214 Formal Requirements of Claim for Foreign Priority
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Section Frequency Chart
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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.
Where a claim for priority under 35 U.S.C. 119(b) has not been made in a 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 (6 months for design applications).
214.01 Time for Filing Priority Claim
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(d) Time for filing priority claim—
(1) Application 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 in an original application filed under 35 U.S.C. 111(a), except as provided in paragraph (e) of this section. The claim for priority must be presented in an application data sheet (§ 1.76(b)(6)) and must identify the foreign application to 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 if the later-filed application is:
(i) An application for a design patent; or
(ii) An application filed under 35 U.S.C. 111(a) before November 29, 2000.(2) Application under 35 U.S.C. 371. The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371, except as provided in paragraph (e) of this section.
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For original applications filed under 35 U.S.C. 111(a), 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.
For applications other than design applications, the Director has by rule set this time period 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.
- This time period is not extendable.
In an application that entered the national stage from an international application, 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.
For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, 37 CFR 1.55(d)(1) requires the claim for priority to be presented in an application data sheet.
For applications filed under 35 U.S.C. 111(a) prior to September 16, 2012, unless provided in an application data sheet, 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
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(e) Delayed priority claim. 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), 365(a) or (b), or 386(a) or (b) not presented in the manner required by paragraph (d) or (m) of this section during pendency and within the time period provided by paragraph (d) of this section (if applicable) is considered to have been waived. If a claim for priority is considered to have been waived under this section, the claim may be accepted if the priority claim was unintentionally delayed. A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) must be accompanied by:
(1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to 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, unless previously submitted or an exception in paragraph (h), (i), or (j) of this section applies;
(3) The petition fee as set forth in § 1.17(m); and
(4) A statement that the entire delay between the date the priority claim was due under 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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Where a priority claim under 37 CFR 1.55(g) was not timely made, 37 CFR 1.55(g) allows the priority claim and the certified copy required under 37 CFR 1.55 to be filed pursuant to a petition under 37 CFR 1.55(e) even if the application is not pending (e.g., a patented application).
- Thus, a petition under 37 CFR 1.55(e) may be filed along with request for a certificate of correction after patent grant.
If a claim for foreign priority is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it is accompanied by a grantable petition to accept the unintentionally delayed claim for priority.
- In addition, a petition to accept an unintentionally delayed claim for foreign priority is necessary to correct any error in a foreign priority claim if the correction is sought after expiration of the time period set forth in 37 CFR 1.55.
In all applications, a grantable petition to accept an unintentionally delayed claim for priority must include:
- (1) the claim for priority to the prior foreign application, unless previously submitted;
- (2) a certified copy of the foreign application, unless previously submitted or an exception in 37 CFR 1.55(h), (i), or (j) applies;
- (3) the petition fee; and
- (4) a statement that the entire delay between the date the claim was due and the date the claim was filed was unintentional.
Priority claims and certified copies of foreign applications filed after payment of the issue fee and before the patent grant will be placed in the application file but will not be reviewed.
Before May 13, 2015, no procedures were established for accepting an unintentionally delayed priority claim in a design application.
Effective May 13, 2015, 37 CFR 1.55(e) provides for the filing of a petition for acceptance of an unintentionally delayed priority claim in a design application where the foreign priority claim was not submitted during the pendency of the design application.
214.03 Office Acknowledgement of Priority Claims
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