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1504.10 Priority Under 35 U.S.C. 119(a)-(d) [R-2] - 1500 Design Patents
1504.10 Priority Under 35 U.S.C. 119(a)-(d) [R-2]
35 U.S.C. 172 Right of priority.
The right of priority provided for by subsections (a) through (d) of section 119 of this title and the time specified in section 102(d) shall be six months in the case of designs. The right of priority provided for by section 119(e) of this title shall not apply to designs.
The provisions of 35 U.S.C. 119(a)-(d) apply to design patent applications. However, in order to obtain the benefit of an earlier foreign filing date, the United States application must be filed within 6 months of the earliest date on which any foreign application for the same design was filed. Design applications may not make a claim for priority of a provisional application under 35 U.S.C. 119(e).
¶ 15.01 Conditions Under 35 U.S.C. 119(a)-(d)
Applicant is advised of conditions as specified in 35 U.S.C. 119(a)-(d). An application for a design patent for an invention filed in this country by any person who has, or whose legal representatives have previously filed an application for a design patent, or equivalent protection for the same design in a foreign country which offers similar privileges in the case of applications filed in the United States or in a WTO member country, or to citizens of the United States, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within six (6) months from the earliest date on which such foreign application was filed.
>¶ 15.01.01 Conditions Under 35 U.S.C. 172 Not Met
The claim for priority under 35 U.S.C. 119(a)-(d) to the [1] application is acknowledged, however, the claim for priority cannot be based on such application since it was filed more than six (6) months before the filing of the application in the United States. 35 U.S.C 172.
Examiner Note
1. In bracket, insert the name of the foreign country.
<**>¶ 15.03 Untimely Priority Papers
Receipt is acknowledged of the filing on [1] of a certified copy of the [2] application referred to in the oath or declaration. A claim for priority cannot be based on said application, since the United States application was filed more than six (6) months thereafter ( 35 U.S.C. 172).
<The United States will recognize claims for the right of priority under 35 U.S.C. 119(a)-(d) based on applications filed under such bilateral or multilateral treaties as the "Hague Agreement Concerning the International Deposit of Industrial Designs>,<" ** "Uniform Benelux Act on Designs and Models" >and "European Community Design."< In filing a claim for priority of a foreign application previously filed under such a treaty, certain information must be supplied to the United States Patent and Trademark Office. In addition to the application number and the date of filing of the foreign application, the following information is required:
(A) the name of the treaty under which the application was filed,
(B) the name of at least one country other than the United States in which the application has the effect of, or is equivalent to, a regular national filing and
(C) the name and location of the national or inter-governmental authority which received the application.
**>¶ 15.02 Right of Priority Under 35 U.S.C. 119(b)
No application for design patent shall be entitled to the right of priority under 35 U.S.C. 119(b) unless a claim therefor and a certified copy of the original foreign application, specification and drawings upon which it is based are filed in the United States Patent and Trademark Office before the issue fee is paid, or at such time during the pendency of the application as required by the Director not earlier than six (6) months after the filing of the application in this country. Such certification shall be made by the Patent Office, or other proper authority of the foreign country in which filed, and show the date of the application and of the filing of the specification and other papers. The Director may require a translation of the papers filed if not in the English language, and such other information as deemed necessary.
<The notation requirement on design patent application file wrappers when foreign priority is claimed is set forth in MPEP § 202.03.
**>¶ 15.04 Priority Under Bilateral or Multilateral Treaties
The United States will recognize claims for the right of priority under 35 U.S.C. 119(a)-(d) based on applications filed under such bilateral or multilateral treaties as the Hague Agreement Concerning the International Deposit of Industrial Designs, the Benelux Designs Convention and European Community Design. In filing a claim for priority of a foreign application previously filed under such a treaty, certain information must be supplied to the United States Patent and Trademark Office. In addition to the application number and the date of filing of the application, the following information is requested: (1) the name of the treaty under which the application was filed; (2) the name of at least one country other than the United States in which the application has the effect of, or is equivalent to, a regular national filing; and (3) the name and location of the national or international governmental authority which received such application.
¶ 15.52 Examination of Priority Papers
While the U.S. Patent and Trademark Office does not normally examine the priority papers to determine whether the applicant is in fact entitled to the right of priority, in the case of a Design Patent application, the priority papers will normally be inspected to determine that the foreign application is in fact for the same invention as the application in the United States ( 35 U.S.C. 119). Inspection of the papers herein indicates that the prior foreign application was not for the same invention as claimed in this application. Accordingly, the priority claim is improper.
<Attention is also directed to the paragraphs dealing with the requirements where an actual model was originally filed in Germany ( MPEP § 201.14(b)).
See MPEP Chapter 200 and 37 CFR 1.55 for further discussion of the practice and procedure under 35 U.S.C. 119(a)-(d).
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