213.04 Requirement to File Priority Claim and Certified Copy During Pendency of Application [R-11.2013]
37 C.F.R. 1.55 Claim for foreign priority.
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- (g) Requirement for filing priority claim, certified copy of foreign application, and translation in any application.
- (1) The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application and 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 also 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.
- (2) The Office may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in this section:
- (i) When the application is involved in an interference (see § 41.202 of this title) or derivation (see part 42 of this title) proceeding;
- (ii) When necessary to overcome the date of a reference relied upon by the examiner; or
- (iii) When deemed necessary by the examiner.
- (3) An English language translation of a non-English language foreign application is not required except:
- (i) When the application is involved in an interference (see § 41.202 of this title) or derivation (see part 42 of this title) proceeding;
- (ii) When necessary to overcome the date of a reference relied upon by the examiner; or
- (iii) When specifically required by the examiner.
- (4) If an English language translation of a non-English language foreign application is required, it must be filed together with a statement that the translation of the certified copy is accurate.
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Current 37 CFR 1.55(g) pertains to requirements for filing priority claim, certified copy of foreign application, and translation in any application; these provisions correspond to pre-March 16, 2013 37 CFR 1.55(a)(2)-(a)(4).
37 CFR 1.55(g) and pre-March 16, 2013 37 CFR 1.55(a)(2)-(a)(4) provide requirements for filing a priority claim, certified copy of foreign application, and translation that are applicable in all applications. 37 CFR 1.55(g)(1) and pre-March 16, 2013 37 CFR 1.55(a)(2) specify that 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 in or received by the Office within the pendency of the application and before the patent is granted. These provisions do not in any way supersede the timing requirements elsewhere in 37 CFR 1.55 for filing a claim for priority and the certified copy of the foreign application. 37 CFR 1.55(g)(1) and pre-March 16, 2013 37 CFR 1.55(a)(2) simply indicate that the claim for priority and the certified copy of the foreign application must be filed in or received by the Office within the pendency of the application and before the patent is granted in all situations. For example, if a petition to accept a delayed claim for priority is filed under 37 CFR 1.55, the claim for priority and the certified copy of the foreign application must still be filed within the pendency of the application and 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 also be accompanied by the processing fee set forth in 37 CFR 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 37 CFR 1.323.
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 also be accompanied by the processing fee set forth in 37 CFR 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 37 CFR 1.323.
The Office may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in 37 CFR 1.55:
(1) When the application is involved in an interference (see 37 CFR 41.202) or derivation (see 37 CFR part 42) proceeding; (2) when necessary to overcome the date of a reference relied upon by the examiner; or (3) when deemed necessary by the examiner. An English language translation of a non-English language foreign application is not required except: (1) When the application is involved in an interference (see 37 CFR 41.202) or derivation (see 37 CFR part 42) proceeding; (2) when necessary to overcome the date of a reference relied upon by the examiner; or (3) when specifically required by the examiner. If an English language translation of a non-English language foreign application is required, it must be filed together with a statement that the translation of the certified copy is accurate.