner should require a new document.
• On the bib-data sheet itself: The examiner should make corrections directly on the sheet and have the information updated in the Office computer systems.

It’s important to note that only countries qualifying for benefits under 35 U.S.C. 119(a)-(d) should be listed. A list of qualifying countries can be found in MPEP § 213.01.

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

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

For more information on patent examination, visit: patent examination.

Yes, applicants can claim priority under 35 U.S.C. 119(a)-(d) based on applications filed in certain foreign regional patent offices. The MPEP states:

“In addition to the list of recognized countries set forth in subsection I, above, applicants may claim priority under 35 U.S.C. 119(a)-(d) to applications filed in foreign regional patent offices having member states who are members of the Paris Convention.”

The recognized regional patent offices include:

• African Regional Intellectual Property Organization (ARIPO)
• Eurasian Patent Office (EAPO)
• European Patent Office (EPO)
• Gulf Cooperation Council (GCC) Patent Office
• African Intellectual Property Organization (OAPI)

These regional patent offices allow applicants to file a single application that can have effect in multiple member states, streamlining the international patent application process.

According to 37 CFR 1.55(g)(2), the USPTO may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in the following circumstances:

1. When the application is involved in an interference or derivation proceeding;
2. When necessary to overcome the date of a reference relied upon by the examiner; or
3. When deemed necessary by the examiner.

The U.S. nonprovisional application must generally be filed within 12 months of the filing date of the foreign application to claim priority. For design applications, this period is 6 months.

Specifically, 37 CFR 1.55(b) states:

“The nonprovisional application must be: (1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or (2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.”

There are provisions to restore the right of priority if the subsequent application is filed within 2 months after the expiration of the priority period, if the delay was unintentional.

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

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

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

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

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

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

The time periods for filing priority or benefit claims in U.S. patent applications vary depending on the type of claim and application. Generally:

• For foreign priority claims under 35 U.S.C. 119(a)-(d) and (f), the claim must be made within the later of 4 months from the actual filing date or 16 months from the foreign application’s filing date.
• For domestic benefit claims under 35 U.S.C. 119(e) or 120, the claim must be made within the later of 4 months from the actual filing date or 16 months from the prior application’s filing date.
• For international applications entering the national stage, special rules apply.

The MPEP states: “37 CFR 1.55(d) contains provisions relating to the time for filing a priority claim in an application filed under 35 U.S.C. 111(a) and in an application entering the national stage under 35 U.S.C. 371” and “37 CFR 1.78(d) contains provisions relating to claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application.”

Note that these time periods are subject to the provisions of 37 CFR 1.55(p) and 1.78(k), which state that they are not extendable but are subject to certain exceptions.

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

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

To claim priority to or benefit of a prior-filed application, the later-filed application must:

• Contain a specific reference to the earlier-filed application
• Be filed within the required time period
• Include the priority or benefit claim in the application data sheet (for applications filed on or after September 16, 2012)

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.” (MPEP 210)

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

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

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

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

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

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

The requirements for accepting an unintentionally delayed claim for foreign priority include:

1. Filing a petition to accept a delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b).
2. Submitting the priority claim in an application data sheet identifying the foreign application.
3. Providing a certified copy of the foreign application, unless previously submitted or an exception applies.
4. Paying the petition fee as set forth in 37 CFR 1.17(m).
5. Submitting a statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The MPEP cites 37 CFR 1.55(e), which states: “A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) must be accompanied by: (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted; (2) A certified copy of the foreign application, unless previously submitted or an exception in paragraph (h), (i), or (j) of this section applies; (3) The petition fee as set forth in § 1.17(m); and (4) A statement that the entire delay between the date the priority claim was due under this section and the date the priority claim was filed was unintentional.” (37 CFR 1.55(e))

The USPTO handles United Kingdom provisional specifications in priority claims as follows:

• A certified copy of the “provisional specification” may be submitted, sometimes accompanied by a copy of the “complete specification.”
• The provisional specification is examined for completeness of disclosure, as it may not contain a complete disclosure in the sense of 35 U.S.C. 112.
• If the UK provisional specification is found insufficient for lack of disclosure, reliance may then be placed on the complete specification and its date, treating it as a different application than the provisional specification.

The MPEP states: “In applications filed from the United Kingdom there may be submitted a certified copy of the ‘provisional specification,’ which may also in some cases be accompanied by a copy of the ‘complete specification.’ According to United Kingdom law the provisional specification need not contain a complete disclosure of the invention in the sense of 35 U.S.C. 112, but need only describe the general nature of the invention, and neither claims nor drawings are required.” (MPEP 216)

The examiner generally does not examine the certified copy of the foreign priority application except to see that it contains no obvious formal defects and corresponds to the U.S. application. The examiner will consider the merits of the priority claim if:

• An intervening reference is found with an effective date between the foreign filing date and U.S. filing date
• Determining if a reference is prior art under the grace period
• An interference situation is under consideration

If the examiner finds the applicant is not entitled to the priority date, a rejection is made and the applicant must then perfect the claim. [MPEP 216]

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

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

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

The Priority Document Exchange (PDX) program allows for electronic transmission of priority documents between participating foreign intellectual property offices. According to 37 CFR 1.55(i), if the foreign application was filed in a participating office, the requirement for a timely filed certified copy is considered satisfied if the Office receives a copy through the PDX program during the pendency of the application and before the patent is granted.

The Patent Cooperation Treaty (PCT) system interacts with foreign priority claims in several important ways:

1. Priority claims in PCT applications:
– PCT applications can claim priority to earlier foreign applications under the Paris Convention.
– The priority period is 12 months from the earliest priority date.

2. PCT as a basis for priority:
– A PCT application can serve as the basis for a priority claim in a later-filed national or regional application.

3. Effect on time limits:
– The 30-month time limit for entering the national phase is calculated from the priority date (if claimed) or the PCT filing date if no priority is claimed.

4. Restoration of priority rights:
– The PCT system allows for restoration of priority rights if an international application is filed within 14 months of the priority date and the delay was unintentional.

5. Certified copies:
– The PCT system has provisions for providing certified copies of priority documents to designated offices.

As stated in MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”

The PCT system provides a streamlined process for seeking patent protection internationally while preserving priority rights, but applicants must be aware of the specific requirements and time limits within the PCT system.

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

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

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

A claim for foreign priority can be perfected after a patent has been issued through two main methods:

1. Certificate of Correction under 35 U.S.C. 255 and 37 CFR 1.323
2. Reissue application

The choice of method depends on the specific circumstances:

• A Certificate of Correction can be used if the requirements of 37 CFR 1.55 are met and no further examination is required.
• A reissue application is necessary if 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, or if further examination would be required.

The MPEP states: “The failure to perfect a claim to foreign priority prior to issuance of the patent may be cured via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, provided the requirements of 37 CFR 1.55 are met, or by filing a reissue application.” (MPEP 216.01)

Patent examiners verify foreign priority claims through the following steps:

1. Check that foreign applications listed on the oath, declaration, or application data sheet are properly listed on the bib-data sheet.
2. Verify the accuracy of the application number, country, and filing date for each foreign application.
3. Ensure that only countries qualifying for benefits under 35 U.S.C. 119(a)-(d) are listed.
4. Initial the bib-data sheet in the “VERIFIED” space when the information is correct or has been amended to be correct.
5. Indicate in the Office action and on the bib-data sheet whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met.

MPEP 202 states: “The examiner should check this information for accuracy. Should there be an error on the oath or declaration, or application data sheet itself, the examiner should require a new oath or declaration, or application data sheet, where appropriate. A petition for an unintentionally delayed claim for priority may also be required.”

Patent examiners verify foreign priority claims through the following steps:

1. Check that foreign applications listed on the oath, declaration, or application data sheet are properly listed on the bib-data sheet.
2. Verify the accuracy of the application number, country, and filing date for each foreign application.
3. Ensure that only countries qualifying for benefits under 35 U.S.C. 119(a)-(d) are listed.
4. Initial the bib-data sheet in the “VERIFIED” space when the information is correct or has been amended to be correct.
5. Indicate in the Office action and on the bib-data sheet whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met.

MPEP 202 states: “The examiner should check this information for accuracy. Should there be an error on the oath or declaration, or application data sheet itself, the examiner should require a new oath or declaration, or application data sheet, where appropriate. A petition for an unintentionally delayed claim for priority may also be required.”

Foreign priority claims are an important aspect of patent applications and are reflected on the bib-data sheet. The examiner should verify that foreign applications listed on the oath, declaration, or application data sheet are correctly listed on the bib-data sheet.

According to the MPEP: A bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application that the U.S. application is claiming the priority of. The examiner should check this information for accuracy. (MPEP 202)

If there are errors:

• On the oath, declaration, or application data sheet: The examiner should require a new document.
• On the bib-data sheet itself: The examiner should make corrections directly on the sheet and have the information updated in the Office computer systems.

It’s important to note that only countries qualifying for benefits under 35 U.S.C. 119(a)-(d) should be listed. A list of qualifying countries can be found in MPEP § 213.01.

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

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

For more information on patent examination, visit: patent examination.

The MPEP provides a table of states (countries) for which the right of priority under 35 U.S.C. 119(a)-(d) is recognized. These countries fall into three categories:

• Parties to the Patent Cooperation Treaty (PCT)
• Parties to the Paris Convention for the Protection of Industrial Property
• Members of the World Trade Organization (WTO)

The MPEP states: “Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a)-(d) has been recognized.”

For the most current list of recognized countries, refer to the WIPO website at www.wipo.int/pct/en/paris_wto_pct.html.

The U.S. nonprovisional application must generally be filed within 12 months of the filing date of the foreign application to claim priority. For design applications, this period is 6 months.

Specifically, 37 CFR 1.55(b) states:

“The nonprovisional application must be: (1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or (2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.”

There are provisions to restore the right of priority if the subsequent application is filed within 2 months after the expiration of the priority period, if the delay was unintentional.

Regional patent offices play a crucial role in the international patent system, particularly for priority claims. MPEP 213.01 recognizes several regional patent offices whose applications can serve as the basis for priority claims in the United States. These include:

• European Patent Office (EPO)
• Eurasian Patent Office (EAPO)
• African Intellectual Property Organization (OAPI)
• African Regional Intellectual Property Organization (ARIPO)

The significance of these regional offices is explained in MPEP 213.01:

‘The United States will recognize claims for right of priority based on applications filed under such multilateral international agreements as the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT).’

This recognition allows applicants to file a single application with a regional patent office and still maintain priority rights in the United States. It streamlines the international patent application process and provides more flexibility for inventors seeking protection in multiple countries.

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

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

Several international agreements can form the basis for a priority claim in patent applications. The MPEP mentions:

• The Paris Convention for the Protection of Industrial Property
• The Hague Agreement Concerning the International Registration of Industrial Designs
• The Benelux Designs Convention
• The Convention on the Grant of European Patents (European Patent Office)
• The Patent Cooperation Treaty (PCT)
• The International Convention for the Protection of New Varieties of Plants (UPOV)

The MPEP states: “Under Article 4A of the Paris Convention for the Protection of Industrial Property, a right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design filed under the national law of a foreign country adhering to the Convention, or on a foreign application filed under a bilateral or multilateral treaty concluded between two or more such countries.”

These agreements facilitate the international protection of intellectual property rights and enable applicants to claim priority based on applications filed in various jurisdictions.

The Patent Cooperation Treaty (PCT) system interacts with foreign priority claims in several important ways:

1. Priority claims in PCT applications:
– PCT applications can claim priority to earlier foreign applications under the Paris Convention.
– The priority period is 12 months from the earliest priority date.

2. PCT as a basis for priority:
– A PCT application can serve as the basis for a priority claim in a later-filed national or regional application.

3. Effect on time limits:
– The 30-month time limit for entering the national phase is calculated from the priority date (if claimed) or the PCT filing date if no priority is claimed.

4. Restoration of priority rights:
– The PCT system allows for restoration of priority rights if an international application is filed within 14 months of the priority date and the delay was unintentional.

5. Certified copies:
– The PCT system has provisions for providing certified copies of priority documents to designated offices.

As stated in MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”

The PCT system provides a streamlined process for seeking patent protection internationally while preserving priority rights, but applicants must be aware of the specific requirements and time limits within the PCT system.

Taiwan’s unique political status has implications for patent priority claims in US applications. According to MPEP 213.01:

‘Applicants from Taiwan may claim priority under 35 U.S.C. 119(a)-(d) to applications filed in Taiwan which are filed by or on behalf of the governing authority on Taiwan.’

This special provision allows Taiwanese applicants to claim priority despite Taiwan not being officially recognized as a sovereign state by the United States. The MPEP further clarifies:

Applications from Taiwan must meet the following criteria to be eligible for priority claims:

• The application must be filed by or on behalf of the governing authority on Taiwan
• The priority claim must be made in accordance with the standard procedures outlined in 35 U.S.C. 119(a)-(d)

This arrangement ensures that inventors and companies in Taiwan can participate in the international patent system and maintain priority rights for their inventions when seeking protection in the United States.

Yes, applicants can claim priority under 35 U.S.C. 119(a)-(d) based on applications filed in certain foreign regional patent offices. The MPEP states:

“In addition to the list of recognized countries set forth in subsection I, above, applicants may claim priority under 35 U.S.C. 119(a)-(d) to applications filed in foreign regional patent offices having member states who are members of the Paris Convention.”

The recognized regional patent offices include:

• African Regional Intellectual Property Organization (ARIPO)
• Eurasian Patent Office (EAPO)
• European Patent Office (EPO)
• Gulf Cooperation Council (GCC) Patent Office
• African Intellectual Property Organization (OAPI)

These regional patent offices allow applicants to file a single application that can have effect in multiple member states, streamlining the international patent application process.

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

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

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

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

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

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

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

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

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

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

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

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

According to 37 CFR 1.55(g)(2), the USPTO may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in the following circumstances:

1. When the application is involved in an interference or derivation proceeding;
2. When necessary to overcome the date of a reference relied upon by the examiner; or
3. When deemed necessary by the examiner.

The USPTO treats a proper priority claim to an application filed in a participating foreign intellectual property office as a request to obtain a copy of the foreign application. The MPEP states:

The Office treats a proper priority claim under 37 CFR 1.55 to an application filed in a participating foreign intellectual property office as a request that the Office obtain a copy of the foreign application from the participating intellectual property office.

This means that applicants do not need to submit a separate request for the USPTO to retrieve the foreign application if they have made a proper priority claim and the foreign office is a PDX participant.

The Priority Document Exchange (PDX) program allows for electronic transmission of priority documents between participating foreign intellectual property offices. According to 37 CFR 1.55(i), if the foreign application was filed in a participating office, the requirement for a timely filed certified copy is considered satisfied if the Office receives a copy through the PDX program during the pendency of the application and before the patent is granted.

The requirements for accepting an unintentionally delayed claim for foreign priority include:

1. Filing a petition to accept a delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b).
2. Submitting the priority claim in an application data sheet identifying the foreign application.
3. Providing a certified copy of the foreign application, unless previously submitted or an exception applies.
4. Paying the petition fee as set forth in 37 CFR 1.17(m).
5. Submitting a statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The MPEP cites 37 CFR 1.55(e), which states: “A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) must be accompanied by: (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted; (2) A certified copy of the foreign application, unless previously submitted or an exception in paragraph (h), (i), or (j) of this section applies; (3) The petition fee as set forth in § 1.17(m); and (4) A statement that the entire delay between the date the priority claim was due under this section and the date the priority claim was filed was unintentional.” (37 CFR 1.55(e))

The USPTO handles United Kingdom provisional specifications in priority claims as follows:

• A certified copy of the “provisional specification” may be submitted, sometimes accompanied by a copy of the “complete specification.”
• The provisional specification is examined for completeness of disclosure, as it may not contain a complete disclosure in the sense of 35 U.S.C. 112.
• If the UK provisional specification is found insufficient for lack of disclosure, reliance may then be placed on the complete specification and its date, treating it as a different application than the provisional specification.

The MPEP states: “In applications filed from the United Kingdom there may be submitted a certified copy of the ‘provisional specification,’ which may also in some cases be accompanied by a copy of the ‘complete specification.’ According to United Kingdom law the provisional specification need not contain a complete disclosure of the invention in the sense of 35 U.S.C. 112, but need only describe the general nature of the invention, and neither claims nor drawings are required.” (MPEP 216)

The examiner generally does not examine the certified copy of the foreign priority application except to see that it contains no obvious formal defects and corresponds to the U.S. application. The examiner will consider the merits of the priority claim if:

• An intervening reference is found with an effective date between the foreign filing date and U.S. filing date
• Determining if a reference is prior art under the grace period
• An interference situation is under consideration

If the examiner finds the applicant is not entitled to the priority date, a rejection is made and the applicant must then perfect the claim. [MPEP 216]

A claim for foreign priority can be perfected after a patent has been issued through two main methods:

1. Certificate of Correction under 35 U.S.C. 255 and 37 CFR 1.323
2. Reissue application

The choice of method depends on the specific circumstances:

• A Certificate of Correction can be used if the requirements of 37 CFR 1.55 are met and no further examination is required.
• A reissue application is necessary if 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, or if further examination would be required.

The MPEP states: “The failure to perfect a claim to foreign priority prior to issuance of the patent may be cured via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, provided the requirements of 37 CFR 1.55 are met, or by filing a reissue application.” (MPEP 216.01)

When an application is filed with missing parts, the USPTO follows these procedures:

1. If the application meets minimum requirements for a filing date, it will be assigned one.
2. A Notice to File Missing Parts will be issued, detailing the missing items.
3. Applicants must submit missing items along with any required surcharges within the specified time period.
4. For applications filed on or after September 16, 2012, the inventor’s oath or declaration can be postponed until payment of the issue fee if a compliant application data sheet is filed.
5. For applications filed on or after December 18, 2013, filing of claims can be postponed until the expiration of the time period set in the Notice to File Missing Parts.

The MPEP states: ‘The inventor’s oath or declaration, basic filing fee, and search fee and examination fee as set forth in 37 CFR 1.16, may be filed later than the remaining application papers, but if so, they must be accompanied by the required surcharge (if appropriate, see MPEP § 506).’ (MPEP 503)

When an application is filed with missing parts, the USPTO follows these procedures:

1. If the application meets minimum requirements for a filing date, it will be assigned one.
2. A Notice to File Missing Parts will be issued, detailing the missing items.
3. Applicants must submit missing items along with any required surcharges within the specified time period.
4. For applications filed on or after September 16, 2012, the inventor’s oath or declaration can be postponed until payment of the issue fee if a compliant application data sheet is filed.
5. For applications filed on or after December 18, 2013, filing of claims can be postponed until the expiration of the time period set in the Notice to File Missing Parts.

The MPEP states: ‘The inventor’s oath or declaration, basic filing fee, and search fee and examination fee as set forth in 37 CFR 1.16, may be filed later than the remaining application papers, but if so, they must be accompanied by the required surcharge (if appropriate, see MPEP § 506).’ (MPEP 503)

The MPEP provides a table of states (countries) for which the right of priority under 35 U.S.C. 119(a)-(d) is recognized. These countries fall into three categories:

• Parties to the Patent Cooperation Treaty (PCT)
• Parties to the Paris Convention for the Protection of Industrial Property
• Members of the World Trade Organization (WTO)

The MPEP states: “Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a)-(d) has been recognized.”

For the most current list of recognized countries, refer to the WIPO website at www.wipo.int/pct/en/paris_wto_pct.html.

According to 37 CFR 1.55(g)(2), the USPTO may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in the following circumstances:

1. When the application is involved in an interference or derivation proceeding;
2. When necessary to overcome the date of a reference relied upon by the examiner; or
3. When deemed necessary by the examiner.

The U.S. nonprovisional application must generally be filed within 12 months of the filing date of the foreign application to claim priority. For design applications, this period is 6 months.

Specifically, 37 CFR 1.55(b) states:

“The nonprovisional application must be: (1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or (2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.”

There are provisions to restore the right of priority if the subsequent application is filed within 2 months after the expiration of the priority period, if the delay was unintentional.

Regional patent offices play a crucial role in the international patent system, particularly for priority claims. MPEP 213.01 recognizes several regional patent offices whose applications can serve as the basis for priority claims in the United States. These include:

• European Patent Office (EPO)
• Eurasian Patent Office (EAPO)
• African Intellectual Property Organization (OAPI)
• African Regional Intellectual Property Organization (ARIPO)

The significance of these regional offices is explained in MPEP 213.01:

‘The United States will recognize claims for right of priority based on applications filed under such multilateral international agreements as the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT).’

This recognition allows applicants to file a single application with a regional patent office and still maintain priority rights in the United States. It streamlines the international patent application process and provides more flexibility for inventors seeking protection in multiple countries.

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

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

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

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

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

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

Several international agreements can form the basis for a priority claim in patent applications. The MPEP mentions:

• The Paris Convention for the Protection of Industrial Property
• The Hague Agreement Concerning the International Registration of Industrial Designs
• The Benelux Designs Convention
• The Convention on the Grant of European Patents (European Patent Office)
• The Patent Cooperation Treaty (PCT)
• The International Convention for the Protection of New Varieties of Plants (UPOV)

The MPEP states: “Under Article 4A of the Paris Convention for the Protection of Industrial Property, a right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design filed under the national law of a foreign country adhering to the Convention, or on a foreign application filed under a bilateral or multilateral treaty concluded between two or more such countries.”

These agreements facilitate the international protection of intellectual property rights and enable applicants to claim priority based on applications filed in various jurisdictions.

The time periods for filing priority or benefit claims in U.S. patent applications vary depending on the type of claim and application. Generally:

• For foreign priority claims under 35 U.S.C. 119(a)-(d) and (f), the claim must be made within the later of 4 months from the actual filing date or 16 months from the foreign application’s filing date.
• For domestic benefit claims under 35 U.S.C. 119(e) or 120, the claim must be made within the later of 4 months from the actual filing date or 16 months from the prior application’s filing date.
• For international applications entering the national stage, special rules apply.

The MPEP states: “37 CFR 1.55(d) contains provisions relating to the time for filing a priority claim in an application filed under 35 U.S.C. 111(a) and in an application entering the national stage under 35 U.S.C. 371” and “37 CFR 1.78(d) contains provisions relating to claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application.”

Note that these time periods are subject to the provisions of 37 CFR 1.55(p) and 1.78(k), which state that they are not extendable but are subject to certain exceptions.

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

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

To claim priority to or benefit of a prior-filed application, the later-filed application must:

• Contain a specific reference to the earlier-filed application
• Be filed within the required time period
• Include the priority or benefit claim in the application data sheet (for applications filed on or after September 16, 2012)

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.” (MPEP 210)

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

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

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

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

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

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

The requirements for accepting an unintentionally delayed claim for foreign priority include:

1. Filing a petition to accept a delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b).
2. Submitting the priority claim in an application data sheet identifying the foreign application.
3. Providing a certified copy of the foreign application, unless previously submitted or an exception applies.
4. Paying the petition fee as set forth in 37 CFR 1.17(m).
5. Submitting a statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The MPEP cites 37 CFR 1.55(e), which states: “A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) must be accompanied by: (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted; (2) A certified copy of the foreign application, unless previously submitted or an exception in paragraph (h), (i), or (j) of this section applies; (3) The petition fee as set forth in § 1.17(m); and (4) A statement that the entire delay between the date the priority claim was due under this section and the date the priority claim was filed was unintentional.” (37 CFR 1.55(e))

The USPTO handles United Kingdom provisional specifications in priority claims as follows:

• A certified copy of the “provisional specification” may be submitted, sometimes accompanied by a copy of the “complete specification.”
• The provisional specification is examined for completeness of disclosure, as it may not contain a complete disclosure in the sense of 35 U.S.C. 112.
• If the UK provisional specification is found insufficient for lack of disclosure, reliance may then be placed on the complete specification and its date, treating it as a different application than the provisional specification.

The MPEP states: “In applications filed from the United Kingdom there may be submitted a certified copy of the ‘provisional specification,’ which may also in some cases be accompanied by a copy of the ‘complete specification.’ According to United Kingdom law the provisional specification need not contain a complete disclosure of the invention in the sense of 35 U.S.C. 112, but need only describe the general nature of the invention, and neither claims nor drawings are required.” (MPEP 216)

The USPTO treats a proper priority claim to an application filed in a participating foreign intellectual property office as a request to obtain a copy of the foreign application. The MPEP states:

The Office treats a proper priority claim under 37 CFR 1.55 to an application filed in a participating foreign intellectual property office as a request that the Office obtain a copy of the foreign application from the participating intellectual property office.

This means that applicants do not need to submit a separate request for the USPTO to retrieve the foreign application if they have made a proper priority claim and the foreign office is a PDX participant.

When an application is filed with missing parts, the USPTO follows these procedures:

1. If the application meets minimum requirements for a filing date, it will be assigned one.
2. A Notice to File Missing Parts will be issued, detailing the missing items.
3. Applicants must submit missing items along with any required surcharges within the specified time period.
4. For applications filed on or after September 16, 2012, the inventor’s oath or declaration can be postponed until payment of the issue fee if a compliant application data sheet is filed.
5. For applications filed on or after December 18, 2013, filing of claims can be postponed until the expiration of the time period set in the Notice to File Missing Parts.

The MPEP states: ‘The inventor’s oath or declaration, basic filing fee, and search fee and examination fee as set forth in 37 CFR 1.16, may be filed later than the remaining application papers, but if so, they must be accompanied by the required surcharge (if appropriate, see MPEP § 506).’ (MPEP 503)

The examiner generally does not examine the certified copy of the foreign priority application except to see that it contains no obvious formal defects and corresponds to the U.S. application. The examiner will consider the merits of the priority claim if:

• An intervening reference is found with an effective date between the foreign filing date and U.S. filing date
• Determining if a reference is prior art under the grace period
• An interference situation is under consideration

If the examiner finds the applicant is not entitled to the priority date, a rejection is made and the applicant must then perfect the claim. [MPEP 216]

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

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

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

The Priority Document Exchange (PDX) program allows for electronic transmission of priority documents between participating foreign intellectual property offices. According to 37 CFR 1.55(i), if the foreign application was filed in a participating office, the requirement for a timely filed certified copy is considered satisfied if the Office receives a copy through the PDX program during the pendency of the application and before the patent is granted.

The Patent Cooperation Treaty (PCT) system interacts with foreign priority claims in several important ways:

1. Priority claims in PCT applications:
– PCT applications can claim priority to earlier foreign applications under the Paris Convention.
– The priority period is 12 months from the earliest priority date.

2. PCT as a basis for priority:
– A PCT application can serve as the basis for a priority claim in a later-filed national or regional application.

3. Effect on time limits:
– The 30-month time limit for entering the national phase is calculated from the priority date (if claimed) or the PCT filing date if no priority is claimed.

4. Restoration of priority rights:
– The PCT system allows for restoration of priority rights if an international application is filed within 14 months of the priority date and the delay was unintentional.

5. Certified copies:
– The PCT system has provisions for providing certified copies of priority documents to designated offices.

As stated in MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”

The PCT system provides a streamlined process for seeking patent protection internationally while preserving priority rights, but applicants must be aware of the specific requirements and time limits within the PCT system.

Taiwan’s unique political status has implications for patent priority claims in US applications. According to MPEP 213.01:

‘Applicants from Taiwan may claim priority under 35 U.S.C. 119(a)-(d) to applications filed in Taiwan which are filed by or on behalf of the governing authority on Taiwan.’

This special provision allows Taiwanese applicants to claim priority despite Taiwan not being officially recognized as a sovereign state by the United States. The MPEP further clarifies:

Applications from Taiwan must meet the following criteria to be eligible for priority claims:

• The application must be filed by or on behalf of the governing authority on Taiwan
• The priority claim must be made in accordance with the standard procedures outlined in 35 U.S.C. 119(a)-(d)

This arrangement ensures that inventors and companies in Taiwan can participate in the international patent system and maintain priority rights for their inventions when seeking protection in the United States.

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

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

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

A claim for foreign priority can be perfected after a patent has been issued through two main methods:

1. Certificate of Correction under 35 U.S.C. 255 and 37 CFR 1.323
2. Reissue application

The choice of method depends on the specific circumstances:

• A Certificate of Correction can be used if the requirements of 37 CFR 1.55 are met and no further examination is required.
• A reissue application is necessary if 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, or if further examination would be required.

The MPEP states: “The failure to perfect a claim to foreign priority prior to issuance of the patent may be cured via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, provided the requirements of 37 CFR 1.55 are met, or by filing a reissue application.” (MPEP 216.01)

Patent examiners verify foreign priority claims through the following steps:

1. Check that foreign applications listed on the oath, declaration, or application data sheet are properly listed on the bib-data sheet.
2. Verify the accuracy of the application number, country, and filing date for each foreign application.
3. Ensure that only countries qualifying for benefits under 35 U.S.C. 119(a)-(d) are listed.
4. Initial the bib-data sheet in the “VERIFIED” space when the information is correct or has been amended to be correct.
5. Indicate in the Office action and on the bib-data sheet whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met.

MPEP 202 states: “The examiner should check this information for accuracy. Should there be an error on the oath or declaration, or application data sheet itself, the examiner should require a new oath or declaration, or application data sheet, where appropriate. A petition for an unintentionally delayed claim for priority may also be required.”

Foreign priority claims are an important aspect of patent applications and are reflected on the bib-data sheet. The examiner should verify that foreign applications listed on the oath, declaration, or application data sheet are correctly listed on the bib-data sheet.

According to the MPEP: A bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application that the U.S. application is claiming the priority of. The examiner should check this information for accuracy. (MPEP 202)

If there are errors:

• On the oath, declaration, or application data sheet: The examiner should require a new document.
• On the bib-data sheet itself: The examiner should make corrections directly on the sheet and have the information updated in the Office computer systems.

It’s important to note that only countries qualifying for benefits under 35 U.S.C. 119(a)-(d) should be listed. A list of qualifying countries can be found in MPEP § 213.01.

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

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

For more information on patent examination, visit: patent examination.

Yes, applicants can claim priority under 35 U.S.C. 119(a)-(d) based on applications filed in certain foreign regional patent offices. The MPEP states:

“In addition to the list of recognized countries set forth in subsection I, above, applicants may claim priority under 35 U.S.C. 119(a)-(d) to applications filed in foreign regional patent offices having member states who are members of the Paris Convention.”

The recognized regional patent offices include:

• African Regional Intellectual Property Organization (ARIPO)
• Eurasian Patent Office (EAPO)
• European Patent Office (EPO)
• Gulf Cooperation Council (GCC) Patent Office
• African Intellectual Property Organization (OAPI)

These regional patent offices allow applicants to file a single application that can have effect in multiple member states, streamlining the international patent application process.

The MPEP provides a table of states (countries) for which the right of priority under 35 U.S.C. 119(a)-(d) is recognized. These countries fall into three categories:

• Parties to the Patent Cooperation Treaty (PCT)
• Parties to the Paris Convention for the Protection of Industrial Property
• Members of the World Trade Organization (WTO)

The MPEP states: “Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a)-(d) has been recognized.”

For the most current list of recognized countries, refer to the WIPO website at www.wipo.int/pct/en/paris_wto_pct.html.

According to 37 CFR 1.55(g)(2), the USPTO may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in the following circumstances:

1. When the application is involved in an interference or derivation proceeding;
2. When necessary to overcome the date of a reference relied upon by the examiner; or
3. When deemed necessary by the examiner.

The U.S. nonprovisional application must generally be filed within 12 months of the filing date of the foreign application to claim priority. For design applications, this period is 6 months.

Specifically, 37 CFR 1.55(b) states:

“The nonprovisional application must be: (1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or (2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.”

There are provisions to restore the right of priority if the subsequent application is filed within 2 months after the expiration of the priority period, if the delay was unintentional.

Regional patent offices play a crucial role in the international patent system, particularly for priority claims. MPEP 213.01 recognizes several regional patent offices whose applications can serve as the basis for priority claims in the United States. These include:

• European Patent Office (EPO)
• Eurasian Patent Office (EAPO)
• African Intellectual Property Organization (OAPI)
• African Regional Intellectual Property Organization (ARIPO)

The significance of these regional offices is explained in MPEP 213.01:

‘The United States will recognize claims for right of priority based on applications filed under such multilateral international agreements as the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT).’

This recognition allows applicants to file a single application with a regional patent office and still maintain priority rights in the United States. It streamlines the international patent application process and provides more flexibility for inventors seeking protection in multiple countries.

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

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

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

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

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

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

Several international agreements can form the basis for a priority claim in patent applications. The MPEP mentions:

• The Paris Convention for the Protection of Industrial Property
• The Hague Agreement Concerning the International Registration of Industrial Designs
• The Benelux Designs Convention
• The Convention on the Grant of European Patents (European Patent Office)
• The Patent Cooperation Treaty (PCT)
• The International Convention for the Protection of New Varieties of Plants (UPOV)

The MPEP states: “Under Article 4A of the Paris Convention for the Protection of Industrial Property, a right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design filed under the national law of a foreign country adhering to the Convention, or on a foreign application filed under a bilateral or multilateral treaty concluded between two or more such countries.”

These agreements facilitate the international protection of intellectual property rights and enable applicants to claim priority based on applications filed in various jurisdictions.

The time periods for filing priority or benefit claims in U.S. patent applications vary depending on the type of claim and application. Generally:

• For foreign priority claims under 35 U.S.C. 119(a)-(d) and (f), the claim must be made within the later of 4 months from the actual filing date or 16 months from the foreign application’s filing date.
• For domestic benefit claims under 35 U.S.C. 119(e) or 120, the claim must be made within the later of 4 months from the actual filing date or 16 months from the prior application’s filing date.
• For international applications entering the national stage, special rules apply.

The MPEP states: “37 CFR 1.55(d) contains provisions relating to the time for filing a priority claim in an application filed under 35 U.S.C. 111(a) and in an application entering the national stage under 35 U.S.C. 371” and “37 CFR 1.78(d) contains provisions relating to claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application.”

Note that these time periods are subject to the provisions of 37 CFR 1.55(p) and 1.78(k), which state that they are not extendable but are subject to certain exceptions.

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

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

To claim priority to or benefit of a prior-filed application, the later-filed application must:

• Contain a specific reference to the earlier-filed application
• Be filed within the required time period
• Include the priority or benefit claim in the application data sheet (for applications filed on or after September 16, 2012)

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.” (MPEP 210)

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

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

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

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

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

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

The requirements for accepting an unintentionally delayed claim for foreign priority include:

1. Filing a petition to accept a delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b).
2. Submitting the priority claim in an application data sheet identifying the foreign application.
3. Providing a certified copy of the foreign application, unless previously submitted or an exception applies.
4. Paying the petition fee as set forth in 37 CFR 1.17(m).
5. Submitting a statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The MPEP cites 37 CFR 1.55(e), which states: “A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) must be accompanied by: (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted; (2) A certified copy of the foreign application, unless previously submitted or an exception in paragraph (h), (i), or (j) of this section applies; (3) The petition fee as set forth in § 1.17(m); and (4) A statement that the entire delay between the date the priority claim was due under this section and the date the priority claim was filed was unintentional.” (37 CFR 1.55(e))

The USPTO handles United Kingdom provisional specifications in priority claims as follows:

• A certified copy of the “provisional specification” may be submitted, sometimes accompanied by a copy of the “complete specification.”
• The provisional specification is examined for completeness of disclosure, as it may not contain a complete disclosure in the sense of 35 U.S.C. 112.
• If the UK provisional specification is found insufficient for lack of disclosure, reliance may then be placed on the complete specification and its date, treating it as a different application than the provisional specification.

The MPEP states: “In applications filed from the United Kingdom there may be submitted a certified copy of the ‘provisional specification,’ which may also in some cases be accompanied by a copy of the ‘complete specification.’ According to United Kingdom law the provisional specification need not contain a complete disclosure of the invention in the sense of 35 U.S.C. 112, but need only describe the general nature of the invention, and neither claims nor drawings are required.” (MPEP 216)

The USPTO treats a proper priority claim to an application filed in a participating foreign intellectual property office as a request to obtain a copy of the foreign application. The MPEP states:

The Office treats a proper priority claim under 37 CFR 1.55 to an application filed in a participating foreign intellectual property office as a request that the Office obtain a copy of the foreign application from the participating intellectual property office.

This means that applicants do not need to submit a separate request for the USPTO to retrieve the foreign application if they have made a proper priority claim and the foreign office is a PDX participant.

When an application is filed with missing parts, the USPTO follows these procedures:

1. If the application meets minimum requirements for a filing date, it will be assigned one.
2. A Notice to File Missing Parts will be issued, detailing the missing items.
3. Applicants must submit missing items along with any required surcharges within the specified time period.
4. For applications filed on or after September 16, 2012, the inventor’s oath or declaration can be postponed until payment of the issue fee if a compliant application data sheet is filed.
5. For applications filed on or after December 18, 2013, filing of claims can be postponed until the expiration of the time period set in the Notice to File Missing Parts.

The MPEP states: ‘The inventor’s oath or declaration, basic filing fee, and search fee and examination fee as set forth in 37 CFR 1.16, may be filed later than the remaining application papers, but if so, they must be accompanied by the required surcharge (if appropriate, see MPEP § 506).’ (MPEP 503)

The examiner generally does not examine the certified copy of the foreign priority application except to see that it contains no obvious formal defects and corresponds to the U.S. application. The examiner will consider the merits of the priority claim if:

• An intervening reference is found with an effective date between the foreign filing date and U.S. filing date
• Determining if a reference is prior art under the grace period
• An interference situation is under consideration

If the examiner finds the applicant is not entitled to the priority date, a rejection is made and the applicant must then perfect the claim. [MPEP 216]

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

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

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

The Priority Document Exchange (PDX) program allows for electronic transmission of priority documents between participating foreign intellectual property offices. According to 37 CFR 1.55(i), if the foreign application was filed in a participating office, the requirement for a timely filed certified copy is considered satisfied if the Office receives a copy through the PDX program during the pendency of the application and before the patent is granted.

The Patent Cooperation Treaty (PCT) system interacts with foreign priority claims in several important ways:

1. Priority claims in PCT applications:
– PCT applications can claim priority to earlier foreign applications under the Paris Convention.
– The priority period is 12 months from the earliest priority date.

2. PCT as a basis for priority:
– A PCT application can serve as the basis for a priority claim in a later-filed national or regional application.

3. Effect on time limits:
– The 30-month time limit for entering the national phase is calculated from the priority date (if claimed) or the PCT filing date if no priority is claimed.

4. Restoration of priority rights:
– The PCT system allows for restoration of priority rights if an international application is filed within 14 months of the priority date and the delay was unintentional.

5. Certified copies:
– The PCT system has provisions for providing certified copies of priority documents to designated offices.

As stated in MPEP 213.06: “In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT.”

The PCT system provides a streamlined process for seeking patent protection internationally while preserving priority rights, but applicants must be aware of the specific requirements and time limits within the PCT system.

Taiwan’s unique political status has implications for patent priority claims in US applications. According to MPEP 213.01:

‘Applicants from Taiwan may claim priority under 35 U.S.C. 119(a)-(d) to applications filed in Taiwan which are filed by or on behalf of the governing authority on Taiwan.’

This special provision allows Taiwanese applicants to claim priority despite Taiwan not being officially recognized as a sovereign state by the United States. The MPEP further clarifies:

Applications from Taiwan must meet the following criteria to be eligible for priority claims:

• The application must be filed by or on behalf of the governing authority on Taiwan
• The priority claim must be made in accordance with the standard procedures outlined in 35 U.S.C. 119(a)-(d)

This arrangement ensures that inventors and companies in Taiwan can participate in the international patent system and maintain priority rights for their inventions when seeking protection in the United States.

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

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

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

A claim for foreign priority can be perfected after a patent has been issued through two main methods:

1. Certificate of Correction under 35 U.S.C. 255 and 37 CFR 1.323
2. Reissue application

The choice of method depends on the specific circumstances:

• A Certificate of Correction can be used if the requirements of 37 CFR 1.55 are met and no further examination is required.
• A reissue application is necessary if 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, or if further examination would be required.

The MPEP states: “The failure to perfect a claim to foreign priority prior to issuance of the patent may be cured via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323, provided the requirements of 37 CFR 1.55 are met, or by filing a reissue application.” (MPEP 216.01)

Patent examiners verify foreign priority claims through the following steps:

1. Check that foreign applications listed on the oath, declaration, or application data sheet are properly listed on the bib-data sheet.
2. Verify the accuracy of the application number, country, and filing date for each foreign application.
3. Ensure that only countries qualifying for benefits under 35 U.S.C. 119(a)-(d) are listed.
4. Initial the bib-data sheet in the “VERIFIED” space when the information is correct or has been amended to be correct.
5. Indicate in the Office action and on the bib-data sheet whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met.

MPEP 202 states: “The examiner should check this information for accuracy. Should there be an error on the oath or declaration, or application data sheet itself, the examiner should require a new oath or declaration, or application data sheet, where appropriate. A petition for an unintentionally delayed claim for priority may also be required.”

Foreign priority claims are an important aspect of patent applications and are reflected on the bib-data sheet. The examiner should verify that foreign applications listed on the oath, declaration, or application data sheet are correctly listed on the bib-data sheet.

According to the MPEP: A bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application that the U.S. application is claiming the priority of. The examiner should check this information for accuracy. (MPEP 202)

If there are errors:

• On the oath, declaration, or application data sheet: The examiner should require a new document.
• On the bib-data sheet itself: The examiner should make corrections directly on the sheet and have the information updated in the Office computer systems.

It’s important to note that only countries qualifying for benefits under 35 U.S.C. 119(a)-(d) should be listed. A list of qualifying countries can be found in MPEP § 213.01.

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

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

For more information on patent examination, visit: patent examination.

Yes, applicants can claim priority under 35 U.S.C. 119(a)-(d) based on applications filed in certain foreign regional patent offices. The MPEP states:

“In addition to the list of recognized countries set forth in subsection I, above, applicants may claim priority under 35 U.S.C. 119(a)-(d) to applications filed in foreign regional patent offices having member states who are members of the Paris Convention.”

The recognized regional patent offices include:

• African Regional Intellectual Property Organization (ARIPO)
• Eurasian Patent Office (EAPO)
• European Patent Office (EPO)
• Gulf Cooperation Council (GCC) Patent Office
• African Intellectual Property Organization (OAPI)

These regional patent offices allow applicants to file a single application that can have effect in multiple member states, streamlining the international patent application process.