The Priority Date, Priority Claim, and Priority Papers for a U.S. National Stage Application

A U.S. national stage application may be entitled to: (A) a

right of priority under

35 U.S.C. 119(a)

and

365(b)

based on a prior foreign application or

international application designating at least one country other than the United

States; and (B) the benefit of an earlier filed U.S. national application or

international application designating the United States pursuant to

35 U.S.C.

119(e)

or

35 U.S.C. 120

and

365(c)

.

I.

RIGHT OF PRIORITY UNDER 35 U.S.C. 119(a) and 365(b)

Pursuant to

35 U.S.C. 365(b)

a U.S.

national stage application shall be entitled to a right of priority based on

a prior foreign application or international application designating at

least one country other than the United States in accordance with the

conditions and requirements of

35 U.S.C. 119(a)

and

the treaty and the PCT regulations. See in particular

PCT Article

8

and

PCT Rules 4.10

and

26bis

. To obtain priority in

the U.S. national stage application to such applications, the priority must

have been timely claimed in the international stage of the international

application. See

37 CFR 1.55(d)(2)

. In

the event that a claim of foreign priority is not timely made in the

international stage, the priority claim may be made in the U.S. national

stage application upon petition under

37 CFR

1.55(e)

, if the entire delay between the date the

priority claim was due under

PCT Rule

26bis

and the date the claim is

filed is unintentional.

Note that in U.S. national stage applications

it is permissible, but not required, to present the claim for priority in an

application data sheet. A proper claim for priority will be acknowledged

(subject to the paragraph below) and the national stage application file

will then be checked to see if the file contains a copy of the certified

copy of the priority document submitted to the International Bureau. See

subsection II below for further information concerning the certified copy of

the priority document

ity in an

application data sheet. A proper claim for priority will be acknowledged

(subject to the paragraph below) and the national stage application file

will then be checked to see if the file contains a copy of the certified

copy of the priority document submitted to the International Bureau. See

subsection II below for further information concerning the certified copy of

the priority document.

International applications filed on or after April 1, 2007

are subject to amended PCT Rules permitting restoration of a right of

priority. See

MPEP § 1828.01

. Consequently, international

applications filed on or after April 1, 2007 may claim priority to a foreign

application filed more than 12 months before the filing date of the

international application. Such a priority claim will be effective in the

U.S. national stage if the right of priority has been restored under

PCT

Rule 26bis.3

during the

international stage. See

37 CFR 1.55(c)

.

Furthermore, the right of priority may be restored in a U.S.

national stage application upon petition under

37 CFR

1.55(c)

. Restoration of the right of priority upon

petition under

37 CFR 1.55(c)

is not

limited to applications having an international filing date of April 1, 2007

or later. It should be noted that where a petition under

37 CFR

1.55(c)

is necessary to restore the right of priority

in a U.S. national stage application, a petition under

37 CFR

1.55(e)

to add a delayed priority claim will also be

required where the priority claim was not properly made within the time

limit set forth in the PCT and the Regulations under the PCT.

37 CFR 1.55(d)(2)

.

For a comparison with

35 U.S.C. 119(a) - (d)

priority claims in a national application filed under

35 U.S.C.

111(a)

, see

MPEP § 1895.01

.

II

national stage application, a petition under

37 CFR

1.55(e)

to add a delayed priority claim will also be

required where the priority claim was not properly made within the time

limit set forth in the PCT and the Regulations under the PCT.

37 CFR 1.55(d)(2)

.

For a comparison with

35 U.S.C. 119(a) - (d)

priority claims in a national application filed under

35 U.S.C.

111(a)

, see

MPEP § 1895.01

.

II.

THE CERTIFIED COPY

The requirement in

PCT Rule 17

for a

certified copy of the foreign priority application is normally fulfilled by

applicant providing a certified copy to the receiving Office or to the

International Bureau, or by applicant requesting the receiving Office to

prepare and transmit the priority document to the International Bureau if

the receiving Office issued the priority document, or by applicant

requesting the International Bureau to obtain the priority document from a

digital library. Pursuant to

PCT Rule 17.1(a)

,

(b)

or

(b-bis)

, applicant must submit

the certified copy, request the receiving Office to prepare and transmit the

certified copy or request the International Bureau to obtain the priority

document from a digital library, within 16 months from the priority date.

Where applicant has complied with

PCT Rule 17

, the

International Bureau will forward a copy of the certified priority document

to each Designated Office that has requested such document with an

indication that the priority document was submitted in compliance with the

rule and the date the document was received by the International Bureau.

This indication may be in the form of either a cover sheet attached to the

copy of the priority document or a WIPO stamp on the face of the certified

copy. The U.S. Patent and Trademark Office, as a Designated Office, will

normally request the International Bureau to furnish the copy of the

certified priority document upon receipt of applicant’s submission under

35

U.S.C. 371

to enter the U.S. national phase. The copy

from the International Bureau is placed in the U.S. national stage file

ty document or a WIPO stamp on the face of the certified

copy. The U.S. Patent and Trademark Office, as a Designated Office, will

normally request the International Bureau to furnish the copy of the

certified priority document upon receipt of applicant’s submission under

35

U.S.C. 371

to enter the U.S. national phase. The copy

from the International Bureau is placed in the U.S. national stage file. The

copy of the priority document received from the International Bureau with

either of the indications above is acceptable to establish that applicant

has filed a certified copy of the priority document in compliance with

37 CFR 1.55(f)

. The

examiner should acknowledge in the next Office action that the copy of the

certified copy of the foreign priority document has been received in the

national stage application from the International Bureau.

On the following pages, note the examples of acceptable

indications in the form of:

(A) a cover sheet indicating receipt by the

International Bureau on 12 April 2018 (12.04.2018) and compliance

with

PCT Rule

17.1(a)

,

(b)

or

(b-bis)

in the “Remark”

section; and

(B) the stamp (box) in the upper right hand section

indicating receipt by the International Bureau (WIPO) on 30 December

2002 and the stamped indication "PRIORITY DOCUMENT SUBMITTED OR

TRANSMITTED IN COMPLIANCE WITH RULE 17.1(a) OR (b)."

If the International Bureau is unable to forward a copy of

the certified priority document to the U.S. Patent and Trademark Office,

then applicant must provide a certified copy of the priority document during

the national stage, unless the requirements of

37 CFR

1.55(h)

or

37 CFR

1.55(i)

have been met. For international applications

in which the U.S. national stage commenced under

35 U.S.C.

371

on or after December 18, 2013, applicant must

submit the certified copy within the later of four months from the date of

entry into the U.S. national stage as set forth in

37 CFR

1.491

or sixteen months from the filing date of the

prior-filed foreign application. See

37 CFR

1.55(f)(2)

5(i)

have been met. For international applications

in which the U.S. national stage commenced under

35 U.S.C.

371

on or after December 18, 2013, applicant must

submit the certified copy within the later of four months from the date of

entry into the U.S. national stage as set forth in

37 CFR

1.491

or sixteen months from the filing date of the

prior-filed foreign application. See

37 CFR

1.55(f)(2)

. A delay in filing the certified copy

under

37 CFR 1.55(f)(2)

may

be excused upon petition under

37 CFR 1.55(f)(3)

. The

International Bureau may not forward a copy of the priority document because

the certified priority document was not furnished in compliance with

PCT

Rule 17.1(a)

,

(b)

or

(b-bis)

or applicant requested

examination to begin pursuant to

35 U.S.C. 371(f)

prior

to availability of the priority document from the International Bureau. If

the priority claim was not in accordance with

PCT Rule

4.10

or the priority document was not provided in

accordance with

PCT Rule 17.1(a)

,

(b)

or

(b-bis)

, the copy of the priority

document will not have been provided by the International Bureau. If a copy

of the foreign priority document is not in the national stage application

file but applicant asserts that a certified copy of the priority document

was timely furnished under

PCT Rule 17

in the

international phase, then the examiner should consult with a Quality

Assurance Specialist in his or her Technology Center or a PCT Special

Program Examiner.

III.

BENEFIT CLAIM UNDER 35 U.S.C. 119(e), OR 120 AND 365(c)

A national stage application may include a benefit claim

under

35

U.S.C. 119(e)

, or

120

and

365(c)

to a prior U.S.

national application or under

35 U.S.C. 120

and

365(c)

to a prior international application

designating the U.S. The conditions for according benefit under

35

U.S.C. 120

are as described in

MPEP

§§ 201.07

,

201.08

, and

211

et seq.

and are similar regardless of whether the U.S.

national application is a national stage application submitted under

35 U.S.C

119(e)

, or

120

and

365(c)

to a prior U.S.

national application or under

35 U.S.C. 120

and

365(c)

to a prior international application

designating the U.S. The conditions for according benefit under

35

U.S.C. 120

are as described in

MPEP

§§ 201.07

,

201.08

, and

211

et seq.

and are similar regardless of whether the U.S.

national application is a national stage application submitted under

35 U.S.C. 371

or a national application filed under

35 U.S.C. 111(a)

.

The conditions for according benefit of a provisional

application under

35  U.S.C. 119(e)

are

also similar for national stage applications and applications filed under

35

U.S.C. 111(a)

, and the conditions are described in

MPEP § 211.01(a)

.

In order for a national stage application (of international

application “X”) to obtain benefit under

35 U.S.C. 119(e)

of a

prior U.S. provisional application, the national stage application must

comply with the requirements set forth in

37 CFR

1.78(a)

.

37 CFR 1.78(a)(2)

requires that the prior provisional application must be entitled to a filing

date as set forth in

37 CFR 1.53(c)

, and the

basic filing fee set forth in

37 CFR 1.16(d)

must be

paid on the provisional application within the time period set forth in

37

CFR 1.53(g)

. Additionally, the provisional

application must name as an inventor at least one inventor named in the

later filed international application “X” and disclose the named inventor’s

invention claimed in at least one claim of the national stage application in

the manner provided by the first paragraph of

35 U.S.C.

112

. The national stage application must contain a

reference to the provisional application identifying it as a provisional

application, and including the provisional application number (series code

and serial number). If the national stage application has an international

filing date prior to September 16, 2012, then the reference must be in

either an application data sheet (

37 CFR 1.76

) or in the

first sentence(s) of the specification. See

pre-AIA 37 CFR

1.78(a)(5)(iii)

application identifying it as a provisional

application, and including the provisional application number (series code

and serial number). If the national stage application has an international

filing date prior to September 16, 2012, then the reference must be in

either an application data sheet (

37 CFR 1.76

) or in the

first sentence(s) of the specification. See

pre-AIA 37 CFR

1.78(a)(5)(iii)

. If the national stage application

has an international filing date that is on or after September 16, 2012,

then the reference must be in an application data sheet (

37 CFR

1.76

). See

37 CFR 1.78(a)(3)

.

However, the requirement for inclusion of the benefit claim in an

application data sheet will be satisfied in a U.S. national stage

application by the presentation of such benefit claim in the PCT request

form contained in the international application or the presence of such

benefit claim on the front page of the published international application.

See

37 CFR 1.76(g)

. The

required reference to the earlier provisional application must be submitted

within the time period provided by

37 CFR 1.78(a)(4)

. This

time period is not extendable. However, if the entire delay, between the

date the claim was due under

37 CFR 1.78(a)(4)

and

the date the claim was filed, was unintentional, a petition under

37

CFR 1.78(c)

may be filed to accept the delayed claim.

If the provisional application was filed in a language other than English,

an English-language translation of the non-English language provisional

application and a statement that the translation is accurate will be

required. See

MPEP § 211.01(a)

e under

37 CFR 1.78(a)(4)

and

the date the claim was filed, was unintentional, a petition under

37

CFR 1.78(c)

may be filed to accept the delayed claim.

If the provisional application was filed in a language other than English,

an English-language translation of the non-English language provisional

application and a statement that the translation is accurate will be

required. See

MPEP § 211.01(a)

. If the

translation and statement that the translation is accurate were not filed in

the provisional application or in the later-filed national stage application

before November 25, 2005, applicant will be notified and given a period of

time within which to file an English-language translation and a statement

that the translation is accurate in the provisional application, and a reply

in the national stage application that the translation and statement were

filed in the provisional application. Failure to timely reply to such a

notice will result in abandonment of the national stage application. See

37

CFR 1.78(a)(5)

.

Public Law 106-113 amended

35 U.S.C.

119(e)

to eliminate the copendency requirement for a

nonprovisional application claiming benefit of a provisional application.

35

U.S.C. 119(e)(2)

as amended became effective on

November 29, 1999 and applies to provisional applications filed on or after

June 8, 1995. An international application claiming benefit under

35

U.S.C. 365(c)

and

35 U.S.C. 119(e)

to a

prior filed provisional application must be filed within twelve months of

the filing date of the provisional application. The Director may extend the

twelve month statutory period by an additional two months in situations

where the failure to file the international application under

35

U.S.C. 363

was unintentional. See

35 U.S.C.

119(e)

.

International applications filed on or after

April 1, 2007 are subject to amended PCT Rules permitting restoration of a

right of priority. See

MPEP § 1828.01

rovisional application. The Director may extend the

twelve month statutory period by an additional two months in situations

where the failure to file the international application under

35

U.S.C. 363

was unintentional. See

35 U.S.C.

119(e)

.

International applications filed on or after

April 1, 2007 are subject to amended PCT Rules permitting restoration of a

right of priority. See

MPEP § 1828.01

.

Consequently, international applications filed on or after April 1, 2007 may

claim the benefit of a provisional application filed more than 12 months

before the filing date of the international application. Such a benefit

claim will be effective in the U.S. national stage if the benefit of the

provisional application has been restored under

PCT Rule

26bis.3

during the

international stage. See

37 CFR 1.78(b)

.

Furthermore, the benefit of a provisional

application may be restored in a U.S. national stage application upon

petition under

37 CFR 1.78(b)

.

Restoration of the benefit of a provisional application upon petition under

37 CFR 1.78(b)

is not

limited to applications having an international filing date of April 1, 2007

or later. It should be noted that where a petition under

37 CFR

1.78(b)

is necessary to restore the benefit of a

provisional application in a U.S. national stage application, a petition

under

37 CFR 1.78(c)

to add a delayed benefit claim will

also be required, unless the benefit claim was timely made under

37

CFR 1.78(a)(4)

(which includes,

inter

alia

, making the benefit claim during the international

stage).

In order for a national stage application (of international

application “X”) to obtain benefit under

35 U.S.C.

120

and

365(c)

of a prior filed

copending nonprovisional application or prior filed copending international

application designating the United States of America, the national stage

application must comply with the requirements set forth in

37 CFR

1.78(d)

during the international

stage).

In order for a national stage application (of international

application “X”) to obtain benefit under

35 U.S.C.

120

and

365(c)

of a prior filed

copending nonprovisional application or prior filed copending international

application designating the United States of America, the national stage

application must comply with the requirements set forth in

37 CFR

1.78(d)

. The prior nonprovisional application or

international application must name as an inventor at least one inventor

named in the later filed international application “X” and disclose the

named inventor’s invention claimed in at least one claim of the national

stage application in the manner provided by the first paragraph of

35

U.S.C. 112

. The national stage application must

contain a reference to the prior nonprovisional or international application

identifying it by application number (series code and serial number) or

international application number and international filing date and

indicating the relationship of the applications. If the national stage

application has an international filing date prior to September 16, 2012,

then the reference must be in either an application data sheet

(

37 CFR 1.76

) or in the first sentence(s) of the

specification. See

pre-AIA 37 CFR

1.78(a)(2)(iii)

. If national stage application has an

international filing date that is on or after September 16, 2012, then the

reference must be in an application data sheet (

37 CFR

1.76

). See

37 CFR

1.78(d)(2)

. However, the requirement for inclusion of

the benefit claim in an application data sheet will be satisfied in a U.S.

national stage application by the presentation of such benefit claim in the

PCT Request form contained in the international application or the presence

of such benefit claim on the front page of the published international

application. See

37 CFR 1.76(g)

. The

required reference to the earlier filed application must be submitted within

the time period set forth in

37 CFR 1.78(d)(3)

fied in a U.S.

national stage application by the presentation of such benefit claim in the

PCT Request form contained in the international application or the presence

of such benefit claim on the front page of the published international

application. See

37 CFR 1.76(g)

. The

required reference to the earlier filed application must be submitted within

the time period set forth in

37 CFR 1.78(d)(3)

. This

time period is not extendable and failure to timely submit the required

reference to the earlier application will be considered a waiver of any

benefit under

35 U.S.C. 120

,

121

, or

365(c)

to such

prior-filed application. See

37 CFR 1.78(d)(3)

.

However, if the entire delay, between the date the claim was due under

37 CFR 1.78(d)(3)

and

the date the claim was filed, was unintentional, a petition under

37 CFR 1.78(e)

may be

filed to accept the delayed claim.

A prior filed nonprovisional application is copending with

the national stage application if the prior U.S. national application was

pending on the international filing date of the national stage

application.

A prior-filed international application designating the

United States of America is copending with the national stage application if

the prior international application was not abandoned or withdrawn, either

generally or as to the United States, on the international filing date of

the national stage application.

Note: a national stage application submitted under

35

U.S.C. 371

may not claim benefit of the filing date

of the international application of which it is the national stage since its

filing date is the international filing date of the international

application. See also

MPEP § 1893.03(b)

. Stated

differently, since the international application is not an earlier

application (it has the same filing date as the national stage), a benefit

claim under

35 U.S.C. 120

in the

national stage to the international application is inappropriate.

For a comparison with

35 U.S.C.

120

benefit claims in a national application filed

under

35

U.S.C

nternational

application. See also

MPEP § 1893.03(b)

. Stated

differently, since the international application is not an earlier

application (it has the same filing date as the national stage), a benefit

claim under

35 U.S.C. 120

in the

national stage to the international application is inappropriate.

For a comparison with

35 U.S.C.

120

benefit claims in a national application filed

under

35

U.S.C. 111(a)

, see

MPEP §

1895

.