37 CFR 1.55 (2012-09-16 thru 2013-03-15)
Claim for foreign priority
Taken from the Ninth Edition of the MPEP, published in March 2014
Previous Section: §1.55 | Next Section: §1.55 (pre-AIA)
1.55 (2012-09-16 thru 2013-03-15) Claim for foreign priority.
[Editor Note: Applicable to patent applications filed on or after Sept. 16, 2012 and before March 16, 2013*]
-
(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 under35 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 under35 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:
- (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.
-
(i)
An English
language translation of a non-English language
foreign application is not required
except:
- (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.
-
(1)
- (b) An applicant in a nonprovisional application may under certain circumstances claim priority on the basis of one or more applications for an inventor’s certificate in a country granting both inventor’s certificates and patents. To claim the right of priority on the basis of an application for an inventor’s certificate in such a country under 35 U.S.C. 119(d), the applicant when submitting a claim for such right as specified in paragraph (a) of this section, shall include an affidavit or declaration. The affidavit or declaration must include a specific statement that, upon an investigation, he or she is satisfied that to the best of his or her knowledge, the applicant, when filing the application for the inventor’s certificate, had the option to file an application for either a patent or an inventor’s certificate as to the subject matter of the identified claim or claims forming the basis for the claim of priority.
-
(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.
-
(d)
-
(1)
The requirement in
this section for the certified copy of the foreign
application will be considered satisfied
if:
- (i) The applicant files a request, in a separate document, that the Office obtain a copy of the foreign application from a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office (see § 1.14(h)(1));
- (ii) The foreign application is identified in an application data sheet (§ 1.76(b)(6)); and
- (iii) The copy of the foreign application is received by the Office within the period set forth in paragraph (a) of this section. Such a request should be made within the later of four months from the filing date of the application or sixteen months from the filing date of the foreign application.
- (2) If the foreign application was filed at a foreign intellectual property office that is not participating with the Office in a priority document exchange agreement, but a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office, the request under paragraph (d)(1)(i) of this section must identify the participating foreign intellectual property office and the application number of the subsequent application in which a copy of the foreign application was filed.
-
(1)
The requirement in
this section for the certified copy of the foreign
application will be considered satisfied
if:
[para. (b), 47 FR 41275, Sept. 17, 1982, effective Oct. 1 1982; 48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; para. (b), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (a), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (a) revised, 54 FR 9432, March 7, 1989, effective Apr. 17, 1989; para. (a), 54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990; para. (a) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; revised, 60 FR 20195, Apr.25, 1995, effective June 8, 1995; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised and para. (c) added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a) and (c) corrected, 65 FR 66502, Nov. 6, 2000, effective Nov. 29, 2000; paras.(a)(1) and (c) revised, 66 FR 67087, Dec. 28, 2001, effective Dec. 28, 2001; para. (c)(3) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (a)(3) and (a)(4) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (d) added, 72 FR 1664, Jan. 16, 2007, effective Jan. 16, 2007; introductory text of paras. (a)(1)(i) and (c), and para. (d)(1)(ii) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[*The changes to paras. (a)(1)(i), (c), and (d)(1)(ii) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012 and before March 16, 2013. See § 1.55 or § 1.55 (pre-AIA) for the rule otherwise in effect.]