Priority to, or the Benefit of, the Filing Date of a Prior-Filed Application

Under certain conditions and on fulfilling certain

requirements, a later-filed application for patent filed in the United States may claim the

benefit of, or priority to, a prior application filed in the United States (see

35 U.S.C.

119(e)

,

120

,

121

,

365(c)

, and

386(c)

; see also

37 CFR 1.78

) or

in a foreign country (see

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

,

365(a) and (b)

, and

386(a) and

(b)

; see also

37 CFR 1.55

).

As a result of recent changes to the applicable laws and

rules, the procedural requirements and time frames for claiming priority to, or the benefit

of, an earlier-filed application may vary based on the filing date of the later-filed

nonprovisional application.

Note that effective December 18, 2013, the Patent Law

Treaties Implementation Act of 2012 (PLTIA) amended the patent laws to implement the

provisions of the Patent Law Treaty (PLT) in title II; corresponding revisions to title 37

of the Code of Federal Regulations also became effective on December 18, 2013. Notable

changes to the law and rules included the restoration of the right of priority to a foreign

application or the benefit of a provisional application in a subsequent application filed

within two months of the expiration of the twelve-month period (six-month period for design

applications) for filing such a subsequent application. In addition, title I of the PLTIA

became effective May 13, 2015, along with corresponding revisions to the rules. Notable

changes included the ability to file international design applications and to claim

priority to, and the benefit of, international design applications in nonprovisional

applications.

I.

REQUIREMENTS OF 37 CFR 1.78 (CLAIMING THE BENEFIT OF AN EARLIER NATIONAL

APPLICATION)

The following is an overview of the substantive changes to

37 CFR

1.78

resulting from implementation of Public Law 112-29, 125 Stat.

284 (Leahy Smith America Invents Act (AIA)) and implementation of Public Law 112-211,

126 Stat. 1527 (titles I and II of the Patent Law Treaties Implementation Act (PLTIA))

ions.

I.

REQUIREMENTS OF 37 CFR 1.78 (CLAIMING THE BENEFIT OF AN EARLIER NATIONAL

APPLICATION)

The following is an overview of the substantive changes to

37 CFR

1.78

resulting from implementation of Public Law 112-29, 125 Stat.

284 (Leahy Smith America Invents Act (AIA)) and implementation of Public Law 112-211,

126 Stat. 1527 (titles I and II of the Patent Law Treaties Implementation Act (PLTIA)).

See

MPEP §

211

et seq.

for the detailed requirements for claiming (and entitlement

to), the benefit of an earlier-filed application under

35 U.S.C. 119(e)

,

120

,

121

,

365(c)

, or

386(c)

.

Whether an application was filed before, on, or after March

16, 2013, statutory provisions require that for a later-filed application to be entitled

to the benefit of an earlier-filed national application, the later-filed application

must contain a specific reference to the earlier-filed application.

35 U.S.C. 119(e)

,

120

.

The inventor’s oath or declaration provisions of Public

Law 112-29, sec. 4, 125 Stat. 284 (the Leahy-Smith America Invents Act) and the rules

related thereto became effective September 16, 2012. In implementing these provisions

the Office revised

37 CFR 1.78

to require that a benefit claim under

35 U.S.C.

119(e)

,

120

,

121

, or

365(c)

must be in the application data sheet (

37 CFR 1.76

).

Thus for all applications filed on or after September 16, 2012, the specific reference

to the prior application must be in the application data sheet; for applications filed

prior to September 16, 2012, the specific reference to the prior application must be in

an application data sheet or in the first sentence(s) of the specification.

In implementing the Patent Law Treaties Implementation Act

(PLTIA), the Office reorganized and revised

37 CFR 1.78

effective May 13, 2015.

All versions of

37

CFR 1.78

in effect prior to May 13, 2015, have been consolidated

in the current version of

37 CFR 1.78

. The following is a

summary of the provisions of

37 CFR 1.78

an application data sheet or in the first sentence(s) of the specification.

In implementing the Patent Law Treaties Implementation Act

(PLTIA), the Office reorganized and revised

37 CFR 1.78

effective May 13, 2015.

All versions of

37

CFR 1.78

in effect prior to May 13, 2015, have been consolidated

in the current version of

37 CFR 1.78

. The following is a

summary of the provisions of

37 CFR 1.78

.

(A)

37 CFR

1.78(a)

contains provisions relating to claims under

35 U.S.C.

119(e)

for the benefit of a prior-filed provisional

application;

(B)

37

CFR 1.78(b)

contains provisions relating to restoration of

the right to claim the benefit of a provisional application under

35 U.S.C.

119(e)

when the delay in filing the subsequent application

was unintentional.

(C)

37 CFR

1.78(c)

contains provisions relating to delayed claims under

35 U.S.C.

119(e)

for the benefit of a prior-filed provisional

application;

(D)

37 CFR

1.78(d)

contains provisions relating to claims under

35 U.S.C.

120

,

121

,

365(c)

, or

386(c)

for the benefit of a prior-filed nonprovisional

application, international application, or international design application;

(E)

37 CFR

1.78(e)

contains provisions relating to delayed claims under

35 U.S.C.

120

,

121

,

365(c)

, or

386(c)

for the benefit of a prior-filed nonprovisional

application, international application, or international design application;

(F)

37 CFR

1.78(f)

contains provisions relating to applications

containing patentably indistinct claims;

(G)

37 CFR

1.78(g)

contains provisions relating to applications or

patents under reexamination naming different inventors and containing patentably

indistinct claims;

(H)

37 CFR

1.78(h)

provides for situations where the specific reference

to a prior filed application may be presented in the first sentence(s) of the

specification in applications filed before September 16, 2012;

(I)

37 CFR

1.78(i)

provides for situations where a petition under

37 CFR 1.78(b)

,

(c)

, or

nts under reexamination naming different inventors and containing patentably

indistinct claims;

(H)

37 CFR

1.78(h)

provides for situations where the specific reference

to a prior filed application may be presented in the first sentence(s) of the

specification in applications filed before September 16, 2012;

(I)

37 CFR

1.78(i)

provides for situations where a petition under

37 CFR 1.78(b)

,

(c)

, or

(e)

required in an international application can be filed in the earliest

nonprovisional application that claims benefit under

35 U.S.C.

120

,

121

,

365(c)

, or

386(c)

to the international application;

(J)

37 CFR

1.78(j)

provides that benefit under

35 U.S.C.

386(c)

with respect to an international design application

can only be claimed in nonprovisional applications, international applications,

and international design applications filed on or after May 13, 2015, and patents

issuing thereon; and

(K)

37 CFR

1.78(k)

provides that the time periods set forth in

37 CFR

1.78

are not extendable, but are subject to

35 U.S.C.

21(b)

(and

37 CFR 1.7(a)

),

PCT Rule

80.5

, and Hague Agreement Rule 4(4).

37 CFR

1.78(a)(6)

and

(d)(6)

set forth provisions that are

only applicable to nonprovisional applications filed on or after March 16, 2013 that

claim the benefit of the filing date of a provisional or nonprovisional application

filed prior to March 16, 2013. Specifically, the paragraphs require that if the later

filed application contains, or contained at any time, a claim to a claimed invention

that has an effective filing date on or after March 16, 2013, the applicant must provide

a statement to that effect within the time periods set forth in the rule. An applicant

is not required to provide such a statement if the applicant reasonably believes on the

basis of information already known to the individuals designated in

37 CFR 1.56(c)

that the later filed nonprovisional application does not, and did not at any time,

contain a claim to a claimed invention that has an effective filing date on or after

March 16, 2013

me periods set forth in the rule. An applicant

is not required to provide such a statement if the applicant reasonably believes on the

basis of information already known to the individuals designated in

37 CFR 1.56(c)

that the later filed nonprovisional application does not, and did not at any time,

contain a claim to a claimed invention that has an effective filing date on or after

March 16, 2013. An applicant is also not required to provide such a statement if the

application claims the benefit of an earlier application in which a statement that the

earlier application contains, or contained at any time, a claim to a claimed invention

that has an effective filing date on or after March 16, 2013 has been filed. See

MPEP §

211.01

for additional information.

II.

REQUIREMENTS OF 37 CFR 1.55 (CLAIMING PRIORITY TO AN EARLIER FOREIGN

APPLICATION)

The following is an overview of the substantive changes to

37 CFR

1.55

resulting from implementation of Public Law 112-29, 125 Stat.

284 (Leahy Smith America Invents Act (AIA)) and implementation of Public Law 112-211,

126 Stat. 1527 (titles I and title II of the Patent Law Treaties Implementation Act

(PLTIA)). See

MPEP § 213

et seq.

for the detailed requirements for claiming (and entitlement

to), priority to of an earlier filed foreign application under

35 U.S.C.

119(a)

-

(d)

or

(f)

,

35 U.S.C.

365(a)

or

(b)

, or

386(a)

or

(b)

.

Whether an application was filed before, on, or after March

16, 2013,

35 U.S.C.

119(b)(1)

requires a claim for priority identifying the foreign

application. Prior to September 16, 2012,

37 CFR 1.55

and

1.63

required

the claim for priority to be identified on an application data sheet or in the oath or

declaration.

The inventor’s oath or declaration provisions of Public

Law 112-29, sec. 4, 125 Stat. 284 (the Leahy-Smith America Invents Act) and the rules

related thereto became effective September 16, 2012

r priority identifying the foreign

application. Prior to September 16, 2012,

37 CFR 1.55

and

1.63

required

the claim for priority to be identified on an application data sheet or in the oath or

declaration.

The inventor’s oath or declaration provisions of Public

Law 112-29, sec. 4, 125 Stat. 284 (the Leahy-Smith America Invents Act) and the rules

related thereto became effective September 16, 2012. In implementing these provisions

the Office revised

37 CFR 1.55

to require that a claim for foreign priority must be

presented in the application data sheet (

37 CFR 1.76

). Thus for all

applications filed on or after September 16, 2012, a claim for priority under

35 U.S.C.

119(a)

-

(d)

or

(f)

,

365(a)

or

(b)

, or

386(a)

or

(b)

to the prior application must be presented in the application

data sheet; for applications filed prior to September 16, 2012, the claim for priority

to the foreign application must be identified in an application data sheet or in the

oath or declaration.

In implementing the Patent Law Treaties Implementation Act

(PLTIA), the Office reorganized and revised

37 CFR 1.55

effective May 13, 2015.

All versions of

37

CFR 1.55

in effect prior to May 13, 2015, have been consolidated

in the current version of

37 CFR 1.55

. The following is a

summary of the provisions of

37 CFR 1.55

.

(A)

37 CFR 1.55(a)

provides

generally that a nonprovisional application may claim priority to one or more

prior foreign applications under the conditions specified in

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

and (f)

,

172

,

365(a) and

(b)

, and

386(a) and (b)

;

(B)

37 CFR 1.55(b)

contains

provisions relating to the time for filing a nonprovisional application claiming

priority to a foreign application under

35 U.S.C. 119(a) through (d) and

(f)

,

172

,

365(a) and

(b)

, and

386(a) and (b)

;

(C)

37 CFR 1.55(c)

contains

provisions relating to the restoration of the right of priority

under

35

U.S.C. 119(a) through (d) and (f)

,

172

,

365(a) and

6(a) and (b)

;

(B)

37 CFR 1.55(b)

contains

provisions relating to the time for filing a nonprovisional application claiming

priority to a foreign application under

35 U.S.C. 119(a) through (d) and

(f)

,

172

,

365(a) and

(b)

, and

386(a) and (b)

;

(C)

37 CFR 1.55(c)

contains

provisions relating to the restoration of the right of priority

under

35

U.S.C. 119(a) through (d) and (f)

,

172

,

365(a) and

(b)

, and

386(a) and (b)

;

(D)

37 CFR 1.55(d)

contains

provisions relating to the time for filing a priority claim in an application

filed under

35 U.S.C. 111(a)

and in an

application entering the national stage under

35 U.S.C. 371

;

(E)

37 CFR 1.55(e)

contains

provisions relating to delayed claims for priority under

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

and (f)

,

365(a) or (b)

, and

386(a) or (b)

;

(F)

37 CFR 1.55(f)

contains

provisions relating to the time for filing the certified copy of a foreign

application in an application filed under

35 U.S.C.

111(a)

and in an application entering the national stage

under

35 U.S.C.

371

;

(G)

37 CFR 1.55(g)

contains

provisions relating to the filing of a priority claim, certified copy of the

foreign application, and translation of a non-English language foreign application

in any application;

(H)

37 CFR 1.55(h)

contains

provisions relating to when the requirement for a certified copy will be

considered satisfied based on a certified copy filed in another U.S. patent or

application;

(I)

37 CFR 1.55(i)

contains

provisions relating to the priority document exchange agreement;

(J)

37 CFR 1.55(j)

contains

provisions relating to the filing of an interim copy of a foreign application;

(K)

37 CFR 1.55(k)

contains

provisions relating to requirements for certain applications filed on or after

March 16, 2013;

(L)

37 CFR 1.55(l)

contains

provisions relating to inventor's certificates; and

(M)

37 CFR 1.55(m)

contains

provisions relating to the time for the filing of a priority claim and certified

copy of the foreign application in an international design application designating

the United States;

(N)

contains

provisions relating to requirements for certain applications filed on or after

March 16, 2013;

(L)

37 CFR 1.55(l)

contains

provisions relating to inventor's certificates; and

(M)

37 CFR 1.55(m)

contains

provisions relating to the time for the filing of a priority claim and certified

copy of the foreign application in an international design application designating

the United States;

(N)

37 CFR 1.55(n)

provides for

situations where a foreign priority claim may be presented in the oath or

declaration in applications filed before September 16, 2012;

(O)

37 CFR 1.55(o)

provides that

right of priority under

35 U.S.C. 386(a)

or

(b)

with respect to an international design application is

applicable only to nonprovisional applications, international applications, and

international design applications filed on or after May 13, 2015, and patents

issuing thereon; and

(P)

37 CFR 1.55(p)

provides that

the time periods set forth in

37 CFR 1.55

are not

extendable, but are subject to

35 U.S.C. 21(b)

(and

37

CFR 1.7(a)

),

PCT Rule 80.5

, and Hague

Agreement Rule 4(4).

III.

REQUIREMENT FOR A STATEMENT UNDER 37 CFR 1.55 OR 1.78 FOR FIRST INVENTOR TO FILE

TRANSITION APPLICATIONS

The first inventor to file provisions of Public Law

112-29, sec. 3, 125 Stat. 284 (the Leahy-Smith America Invents Act) and the rules

related thereto became effective March 16, 2013. These provisions apply to any

application for patent, and to any patent issuing thereon, that contains or contained at

any time—

(A) a claim to a claimed invention that has an effective

filing date as defined under

section 100(i)

of title 35,

United States Code, that is on or after March 16, 2013; or

(B) a specific reference under section

120

,

121

, or

365(c)

of title 35, United

States Code, to any patent or application that contains or contained at any time

such a claim. See

35 U.S.C. 100 (note)

As a result, the effective filing date of each claimed

invention determines whether an application is subject to examination under

35 U.S.C

United States Code, that is on or after March 16, 2013; or

(B) a specific reference under section

120

,

121

, or

365(c)

of title 35, United

States Code, to any patent or application that contains or contained at any time

such a claim. See

35 U.S.C. 100 (note)

As a result, the effective filing date of each claimed

invention determines whether an application is subject to examination under

35 U.S.C.

102

and

103

as effective on March 16, 2013

or under

35 U.S.C.

102

and

103

in effect on March 15, 2013

(i.e.,

pre-AIA 35

U.S.C. 102

or

103

).

Title I of the PLTIA amended the definition of effective

filing date in

35 U.S.C. 100(i)

to provide for

priority claims under

35 U.S.C. 386(a)

or

(b)

and benefit claims under

35 U.S.C.

386(c)

.

The effective filing date for a claimed invention in a

patent or application (except in an application for reissue or reissued patent) is set

forth in

35

U.S.C. 100(i)(1)

as:

(A) if subparagraph (B) does not apply, the actual filing

date of the patent or the application for the patent containing a claim to the

invention; or

(B) the filing date of the earliest application for

which the patent or application is entitled, as to such invention, to a right of

priority under section

119

,

365(a)

,

365(b)

,

386(a)

, or

386(b)

or to the benefit of an earlier filing date under

section

120

,

121

,

365(c)

, or

386(c)

.

For an application for reissue or a reissued patent, the

effective filing date for a claimed invention, as set forth in

35 U.S.C.

100(i)(2)

, is determined by deeming the claim to the invention to

have been contained in the patent for which reissue was sought.

In implementing the first inventor to file provision of the

AIA, the Office added a statement requirement to

37 CFR 1.55

and

1.78

for

transition applications. See

37 CFR 1.55(k)

and

1.78(a)(6)

and

effective filing date for a claimed invention, as set forth in

35 U.S.C.

100(i)(2)

, is determined by deeming the claim to the invention to

have been contained in the patent for which reissue was sought.

In implementing the first inventor to file provision of the

AIA, the Office added a statement requirement to

37 CFR 1.55

and

1.78

for

transition applications. See

37 CFR 1.55(k)

and

1.78(a)(6)

and

(d)(6)

. Note that the statement requirement for transition

applications does not apply to nonprovisional international design applications.

A.

Transition Applications

Transition applications are nonprovisional applications

that:

(A) are filed on or after March 16, 2013;

and

(B) claim foreign priority to, or domestic benefit of,

an application filed before March 16, 2013.

Transition applications are either pre-AIA

first-to-invent applications or AIA first-inventor-to-file applications depending on

the effective filing date of the claimed invention(s).

The statement provisions of

37 CFR 1.55

and

1.78

require that if the later-filed transition application

contains, or contained at any time, a claim to a claimed invention that has an

effective filing date on or after March 16, 2013, the applicant must provide a

statement to that effect (unless the later-filed application is a nonprovisional

international design application). The statement must be provided within the later of

four months from the actual filing date of the later-filed application, four months

from the date of entry into the national stage as set forth in

37 CFR

1.491

in an international application, sixteen months from the

filing date of the prior-filed application, or the date that a first claim to a

claimed invention that has an effective filing date on or after March 16, 2013, is

presented in the later-filed application. Nonprovisional international design

applications are excluded from the transition provisions of

37 CFR

1.55(k)

and

1.78(a)(6)

and

FR

1.491

in an international application, sixteen months from the

filing date of the prior-filed application, or the date that a first claim to a

claimed invention that has an effective filing date on or after March 16, 2013, is

presented in the later-filed application. Nonprovisional international design

applications are excluded from the transition provisions of

37 CFR

1.55(k)

and

1.78(a)(6)

and

(d)(6)

.

For a nonprovisional application filed on or after March

16, 2013 that claims priority to, or the benefit of, the filing date of an earlier

filed application, the applicant would

not

be required to provide any

statement if:

(A) The nonprovisional application discloses only

subject matter also disclosed in a priority or domestic benefit application

filed prior to March 16, 2013; or

(B) the nonprovisional application claims only

priority to, or the benefit of, the filing date of an application filed on or

after March 16, 2013.

An applicant is not required to provide such a statement

under

37 CFR

1.78

in a continuing transition application if the application

claims the benefit of a nonprovisional application in which such a statement under

37 CFR

1.55

or

1.78

has been filed. See

37 CFR

1.78(d)(6)(i)

.

An applicant is not required to provide such a

statement under

37 CFR 1.55

or

1.78

if the applicant reasonably

believes on the basis of information already known to the individuals designated in

37 CFR

1.56(c)

that the later-filed transition application does not,

and did not at any time, contain a claim to a claimed invention that has an effective

filing date on or after March 16, 2013.

Applicant is not required to identify how many or which

claims in the transition application have an effective filing date on or after March

16, 2013, or identify the subject matter in the transition application not also

disclosed in the priority or benefit application. Applicant is only required to state

that there is a claim in the transition application that has an effective filing date

on or after March 16, 2013

quired to identify how many or which

claims in the transition application have an effective filing date on or after March

16, 2013, or identify the subject matter in the transition application not also

disclosed in the priority or benefit application. Applicant is only required to state

that there is a claim in the transition application that has an effective filing date

on or after March 16, 2013. The Office may issue a requirement for information under

37 CFR

1.105

if an applicant takes conflicting positions on whether an

application contains, or contained at any time, a claim to a claimed invention having

an effective filing date on or after March 16, 2013. For example, the Office may

require the applicant to identify where there is written description support under

35

U.S.C. 112(a)

in the pre-AIA application for each claim to a

claimed invention if an applicant provides the statement under

37 CFR

1.78(a)(6)

, but later argues that the application should have

been examined as a pre-AIA application because the application does not actually

contain a claim to a claimed invention having an effective filing date on or after

March 16, 2013.

B.

Application Data Sheet and Filing Receipt

The application data sheet (ADS, Form PTO/AIA/14) and

the transmittal letter for

35 U.S.C. 371

national stage

filing (Form PTO- 1390) are available for an applicant to make the

37 CFR

1.55

/

1.78

statement by marking a check

box on the forms. The presence or absence of the

37 CFR

1.55

/

1.78

statement is reflected on

the filing receipt. If applicant receives a filing receipt with incorrect information

regarding the

37 CFR 1.55

/

1.78

statement, applicant may

request a corrected filing receipt. Therefore, applicants should carefully and

promptly review their filing receipts in order to ensure that their applications will

be examined under the correct statutory framework.

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