214 Formal Requirements of Claim for Foreign Priority [R-11.2013]
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.
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. As a result of recent changes to the applicable laws and rules, the procedural requirements for claiming priority to an earlier-filed foreign application and submitting a certified copy thereof may vary based on the filing date of the later-filed nonprovisional application. See MPEP § 214.01 for procedural requirements pertaining to filing a claim for priority. See MPEP §§ 215.02-215.03 for timing requirements for submitting a certified copy of the priority application. See MPEP § 213.06 for claiming foreign priority and filing a certified copy in a national stage application. It is noted that implementation of the Patent Law Treaty that becomes effective on December 18, 2013 revises the procedural requirements and the time relating to claims for priority of an earlier filed foreign 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 the certified copy must be filed in all cases even though it 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.
214.01 Time for Filing Priority Claim [R-11.2013]
37 C.F.R. 1.55 Claim for foreign priority.
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- (c) Time for filing priority claim and certified copy of foreign application in an application entering the national stage under 35 U.S.C. 371. In an international application entering the national stage under 35 U.S.C. 371, the claim for priority must be made and a certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT.
- (d) Time for filing priority claim in an application filed under 35 U.S.C. 111(a). In an original application filed under 35 U.S.C. 111(a), the claim for priority must be filed 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. The claim for priority must be presented in an application data sheet (§ 1.76(b)(6) ), and 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. The time period in this paragraph does not apply in a design application.
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Pre-March 16, 2013 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 foreign priority must be presented in an application data sheet (§ 1.76(b)(6)) 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.
- (i) In an original application filed under 35 U.S.C. 111(a), the claim for foreign priority must be presented in an application data sheet (§ 1.76(b)(6)) 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.
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See 37 CFR 1.55(c), pre-March 16, 2013 37 CFR 1.55(a)(1)(ii), and MPEP § 213.06 for the time period for claiming priority in an application entering the national stage. For design applications, a claim for foreign priority may be made up until the time when the patent is granted.
37 CFR 1.55(d) and pre-March 16, 2013 37 CFR 1.55(a)(1) pertain to the time for filing a priority claim in an application filed under 35 U.S.C. 111(a).
For original applications filed under 35 U.S.C. 111(a) (other than a design application), 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(d) and pre-March 16, 2013 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(c) and pre-March 16, 2103 37 CFR 1.55(a)(1)(ii). Claims for foreign priority not presented within the time period specified in 37 CFR 1.55are 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, 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.
For applications filed on or after September 16, 2012, 37 CFR 1.55(d) and pre-March 16, 2013 37 CFR 1.55(a)(1) also require the claim for priority to be presented in an application data sheet. For applications filed prior to September 16, 2012, unless provided in an application data sheet, pre-AIA 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.
214.02 Unintentionally Delayed Priority Claims [R-11.2013]
37 C.F.R. 1.55 Claim for foreign priority.
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- (e) Delayed priority claim in an application filed under 35 U.S.C. 111(a). Unless such claim is accepted in accordance with the provisions of this paragraph, any claim for priority under 35 U.S.C. 119(a) through (d) or (f) or 365(a) in an original application filed under 35 U.S.C. 111(a) not presented in an application data sheet (§ 1.76(b)(6) ) within the time period provided by paragraph (d) of this section is considered to have been waived. If a claim for priority is presented after the time period provided by paragraph (d) of this section, the claim may be accepted if the priority claim was unintentionally delayed. A petition to accept a delayed claim for priority under through (d) or (f) or 365(a) must be accompanied by:
- (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f) or 365(a) in an application data sheet (§ 1.76(b)(6) ), identifying 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, unless previously submitted;
- (2) A certified copy of the foreign application if required by paragraph (f) of this section, unless previously submitted;
- (3) The surcharge set forth in § 1.17(t); and
- (4) A statement that the entire delay between the date the priority claim was due under paragraph (d) of this section and the date the priority claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
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Pre-March 16, 2013 37 C.F.R. 1.55 Claim for foreign priority.
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- (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 in an application data sheet (§ 1.76(b)(6) ) 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.
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If a claim for foreign priority is presented after the time period set in 37 CFR 1.55, the claim may be accepted if the priority claim was unintentionally delayed. In all applications, 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 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.
For applications filed on or after March 16, 2013, 37 CFR 1.55(e) also requires that a petition to accept a delayed claim for priority be accompanied by a certified copy of the foreign application if required by 37 CFR 1.55(f), unless previously submitted. Section 1.55(h)(4) permits applicants to request in a separate document that the Office obtain a copy of the foreign application that was filed in a nonparticipating intellectual property office from a participating intellectual property office that permits the Office to obtain such a copy to be filed with a petition under 37 CFR 1.55(e), and 37 CFR 1.55(i)(1) permits an interim copy to be filed with a petition under 37 CFR 1.55(e).
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.
214.03 Office Acknowledgement of Priority Claims [R-11.2013]
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) is submitted after the time period set in 37 CFR 1.55 and without a petition under 37 CFR 1.55, the examiner may use form paragraph 2.21.01 to notify 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. 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. In addition, if the application was filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet. 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. 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 ). 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 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.
II. NO IRREGULARITIES AND PRIORITY CLAIM TIMELY
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.
¶ 2.26 Claimed Foreign Priority - Certified Copy Filed
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a) -(d), which papers have been placed of record in the file.
Where the foreign priority papers have been filed in a parent application, use form paragraph 2.27.
¶ 2.27 Acknowledge Certified Copy of 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.
III. FOREIGN APPLICATION 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.
IV. 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."
V. APPLICATION IN ISSUE
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 foreign priority claim or certified copy must be accompanied by a processing fee set forth in 37 CFR 1.17(i). The foreign 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 foreign 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), a grantable petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55 must be filed with the certificate of correction.
214.04 Proper Identification of Priority Application in Foreign Priority Claim [R-11.2013]
To ensure an accurate and complete citation of a foreign priority application, applicants should review the list of the various intellectual property offices and the recommended presentation of a foreign application number for each, which can be found in the tables of the online WIPO Handbook on Industrial Property Information and Documentation (http://www.wipo.int/standards/en/ ), Part 7: Examples and Industrial Property Offices Practices (http://www.wipo.int/standards/en/part_07.html ), including Part 7.2.1: Presentation of Application Numbers (http://www.wipo.int/standards/ en/pdf/07-02-01.pdf ).The tables should enable applicants, examiners and others to extract from the various formats the minimum required data which comprises a proper citation. The "Minimum Significant Part of the Number" identified in the tables should be used in United States Patent and Trademark Office records. Proper identification of priority applications is essential to establishing accurate and complete relationships among various patent documents, especially in the context of electronic priority document exchange programs (see MPEP § 215.01(a)).
The tables set forth below include only a partial list of recommended presentations of foreign application numbers. A complete updated list of the recommended presentation of a foreign application number based on the numbering system used by the foreign intellectual property office is maintained by the WIPO and can be found in the online WIPO Handbook on Industrial Property Information and Documentation as explained above.
