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201.14 Right of Priority, Formal Requirements [R-2] - 200 Types, Cross-Noting, and Status of Application
201.14 Right of Priority, Formal Requirements [R-2]
Under the statute ( 35 U.S.C. 119(b)), an applicant who wishes to secure the right of priority must comply with certain formal requirements within a time specified. If these requirements are not complied with the right of priority is lost and cannot thereafter be asserted.
For nonprovisional applications filed prior to November 29, 2000, the requirements of the statute are (a) that the applicant must file a claim for the right and (b) he or she must also file a certified copy of the original foreign application; these papers must be filed within a certain time limit. 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 the parent application, the claim for priority may be made in a continued prosecution application (CPA) filed under 37 CFR 1.53(d) or FWC application filed under former 37 CFR 1.62, provided the parent application has been filed within 12 months from the date of the earliest foreign filing. If the required papers are not filed within the time limit set the right of priority is lost. A reissue was granted in Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where the only ground urged was failure to file a certified copy of the original foreign application to obtain the right of foreign priority under 35 U.S.C. 119 before the patent was granted.
It should be particularly noted that these papers must be filed in all cases even though they may not be necessary during the pendency of the application to overcome the date of any reference. The statute also gives the *>Director< authority to require a translation of the foreign documents if not in the English language and such other information as the *>Director< may deem necessary.
For original applications filed under 35 U.S.C.111(a) (other than a design application ) on or after November 29, 2000, 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. These papers must be filed within a certain time limit. The time limit specified in 35 U.S.C.119(b)(1) is that the claim for priority and the required identification information must be filed at such time during the pendency of the application as set by the *>Director<. The *>Director< has by rule set this time limit 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. See 37 CFR 1.55(a)(1)(i). This time period is not extendable. 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. See 37 CFR 1.55(a)(1)(ii). Claims for foreign priority not presented within the time period specified in 37 CFR 1.55(a)(1)(i) are considered to have been waived. If a claim for priority under 35 U.S.C.119(a) - (d) or (f), or 365(a) is presented after the time period set in 37 CFR 1.55(a)(1)(i), the claim may be accepted if it includes the required identification information and is accompanied by a grantable petition to accept the unintentionally delayed claim for priority. See 37 CFR 1.55(c). In addition, 35 U.S.C. 119(b)(3) gives the *>Director< authority to require a certified copy of the foreign application and an English translation if the foreign application is not in the English language and such other information as the *>Director< may deem necessary. The *>Director< has by rule, 37 CFR 1.55(a)(2), required a certified copy of the foreign application to be submitted before the patent is granted. If the certified copy of the foreign application is submitted after the payment of the issue fee, it must be accompanied by the processing fee set forth in 37 CFR 1.17(i). See MPEP § 201.14(a).
Unless provided in an application data sheet, 37 CFR 1.63 requires that 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.
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