What is the effect of restoration of the right of priority on pre-AIA applications?

While restoration of the right of priority allows for valid priority claims up to 14 months from the earliest priority date (or 8 months for design applications), pre-AIA applications are still subject to the 12-month statutory bar under pre-AIA 35 U.S.C. 102(b) and (d). MPEP 213.03 clarifies: ‘It should be noted that although an application may now validly claim priority under 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) or (b), or 386(a) or (b) to a foreign application filed up to fourteen months earlier (or eight months earlier in the case of a design application) in view of the restoration provision of 37 CFR 1.55(c), an application subject to examination under pre-AIA first to invent laws (rather than the first inventor to file provisions of the AIA) would still be subject to the 12-month statutory time periods in pre-AIA 35 U.S.C. 102(b) and (d) which are measured from the U.S. filing date.’

This means that while the priority claim may be valid, the earlier filed foreign application could still be used as prior art against a pre-AIA application if it was published more than one year before the U.S. filing date.

For more information on pre-AIA, visit: pre-AIA.