215.03 Time For Filing Certified Copy – Application Filed Before March 16, 2013 [R-11.2013]

[Editor Note: See MPEP § 215.02 for information regarding the time for filing a certified copy in an application on or after March 16, 2013.]

Pre-March 16, 2013 37 C.F.R. 1.55 Claim for foreign priority.

(a) An applicant filing 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.
- (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 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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35 U.S.C. 119(b)(3) authorizes the Office to require the applicant to furnish a certified copy of priority papers. Pursuant to 37 CFR 1.55, applicants are required to submit the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 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 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. See pre-March 16, 2013 37 CFR 1.55(a)(2). Certification by the authority empowered under a bilateral or multilateral treaty to receive applications which give rise to a right of priority under Article 4A(2) of the Paris Convention will be deemed to satisfy the certification requirement. See MPEP § 214.01 for the time period for claiming priority to a foreign application.

If a claim for foreign priority has been made, the latest time at which the certified copy of the foreign application 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 pre-March 16, 2013 37 CFR 1.55(a)(3) 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), a grantable petition to accept an unintentionally delayed claim for priority under pre-March 16, 2013 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 pre-March 16, 2013 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 applicants should ensure that there is sufficient time to remedy any defects. For applications filed prior to September 16, 2012, where the priority claim is presented in the oath or declaration, 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 important to note that for applications filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet (37 CFR 1.76(b)(6)).

It is 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.