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1828 Priority Claim and Document

MPEP SECTION SUMMARY

An applicant who claims the priority of one or more earlier national, regional or international applications for the same invention must indicate on the Request, at the time of filing, the country in or for which it was filed, the date of filing, and the application number.

The applicant may correct or add a priority claim by a notice submitted to the Receiving Office or the International Bureau (IB) within 16 months from the priority date, or where the priority date is changed, within 16 months from the priority date so changed, whichever period expires first, provided that a notice correcting or adding a priority claim may in any event be submitted until the expiration of 4 months from the international filing date.

Under the PCT procedure, the applicant may file the certified copy of the earlier filed national application together with the international application in the receiving Office for transmittal with the record copy, or alternatively the certified copy may be submitted by the applicant to the IB or the receiving Office not later than 16 months from the priority date or, if the applicant has requested early processing in any designated Office, not later than the time such processing or examination is requested.

Transmission may be delayed or prevented when no inventor common to the priority application is named in the international application. Further, transmission of the priority document will not occur until its national security review is complete.

1828.01 Restoration of the Right of Priority

MPEP SECTION SUMMARY

On April 1, 2007, the regulations to the PCT were amended to allow applicants with applications which were filed on or after that date and which were also filed after the expiration of the 12 month priority period but within two months of the expiration of the priority period, to request that the right of priority be restored, provided that the failure to file the application within the priority period was in spite of due care or unintentional.

37 CFR 1.452 Restoration of right of priority

(a) If the international application has an international filing date which is later than the expiration of the priority period as defined by PCT Rule 2.4 but within two months from the expiration of the priority period, the right of priority in the international application may be restored upon request if the delay in filing the international application within the priority period was unintentional.
(b) A request to restore the right of priority in an international application under paragraph (a) of this section must be filed not later than two months from the expiration of the priority period and must include:

(1) A notice under PCT Rule 26bis.1(a) adding the priority claim, if the priority claim in respect of the earlier application is not contained in the international application;
(2) The petition fee as set forth in § 1.17(m); and
(3) A statement that the delay in filing the international application within the priority period was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

(c) If the applicant makes a request for early publication under PCT Article 21(2)(b), any requirement under paragraph (b) of this section filed after the technical preparations for international publication have been completed by the International Bureau shall be considered as not having been submitted in time.

An international application filed with, or forwarded to, the International Bureau must have a foreign filing license unless:

(1) the invention was not made in the United States; or
(2) a U.S. national application on the invention was filed at least six months prior to the filing of the international application, the U.S. national application is not subject to a secrecy order, and the international application does not contain modifications, amendments, or supplements changing the general nature of the invention in a manner that would require any corresponding United States application to be or have been available for inspection under 35 U.S.C. 181.

1828.02 Continuation or Continuation-in-Part Indication in the Request

MPEP SECTION SUMMARY

To properly identify the parent application, the specific reference must identify the parent application by application number and indicate the relationship to the parent application (i.e., “continuation” or “continuation-in-part”). The specific reference must also indicate the filing date of the parent application if the parent application is an international application.

PCT Rule 4. The Request (Contents)

4.11 Reference to Continuation or Continuation-in-Part, or Parent Application or Grant

(a) If:

(ii) the applicant intends to make an indication under Rule 49bis.1(d) of the wish that the international application be treated, in any designated State, as an application for a continuation or a continuation-in-part of an earlier application; the request shall so indicate and shall indicate the relevant parent application or parent patent or other parent grant.

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