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.