201.14   Right of Priority, Formal Requirements [R-5]

Under the statute (35 U.S.C. 119(b) ), an applicant who wishes to secure the right of priority must comply with certain formal requirements within a time specified. If these requirements are not complied with the right of priority is lost and cannot thereafter be asserted.

For nonprovisional applications filed prior to November 29, 2000, the requirements of the statute are (a) that the applicant must file a claim for the right and (b) he or she must also file a certified copy of the original foreign application; these papers must be filed within a certain time limit. The maximum time limit specified in the statute is that the claim for priority and the priority papers must be filed before the patent is granted, but the statute gives the Director authority to set this time limit at an earlier time during the pendency of the application.

Where a claim for priority under 35 U.S.C. 119(b)  has not been made in the parent application, the claim for priority may be made in a continuing application provided the parent application has been filed within 12 months from the date of the earliest foreign filing. See In re Tangsrud, 184 USPQ 746 (Comm’r Pat. 1973). If the claim for priority and the certified copy of the priority document are not filed in the continuing application within the time period set in 37 CFR 1.55, the right of priority is lost. A reissue was granted in Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where the only ground urged was failure to file a certified copy of the original foreign application to obtain the right of foreign priority under 35 U.S.C. 119  before the patent was granted.

It should be particularly noted that these papers must be filed in all cases even though they may not be necessary during the pendency of the application to overcome the date of any reference. The statute also gives the Director authority to require a translation of the foreign documents if not in the English language and such other information as the Director may deem necessary.

For original applications filed under 35 U.S.C.111(a)  (other than a design application) on or after November 29, 2000, the requirements of the statute are that the applicant must (a) file a claim for the right of priority and (b) identify the original foreign application by specifying the application number of the foreign application, the intellectual property authority or country in which the application was filed and the date of filing of the application. These papers must be filed within a certain time limit. The time limit specified in 35 U.S.C.119(b)(1)  is that the claim for priority and the required identification information must be filed at such time during the pendency of the application as set by the Director. The Director has by rule set this time limit as 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(a)(1)(i). This time period is not extendable. In an application that entered the national stage from an international application after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and the Regulations under the PCT. See 37 CFR 1.55(a)(1)(ii). Claims for foreign priority not presented within the time period specified in 37 CFR 1.55(a)(1)(i)  are considered to have been waived. If a claim for priority under 35 U.S.C.119(a)  - (d) or (f), or 365(a)  is presented after the time period set in 37 CFR 1.55(a)(1)(i), the claim may be accepted if it includes the required identification information and is accompanied by a grantable petition to accept the unintentionally delayed claim for priority. See 37 CFR 1.55(c). In addition, 35 U.S.C. 119(b)(3)  gives the Director authority to require a certified copy of the foreign application and an English translation if the foreign application is not in the English language and such other information as the Director may deem necessary. The Director has by rule, 37 CFR 1.55(a)(2), required a certified copy of the foreign application to be submitted before the patent is granted. If the certified copy of the foreign application is submitted after the payment of the issue fee, it must be accompanied by the processing fee set forth in 37 CFR 1.17(i). See MPEP § 201.14(a).

Unless provided in an application data sheet, 37 CFR 1.63  requires that the oath or declaration must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.

201.14(a)   Right of Priority, Time for Filing Papers [R-3]

The time for filing the priority papers required by the statute is specified in 37 CFR 1.55(a).

37 C.F.R. 1.55   Claim for foreign priority.

  • (a) An applicant in a nonprovisional application may claim the benefit of the filing date of one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a)  through (d) and (f), 172, and 365(a) and (b).
    • (1)
      • (i) In an original application filed under 35 U.S.C. 111(a), the claim for priority must be presented 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. This time period is not extendable. The claim must identify the foreign application for which priority is claimed, as well as any foreign application for the same subject matter and having a filing date before that of the application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. The time periods in this paragraph do not apply in an application under 35 U.S.C. 111 (a) if the application is:
        • (A) A design application; or
        • (B) An application filed before November 29, 2000.
      • (ii) In an application that entered the national stage from an international application after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and the Regulations under the PCT.
    • (2) The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b)  or PCT Rule 17  must, in any event, be filed before the patent is granted. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, it must be accompanied by the processing fee set forth in § 1.17(i), but the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255  and § 1.323 
    • (3) The Office may require that the claim for priority and the certified copy of the foreign application be filed earlier than provided in paragraphs (a)(1) or (a)(2) of this section:
      • (i) When the application becomes involved in an interference (see § 41.202  of this title),
      • (ii) When necessary to overcome the date of a reference relied upon by the examiner, or
      • (iii) When deemed necessary by the examiner.
    • (4)
      • (i) An English language translation of a non-English language foreign application is not required except:
        • (A) When the application is involved in an interference (see § 41.202  of this title),
        • (B) When necessary to overcome the date of a reference relied upon by the examiner, or
        • (C) When specifically required by the examiner.
      • (ii) If an English language translation is required, it must be filed together with a statement that the translation of the certified copy is accurate.

*****

  • (c) Unless such claim is accepted in accordance with the provisions of this paragraph, any claim for priority under 35 U.S.C. 119(a)-(d)  or 365(a)  not presented within the time period provided by paragraph (a) of this section is considered to have been waived. If a claim for priority under 35 U.S.C. 119(a)-(d)  or 365(a)  is presented after the time period provided by paragraph (a) of this section, the claim may be accepted if the claim identifying the prior foreign application by specifying its application number, country (or intellectual property authority), and the day, month, and year of its filing was unintentionally delayed. A petition to accept a delayed claim for priority under 35 U.S.C. 119(a)-(d)  or 365(a)  must be accompanied by:
    • (1) The claim under 35 U.S.C. 119 (a)-(d) or 365 (a) and this section to the prior foreign application, unless previously submitted;
    • (2) The surcharge set forth in § 1.17(t); and
    • (3) A statement that the entire delay between the date the claim was due under paragraph (a)(1) of this section and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

It should first be noted that the Director has by rule specified an earlier ultimate date than the date the patent is granted for filing a claim and a certified copy. For original applications filed under 35 U.S.C. 111(a)  (other than a design application) on or after November 29, 2000, a claim for foreign priority must be presented 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(a)(1)(i). This time period is not extendable. For applications that entered the national stage from an international application filed on or after November 29, 2000, after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and the Regulations under the PCT. Any foreign priority claim not presented within the time period set in 37 CFR 1.55(a)(1)(i)  is considered to have been waived. If a claim for foreign priority is presented after the time period set in 37 CFR 1.55(a)(1)(i), the claim may be accepted if the claim properly identifies the prior foreign application and is accompanied by a grantable petition to accept an unintentionally delayed claim for priority. A grantable petition to accept an unintentionally delayed claim for priority must include: (1) the claim (i.e., the claim required by 35 U.S.C. 119(a)-(d)  and (f) and 37 CFR 1.55 ) for priority to the prior foreign application, unless previously submitted; (2) the surcharge set forth in 37 CFR 1.17(t);  and (3) a statement that the entire delay between the date the claim was due under 37 CFR 1.55(a)(1)  and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. See 37 CFR1.55(c).

For nonprovisional applications filed prior to November 29, 2000 and for design applications, a claim for foreign priority may be made up until the time when the patent is granted. Priority claims and certified copies of foreign applications filed after payment of the issue fee will be placed in the application file but will not be reviewed, as explained in further detail below.

For all applications, assuming the claim for foreign priority has been made, the latest time at which the papers may be filed without a processing fee (37 CFR 1.17(i) ) is the date of the payment of the issue fee, except that, under certain circumstances, they are required at an earlier date. These circumstances are specified in the rule as:

    • (A) in the case of interferences in which event the papers must be filed within the time specified in the interference rules;
    • (B) when necessary to overcome the date of a reference relied on by the examiner; and
    • (C) when specifically required by the examiner.

The claim for foreign priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b)  or PCT Rule 17  must, in any event, be filed before the patent is granted. If the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the priority claim or certified copy must be accompanied by a processing fee set forth in 37 CFR 1.17(i). The priority claim or certified copy will be placed in the file record but there will be no review of the papers and the patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255  and 37 CFR 1.323  can be filed to have the priority claim or certified copy considered after publication of the patent. In addition, for original applications filed under 35 U.S.C. 111(a)  (other than a design application) on or after November 29, 2000, a grantable petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55(c)  must also be filed with the certificate of correction.

In view of the shortened periods for prosecution leading to allowances, it is recommended that priority papers be filed as early as possible. Although 37 CFR 1.55(a)(2)  permits the filing of priority papers up to and including the date for payment of the issue fee, it is advisable that such papers be filed promptly after filing the application. Frequently, priority papers are found to be deficient in material respects, such as for example, the failure to include the correct certified copy, and there is not sufficient time to remedy the defect. Occasionally, a new oath or declaration may be necessary where the original oath or declaration omits the reference to the foreign filing date for which the benefit is claimed. The early filing of priority papers would thus be advantageous to applicants in that it would afford time to explain any inconsistencies that exist or to supply any additional documents that may be necessary.

It is also suggested that a pencil notation of the application number of the corresponding U.S. application be placed on the priority papers. Such notation should be placed directly on the priority papers themselves even where a cover letter is attached bearing the U.S. application data. Experience indicates that cover letters and priority papers occasionally become separated, and without the suggested pencil notations on the priority papers, correlating them with the corresponding U.S. application becomes exceedingly difficult, frequently resulting in severe problems for both the Office and applicant. Adherence to the foregoing suggestion for making a pencil notation on the priority document of the U.S. application data will result in a substantial lessening of the problem.

If the priority claim in an original application filed under 35 U.S.C. 111(a)  (other than a design application) on or after November 29, 2000 is submitted after the time period set forth in 37 CFR 1.55(a)(1)  and without the required petition (37 CFR 1.55(c)), the examiner may use the following form paragraph to inform applicant that the foreign priority claim will not be entered.

¶ 2.21.01    35 U.S.C. 119(a)-(d)  or (f) or 365(a)  Foreign Priority Claim is Untimely

The foreign priority claim filed on [1] was not entered because the foreign priority claim was not filed during the time period set forth in 37 CFR 1.55(a)(1). For original applications filed under 35 U.S.C. 111(a)  (other than a design application) on or after November 29, 2000, the time period is 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. For applications that have entered national stage from an international application filed on or after November 29, 2000, after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and the Regulations under the PCT. See 37 CFR 1.55(a)(1)(ii). If applicant desires priority under 35 U.S.C. 119(a)-(d), (f)  or 365(a)  based upon a prior foreign application, applicant must file a petition for an unintentionally delayed priority claim (37 CFR 1.55(c) ). The petition must be accompanied by (1) the claim (i.e., the claim required by 35 U.S.C. 119(a)-(d) and (f)  and 37 CFR 1.55 ) for priority to the prior foreign application, unless previously submitted; (2) a surcharge under 37 CFR 1.17(t); and (3) a statement that the entire delay between the date the claim was due under 37 CFR 1.55(a)(1)  and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

Examiner Note:

1. Use this form paragraph only for original applications filed under 35 U.S.C. 111(a)  on or after November 29, 2000. DO NOT use for design applications.

2. In bracket 1, insert the date the amendment or paper containing the foreign priority claim was filed.

201.14(b)   Right of Priority, Papers Required [R-2]

The filing of the priority papers under 35 U.S.C. 119(a) -(d) makes the record of the file of the United States patent complete. The U.S. Patent and Trademark Office does not normally examine the papers to determine whether the applicant is in fact entitled to the right of priority and does not grant or refuse the right of priority, except as described in MPEP § 201.15 and in cases of interferences.

The papers required are the claim for priority and the certified copy of the foreign application. For original applications filed under 35 U.S.C. 111(a)  (other than design applications) on or after November 29, 2000, the claim for foreign priority must identify the foreign application for which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. In addition, the claim for priority must also identify any foreign application for the same subject matter having a filing date before that of the foreign application for which priority is claimed.

For all applications, the claim to priority need be in no special form, and may be made by a person authorized to sign correspondence under 37 CFR1.33(b). No special language is required in making the claim for priority, and any expression which can be reasonably interpreted as claiming the benefit of the foreign application is accepted as the claim for priority. The claim for priority may appear in the oath or declaration, an application data sheet (37 CFR1.76), or the application transmittal letter with the recitation of the foreign application. See MPEP § 201.13, paragraph A.

The certified copy which must be filed is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information. "Application" in this connection is not considered to include formal papers such as a petition. A copy of the foreign patent as issued does not comply since the application as filed is required; however, a copy of the printed specification and drawing of the foreign patent is sufficient if the certification indicates that it corresponds to the application as filed. A French patent stamped "Service De La Propriete Industrielle - Conforme Aux Pieces Deposees A L’ Appui de La Demande" and additionally bearing a signed seal is also acceptable in lieu of a certified copy of the French application.

When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner should make no examination of the papers except to see that they correspond in number, date and country to the application identified in the oath or declaration and contain no obvious formal defects. The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof. In addition, for original applications filed under 35 U.S.C. 111(a)  (other than design applications) on or after November 29, 2000, the examiner should make sure that the claim for foreign priority is timely. Examiners may use form paragraph 2.21.01 to notify applicant that the foreign priority claim is untimely.

I.    DURING INTERFERENCE

If priority papers are filed in an interference, it is not necessary to file an additional certified copy in the application file. The administrative patent judge will associate them with the application .

II.    LATER FILED APPLICATIONS, REISSUES

Where the benefit of a foreign filing date based on a foreign application is claimed in a later filed application (i.e., continuation, continuation-in-part, division) or in a reissue application and a certified copy of the foreign application as filed, has been filed in a parent or related application, it is not necessary to file an additional certified copy in the later application. A reminder of this provision is found in form paragraph 2.20. The applicant when making such claim for priority may simply identify the application containing the certified copy. In such cases, the examiner should acknowledge the claim on form PTOL-326. Note copy in MPEP § 707.

If the applicant fails to call attention to the fact that the certified copy is in the parent or related application and the examiner is aware of the fact that a claim for priority under 35 U.S.C. 119(a) -(d) or (f) was made in the parent application, the examiner should call applicant’s attention to these facts in an Office action, so that if a patent issues on the later or reissue application, the priority data will appear in the patent. In such cases, the language of form paragraph 2.20 should be used.

¶ 2.20    Priority Papers in Parent or Related (Reissue Situation) - Application

Applicant is reminded that in order for a patent issuing on the instant application to obtain the benefit of priority based on priority papers filed in parent or related Application No. [1] under 35 U.S.C. 119(a)-(d) or (f), a claim for such foreign priority must be timely made in this application. To satisfy the requirement of 37 CFR 1.55(a)(2)  for a certified copy of the foreign application, applicant may simply identify the application containing the certified copy.

Where the benefit of a foreign filing date, based on a foreign application, is claimed in a later filed application or in a reissue application and a certified copy of the foreign application, as filed, has not been filed in a parent or related application, a claim for priority may be made in the later application. In re Tangsrud, 184 USPQ 746 (Comm’r Pat. 1973). When such a claim is made in the later application and a certified copy of the foreign application is placed therein, the examiner should acknowledge the claim on form PTOL-326. Note copy in MPEP § 707.

III.    WHERE AN ACTUAL MODEL WAS ORIGINALLY FILED IN GERMANY

The German design statute does not permit an applicant having an establishment or domicile in the Federal Republic of Germany to file design patent applications with the German Patent Office. These German applicants can only obtain design protection by filing papers or an actual deposit of a model with the judicial authority ("Amtsgericht") of their principal establishment or domicile. Filing with the German Patent Office is exclusively reserved for applicants who have neither an establishment or domicile in the Federal Republic of Germany. The deposit in an "Amtsgericht" has the same effect as if deposited at the German Patent Office and results in a "Geschmacksmuster" which is effective throughout Germany.

In implementing the Paris Convention, 35 U.S.C. 119(a) -(d) and (f) requires that a copy of the original foreign application, specification, and drawings certified by the patent office of the foreign country in which filed, shall be submitted to the U.S. Patent and Trademark Office, in order for an applicant to be entitled to the right of priority in the United States.

Article 4, section A(2) of the Paris Convention however states that "(a)ny filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union . . . shall be recognized as giving rise to the right of priority." Article 4D(3) of the Convention further provides that countries of the Union may require any person making a declaration of priority to produce a copy of the previously filed application (description, drawings, etc.) certified as correct by the authority which received this application.

As far as the physical production of a copy of the earlier filed paper application is concerned, an applicant should have no difficulty in providing a copy, certified by the authority which received it, if the earlier filed application contained drawings illustrating the design. A problem, however, arises when the only prior "regular national filing" consisted of the deposit of an actual model of the design. 35 U.S.C. 119  is silent on this subject.

Therefore, the U.S. Patent and Trademark Office will receive as evidence of an earlier filed German design application under 35 U.S.C. 119(a) -(d), drawings or acceptable clear photographs of the deposited model faithfully reproducing the design embodied therein together with other required information, certified as being a true copy by an official of the court with which the model was originally deposited.

35 U.S.C. 119(a) -(d), prior to amendment by the American Inventors Protection Act of 1999 (AIPA), Public Law 106-113, provides for the certification of the earlier filed application by the patent office of the foreign country in which it was filed. Because Article 4D(3) of the Paris Convention which 35 U.S.C. 119(a) -(d) implements refers to certification ". . . by the authority which received such application . . .", the reference to "patent office" in the statute is construed to extend also to the authority which is in charge of the design register, i.e., the applicable German court. As a consequence, an additional certification by the German Patent Office will not be necessary especially since Article 4D(3) of the Paris Convention provides that authentication shall not be required. Effective November 29, 2000, the AIPA amended 35 U.S.C. 119(b)(3)  to state that certification "…shall be made by the foreign intellectual property authority in which the foreign application was filed." 35 U.S.C. 119(b)(3)  as amended by the AIPA applies to applications filed under 35 U.S.C 111(a)  and international applications complying with 35 U.S.C. 371, with filing dates on or after November 29, 2000.

Although, as stated above, a "regular national filing" gives rise to the right of priority, the mere submission of a certified copy of the earlier filed foreign application, however, may not be sufficient to perfect that right in this country. For example, among other things, an application filed in a foreign country must contain a disclosure of the invention adequate to satisfy the requirements of 35 U.S.C. 112, in order to form the basis for the right of priority in a later filed United States application.

201.14(c)   Right of Priority, Practice [R-3]

Before going into the practice with respect to those instances in which the priority papers are used to overcome a reference, there will first be described the practice when there is no occasion to use the papers, which will be in the majority of cases. In what follows in this section it is assumed that no reference has been cited which requires the priority date to be overcome.

I.   UNTIMELY CLAIM FOR PRIORITY

If the foreign priority claim in an original application filed under 35 U.S.C.111(a)  (other than a design application) on or after November 29, 2000 is submitted after the time period set in 37 CFR 1.55(a)(1)(i)  and without a petition under 37 CFR 1.55(c), the examiner may use form paragraph 2.21.01 to notify applicant that the foreign priority claim will not be entered.

II.   NO IRREGULARITIES AND PRIORITY CLAIM TIMELY

When the papers under 35 U.S.C. 119(a) -(d) are received within the time period set forth in 37 CFR 1.55(a)(1), 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. For Image File Wrapper (IFW) processing, see the IFW Manual.

¶ 2.26    Claimed Foreign Priority - Papers Filed

Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a) -(d), which papers have been placed of record in the file.

Where the priority papers have been filed in another application, use form paragraph 2.27.

¶ 2.27    Acknowledge Foreign Priority Paper in Parent

Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119  (a)-(d). The certified copy has been filed in parent Application No. [1], filed on [2].

Examiner Note:

1. For problems with foreign priority, see form paragraphs 2.18 to 2.24.

2. In bracket 1, insert series code and serial no. of parent.

The examiner will enter the information specified in MPEP § 202.03 on the face of the file wrapper or on the PALM bib-data sheet, as appropriate.

III.   PAPERS INCONSISTENT WITH A TIMELY PRIORITY CLAIM

If the certified copy filed does not correspond to the foreign application identified in the application oath or declaration or an application data sheet, or if the application oath or declaration or an application data sheet does not refer to the particular foreign application, the applicant has not complied with the requirements of the rule relating to the oath or declaration. In such instances, the Office action, after acknowledging receipt of the papers, should require the applicant to explain the inconsistency and to file a new oath or declaration or an application data sheet stating correctly the facts concerning foreign applications required by 37 CFR 1.63  by using form paragraph 2.21.

¶ 2.21    Oath, Declaration, or Application Data Sheet Does Not Contain Reference to Foreign Filing

Receipt is acknowledged of papers filed under 35 U.S.C. 119(a) -(d) based on an application filed in [1] on [2]. Applicant has not complied with the requirements of 37 CFR 1.63(c), since the oath, declaration, or application data sheet does not acknowledge the filing of any foreign application. A new oath, declaration, or application data sheet is required in the body of which the present application should be identified by application number and filing date.

Other situations requiring some action by the examiner are exemplified by other form paragraphs.

IV.   NO CLAIM FOR PRIORITY

Where applicant has filed a certified copy but has not made a claim for priority, use form paragraph 2.22.

¶ 2.22    Certified Copy Filed, But No Claim Made

Receipt is acknowledged of a certified copy of the [1] application referred to in the oath or declaration or in an application data sheet. If this copy is being filed to obtain the benefits of the foreign filing date under 35 U.S.C. 119(a)-(d),  applicant should also file a claim for such priority as required by 35 U.S.C. 119(b). If the application being examined is an original application filed under 35 U.S.C. 111(a)  (other than a design application) on or after November 29, 2000, the claim for priority must be presented 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(a)(1)(i). If the application being examined has entered the national stage from an international application filed on or after November 29, 2000, after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and Regulations of the PCT. See 37 CFR 1.55(a)(1)(ii). Any claim for priority under 35 U.S.C. 119(a)-(d) or (f)  or 365(a) or (b)  not presented within the time period set forth in 37 CFR 1.55(a)(1)  is considered to have been waived. If a claim for foreign priority is presented after the time period set forth in 37 CFR 1.55(a)(1), the claim may be accepted if the claim properly identifies the prior foreign application and is accompanied by a grantable petition to accept an unintentionally delayed claim for priority. See 37 CFR 1.55(c).

Examiner Note:

In bracket 1, insert the application number of the foreign application.

NOTE: Where the applicant’s accompanying letter states that the certified copy is filed for priority purposes or for the convention date, it is accepted as a claim for priority.

V.   FOREIGN APPLICATIONS ALL FILED MORE THAN A YEAR BEFORE EARLIEST EFFECTIVE U.S. FILING

Where the earlier foreign application was filed more than 12 months prior to the U.S. application, use form paragraph 2.23.

¶ 2.23    Foreign Filing More Than 12 Months Earlier

Acknowledgment is made of applicant"s claim for priority under 35 U.S.C. 119(a) -(d) based upon an application filed in [1] on [2]. A claim for priority under 35 U.S.C. 119(a) -(d) cannot be based on said application, since the United States application was filed more than twelve months thereafter.

Examiner Note:

1. In bracket 1, insert the country name.

2. In bracket 2, insert the filing date of the foreign application.

VI.   SOME FOREIGN APPLICATIONS FILED MORE THAN A YEAR BEFORE U.S. FILING

For example, where a British provisional specification was filed more than a year before a U.S. application, but the British complete application was filed within the year, and certified copies of both were submitted, language similar to the following should be used: "Receipt is acknowledged of papers filed on September 18, 1979, purporting to comply with the requirements of 35 U.S.C. 119(a) -(d). It is not seen how the claim for priority can be based on the British specification filed January 23, 1978, because the instant application was filed more than one year thereafter. However, the printed heading of the patent will note the claimed priority date based on the complete specification; i.e., November 1, 1978, for such subject matter as was not disclosed in the provisional specification."

VII.   CERTIFIED COPY NOT THE FIRST FOREIGN APPLICATION

Form paragraph 2.24 may be used to notify applicant that the date for which foreign priority is claimed is not the date of the first filed foreign application acknowledged in the oath or declaration.

¶ 2.24    Claimed Foreign Priority Date Not the Earliest Date

Receipt is acknowledged of papers filed on [1] purporting to comply with the requirements of 35 U.S.C. 119(a) -(d) and they have been placed of record in the file. Attention is directed to the fact that the date for which foreign priority is claimed is not the date of the first filed foreign application acknowledged in the oath or declaration.

VIII.   NO CERTIFIED COPY

Where priority is claimed but no certified copy of the foreign application has been filed, use form paragraph 2.25.

¶ 2.25    Claimed Foreign Priority, No Papers Filed

Acknowledgment is made of applicant"s claim for foreign priority based on an application filed in [1] on [2]. It is noted, however, that applicant has not filed a certified copy of the [3] application as required by 35 U.S.C. 119(b).

Examiner Note:

1. In bracket 1, insert the country name.

2. In bracket 2, insert the filing date of the foreign application.

3. In bracket 3, insert the application number of the foreign application.

Any unusual situation may be referred to the Technology Center (TC) Director.

IX.   APPLICATION IN ISSUE

When priority papers for applications which have been sent to the Publishing Division are received, the priority papers should be sent to the Publishing Division. For Image File Wrapper (IFW) processing, see the IFW Manual.

When the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the priority claim or certified copy must be accompanied by a processing fee set forth in 37 CFR 1.17(i). The priority claim or certified copy will be placed in the file record but there will be no review of the papers and the patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255  and 37 CFR 1.323  can be filed to have the priority claim or certified copy considered after publication of the patent. In addition, for original applications filed under 35 U.S.C.111(a)  (other than design applications) on or after November 29, 2000, a grantable petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55 (c) must be filed with the certificate of correction.

X.   RETURN OF PAPERS

For Image File Wrapper (IFW) processing, see the IFW Manual. It is sometimes necessary for the examiner to return papers filed under 35 U.S.C. 119(a) -(d) either upon request of the applicant, for example, to obtain a translation of the certified copy of the foreign application, or because they fail to meet a basic requirement of the statute, such as where all foreign applications were filed more than a year prior to the U.S. filing date.

When the papers have not been entered into the application file history, it is not necessary to secure approval of the Director of the United States Patent and Trademark Office for their return but they should be sent to the TC Director for cancellation of the Office stamps. Where the papers have been entered into the application file history, a request for permission to return the papers should be addressed to the Director of the United States Patent and Trademark Office and forwarded to the TC Director for approval. Where the return is approved, the written approval should be entered into the application file history. Any questions relating to the return of papers filed under 35 U.S.C. 119(a) -(d) should be directed to the Office of the Commissioner for Patents.

XI.   NOTATION IN FILE HISTORY RE-GARDING FOREIGN PRIORITY AP-PLICATION

For Image File Wrapper (IFW) processing, see the IFW Manual. Where foreign applications are listed on the 37 CFR 1.63  oath or declaration or application data sheet, the examiner should check that such foreign applications are properly listed on the PALM bib-data sheet, correcting errors of typography or format as necessary, and initialing the "verified" line when the information on the PALM bib-data sheet matches the oath or declaration or application data sheet. See MPEP § 202.03. 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. If a foreign application listed on the oath or declaration, or application data sheet is not listed on the PALM bib-data sheet, the examiner should provide the information regarding the foreign application number, the country, and the filing date on the PALM bib-data sheet and forward the marked-up PALM bib-data sheet to the Legal Instrument Examiner for correction in the Office computer systems. Applications listed on the PALM bib-data sheet but filed in countries not qualifying for benefits under 35 U.S.C. 119(a) -(d) should be lined through in ink. A listing of countries qualifying for benefits under 35 U.S.C. 119(a) -(d) appears at MPEP § 201.13.

201.14(d)   Proper Identification of Priority Application

In order to help overcome problems in determining the proper identification of priority applications for patent documentation and printing purposes, the following tables have been prepared which set out for various countries the forms of acceptable presentation of application numbers.

The tables should enable applicants, examiners and others to extract from the various formats the minimum required data which comprises a proper citation.

Proper identification of priority applications is essential to establishing accurate and complete relationships among various patent documents which reflect the same invention. Knowledge of these relationships is essential to search file management, technology documentation and various other purposes.

The tables show the forms of presentation of application numbers as used in the records of the source or originating patent office. They also show, under the heading "Minimum Significant Part of the Number," the simplified form of presentation which should be used in United States Patent and Trademark Office records.

Note particularly that in the simplified format that:

    • (A) Alpha symbols preceding numerals are eliminated in all cases except Hungary.
    • (B) A decimal character and numerical subset as part of a number is eliminated in all cases except France.
    • (C) Use of the dash (—) is reduced, but is still an essential element of application numbers, in the case of Czechoslovakia and Japan.
MINIMUM SIGNIFICANT PART OF AN APPLICATION NUMBER PROVIDING UNIQUE IDENTIFICATION OF AN APPLICATION 
Country # Example of application number at source Minimum significant part of the number Remarks
Austria [AT]  A 12116/69  12116/69  The letter A is common to all patent applications. 
Czechoslovakia [CS]  PV3628-72  3628-72  PV is an abbreviation meaning "application of invention." 
Denmark [DK]  68/2986  68/2986   
Egypt [EG]  487-1968  487-1968   
Country #  Example of application number at source  Minimum significant part of the number  Remarks 
Finland [FI]  3032/69 (old numbering system) 752032 (new numbering system)  3032/69 752032  New numbering system introduced on January 1, 1975. First two digits indicate year of application. 
France [FR]  69.38066 7319346  68.38066 7319346  Deletion of the intermediary full stop from this number onwards. 
Note: All French applications are numbered in a single annual series, e.g., demande de brevet, demande de certificate d’addition (first addition, second addition, etc.)  Annual series of numbers is used for all applications of patent documents. The number allotted to an application at its filing (national registration number) is also the number of the granted patent. 
Germany, Fed. Rep. of [DE]  P 1940738//6-24 G6947580.5  1940738 D6947580  P=Patent. The first two digits of the number represent the last two digits of the year of application less 50 (e.g., 1969 less 50=19; 1973 less 50=23). The first digit after the slash is an error control digit. The two digits following the dash indicate the examining division. G= Gebrauschsmuster. The first two digits of the number represent the last two digits of the year of application. The difference in numbering scheme of the first two digits affords unique identification of this type of application. However, see note below (D). The digit after the period is for error control.  
Ireland  1152/69  1152/69   
Italy [IT]  28039-A/70  28039/70  Application numbers are not presented on published patent documents or given in an official gazette. An exclusive block of application numbers is given annually to each of 93 provincial bureaus where patent applications may be filed. In 1973, 90,000 numbers were allotted, wherein an estimated total of 30,000 applications were expected to be filed. While, as a consequence, gaps will exist in the ultimately used numbers, each application has a unique number. For this purpose, neither the dash nor the letter identifying the receiving bureau, which follows the application number, is needed.  
Japan [JP]  46-69807 46-81861  46-69807 D46-81861  The two digits before the dash indicate the year (1925 or 1988) of the Emperor’s reign in which the application was filed (46=1971). Patent and utility model applications are numbered in separate series. 
Netherlands [NL]  7015038  7015038  First two digits indicate year of application. 
Norway [NO]  1748/70 (old numbering system) 74001 (new numbering system)  1748/70 74001  New numbering system introduced on January 1, 1974. First two digits indicate year of application. 
South Africa [ZA]  70/4865  70/4865   
Sweden [SE]  16414/70 7300001-0 (new system)  16414/70 7300001  The new numbering system was introduced January 1, 1973. First two digits indicate year of application. The digit after the dash is used for computer control. 
Switzerland [CH]  15978/70  15978/70   
United Kingdom [GB]  41352/70  41352/70   
Yugoslavia [YU]  P1135/66  1135/66   
Zambia [ZM]  142/70  142/70   
Argentina [AR]  231790  231790   
Australia [AU]  59195/69  59195/69  Long series spread over several years. New series started in 1970. 
Belgium [BE]  96469  96469  Application numbers are not presented on published patent documents or given in an official gazette. A series of parallel numbers is provided to each of 10 offices which, respectively, may receive applications (control office + 9 provincial bureaus) and assign application numbers. Series was started in 1958. Since an application number does not uniquely identify a BE document, the patent number is often cited as the "priority application number." 
Brazil [BR]  222986  222986   
Bulgaria [BG]  11572  11572   
Canada [CA]  103828  103828    
Colombia [CO]  126050  126050   
Country # Example of application number at source Minimum significant part of the number Remarks
Brazil [BR]  222986  222986   
Bulgaria [BG]  11572  11572   
Canada [CA]  103828  103828   
Colombia [CO]  126050  126050   
Cuba [CU]  33384  33384   
German (Dem. Rep.) [DD]  AP84c/137355 WP135b/147203  137355 147203  AP=Ausschliessungspatent; WP=Wirtschaftspatent. The other symbols before the slash are classification symbols. A single numbering series covers both AP and WP applications. 
Greece [GR]  44114  44114   
Hungary [HU]  OE 107  OE 107  The letters preceding the number are essential for identifying the application. They are the first letter and the first following vowel of the applicant's name. There is a separate numbering sequence for each pair of letters. 
Israel [IL]  35691  35691   
Luxembourg [LU]  60093  60093   
Mexico [MX]  123723  123723   
Monaco [MC]  908  908   
New Zealand [NZ]  161732  161732   
OAPI [OA]  52118  52118   
Philippines [PH]  11929  11929   
Poland [PO]  P144826 44987  144826 D44987   
Portugal [PT]  P52-555-5607  52555 D5607   
Romania [RO]  65211  65211   
Soviet Union  1397205-15  1397205  The numbers following the slash denote the examination division and a processing division. 
United States [US]  889877  889877  The highest number assigned in the series of numbers started in January 1960. New series started in January 1970, January 1979, D January 1987, January 1993, and January 1998. 
# ICIREPAT Country Code is indicated in brackets, e.g., [AR]. 
D In order to distinguish utility model applications from patent applications, it is necessary to identify them as to type of application in citations or references. This may be done by using the name of the application type in conjunction with the number or by using the symbol "U" in brackets or other enclosure following the number.