Right of Priority of Foreign Application

Under certain conditions and on fulfilling certain

requirements, an application for patent filed in the United States may be entitled to the

benefit of the filing date of a prior application filed in a foreign country. The

conditions are specified in

35 U.S.C. 119(a)

-

(d)

and

(f)

,

172

,

365(a)

and

(b)

, and

386(a)

and

(b)

, and

37 CFR

1.55

.

35 U.S.C. 119

Benefit of earlier filing date; right of

priority.

(a) An application for patent for an invention filed in

this country by any person who has, or whose legal representatives or assigns

have, previously regularly filed an application for a patent for the same

invention in a foreign country which affords similar privileges in the case of

applications filed in the United States or to citizens of the United States, or in

a WTO member country, 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 12 months from the earliest date on which such

foreign application was filed. The Director may prescribe regulations, including

the requirement for payment of the fee specified in section

41(a)(7)

,

pursuant to which the 12-month period set forth in this subsection may be extended

by an additional 2 months if the delay in filing the application in this country

within the 12-month period was unintentional.

s from the earliest date on which such

foreign application was filed. The Director may prescribe regulations, including

the requirement for payment of the fee specified in section

41(a)(7)

,

pursuant to which the 12-month period set forth in this subsection may be extended

by an additional 2 months if the delay in filing the application in this country

within the 12-month period was unintentional.

(b)

(1) No application for patent shall be entitled to

this right of priority unless a claim is filed in the Patent and Trademark

Office, identifying the foreign application by specifying the application

number on that foreign application, the intellectual property authority or

country in or for which the application was filed, and the date of filing

the application, at such time during the pendency of the application as

required by the Director.

(2) The Director may consider the failure of the

applicant to file a timely claim for priority as a waiver of any such claim.

The Director may establish procedures, including the requirement for payment

of the fee specified in section

41(a)(7)

, to accept an

unintentionally delayed claim under this section.

(3) The Director may require a certified copy of

the original foreign application, specification, and drawings upon which it

is based, a translation if not in the English language, and such other

information as the Director considers necessary. Any such certification

shall be made by the foreign intellectual property authority in which the

foreign application was filed and show the date of the application and of

the filing of the specification and other papers.

eign application, specification, and drawings upon which it

is based, a translation if not in the English language, and such other

information as the Director considers necessary. Any such certification

shall be made by the foreign intellectual property authority in which the

foreign application was filed and show the date of the application and of

the filing of the specification and other papers.

(c) In like manner and subject to the same conditions

and requirements, the right provided in this section may be based upon a

subsequent regularly filed application in the same foreign country instead of the

first filed foreign application, provided that any foreign application filed prior

to such subsequent application has been withdrawn, abandoned, or otherwise

disposed of, without having been laid open to public inspection and without

leaving any rights outstanding, and has not served, nor thereafter shall serve, as

a basis for claiming a right of priority.

(d) Applications for inventors’ certificates filed in a

foreign country in which applicants have a right to apply, at their discretion,

either for a patent or for an inventor’s certificate shall be treated in this

country in the same manner and have the same effect for purpose of the right of

priority under this section as applications for patents, subject to the same

conditions and requirements of this section as apply to applications for patents,

provided such applicants are entitled to the benefits of the Stockholm Revision of

the Paris Convention at the time of such filing.

*****

(f) Applications for plant breeder’s rights filed in a

WTO member country (or in a foreign UPOV Contracting Party) shall have the same

effect for the purpose of the right of priority under subsections (a) through (c)

of this section as applications for patents, subject to the same conditions and

requirements of this section as apply to applications for patents.

*****

37 CFR 1.55 Claim for foreign priority.

cations for plant breeder’s rights filed in a

WTO member country (or in a foreign UPOV Contracting Party) shall have the same

effect for the purpose of the right of priority under subsections (a) through (c)

of this section as applications for patents, subject to the same conditions and

requirements of this section as apply to applications for patents.

*****

37 CFR 1.55 Claim for foreign priority.

(a)

In general.

An applicant in 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)

and this

section.

(b)

Time for filing subsequent application.

The nonprovisional

application must be:

(1) Filed not later than twelve months (six

months in the case of a design application) after the date on which the

foreign application was filed, subject to paragraph (c) of this section (a

subsequent application); or

(2) Entitled to claim the benefit under

35

U.S.C. 120

,

121

,

365(c)

, or

386(c)

of a subsequent

application that was filed within the period set forth in paragraph (b)(1)

of this section.

(c)

Delayed filing of subsequent application.

If the subsequent

application has a filing date which is after the expiration of the period set

forth in paragraph (b)(1) of this section, but within two months from the

expiration of the period set forth in paragraph (b)(1) of this section, the right

of priority in the subsequent application may be restored under

PCT Rule

26bis.3

for an international

application, or upon petition pursuant to this paragraph, if the delay in filing

the subsequent application within the period set forth in paragraph (b)(1) of this

section was unintentional. A petition to restore the right of priority under this

paragraph filed on or after May 13, 2015, must be filed in the subsequent

application, or in the earliest nonprovisional application claiming benefit under

35 U.S.C

n, or upon petition pursuant to this paragraph, if the delay in filing

the subsequent application within the period set forth in paragraph (b)(1) of this

section was unintentional. A petition to restore the right of priority under this

paragraph filed on or after May 13, 2015, must be filed in the subsequent

application, or in the earliest nonprovisional application claiming benefit under

35 U.S.C.

120

,

121

,

365(c)

, or

386(c)

to the subsequent application, if such subsequent

application is not a nonprovisional application. Any petition to restore the right

of priority under this paragraph must include:

(1) The priority claim under

35 U.S.C.

119(a)

through

(d)

or

(f)

,

365(a)

or (b)

, or

386(a) or

(b)

in an application data sheet (§

1.76(b)(6)

), identifying the foreign application to

which priority is claimed, by specifying the application number, country (or

intellectual property authority), day, month, and year of its filing, unless

previously submitted;

(2) The petition fee as set forth in §

1.17(m)

; and

(3) A statement that the delay in filing the

subsequent application within the period set forth in paragraph (b)(1) of

this section was unintentional. The Director may require additional

information where there is a question whether the delay was unintentional.

(d)

Time for filing priority claim—

(1)

Application under

35 U.S.C.

111(a)

.

The claim for priority must be filed

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 in an original application filed under

35 U.S.C.

111(a)

, except as provided in paragraph (e) of this

section. The claim for priority must be presented in an application data

sheet (§

1.76(b)(6)

) and must

identify the foreign application to 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 if the later-filed application is:

ovided in paragraph (e) of this

section. The claim for priority must be presented in an application data

sheet (§

1.76(b)(6)

) and must

identify the foreign application to 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 if the later-filed application is:

(i) An application for a design patent;

or

(ii) An application filed under

35 U.S.C. 111(a)

before November 29, 2000.

(2)

Application under

35 U.S.C.

371

.

The claim for priority must be made

within the time limit set forth in the PCT and the Regulations under the PCT

in an international application entering the national stage under

35

U.S.C. 371

, except as provided in paragraph (e) of

this section.

(e)

Delayed priority claim.

Unless such claim is accepted in

accordance with the provisions of this paragraph, any claim for priority under

35 U.S.C.

119(a)

through

(d)

or

(f)

,

365(a) or

(b)

, or

386(a) or 386(b)

not presented

in the manner required by paragraph (d) or (m) of this section during pendency and

within the time period provided by paragraph (d) of this section (if applicable)

is considered to have been waived. If a claim for priority is considered to have

been waived under this section, the claim may be accepted if the priority claim

was unintentionally delayed. A petition to accept a delayed claim for priority

under

35 U.S.C.

119(a)

through

(d)

or

(f)

,

365(a)

or

(b)

, or

386(a)

or

386(b)

must be accompanied

by:

(1) The priority claim under

35 U.S.C.

119(a)

through

(d)

or

(f)

,

365(a)

or

386(b)

, or

386(a)

or

aim for priority is considered to have

been waived under this section, the claim may be accepted if the priority claim

was unintentionally delayed. A petition to accept a delayed claim for priority

under

35 U.S.C.

119(a)

through

(d)

or

(f)

,

365(a)

or

(b)

, or

386(a)

or

386(b)

must be accompanied

by:

(1) The priority claim under

35 U.S.C.

119(a)

through

(d)

or

(f)

,

365(a)

or

386(b)

, or

386(a)

or

(b)

in an application

data sheet (§

1.76(b)(6)

), identifying

the foreign application to which priority is claimed, by specifying the

application number, country (or intellectual property authority), day,

month, and year of its filing, unless previously submitted;

(2) A certified copy of the foreign application,

unless previously submitted or an exception in paragraph (h), (i), or (j) of

this section applies;

(3) The petition fee as set forth in §

1.17(m)

; and

(4) A statement that the entire delay between

the date the priority claim was due under this section and the date the

priority claim was filed was unintentional. The Director may require

additional information where there is a question whether the delay was

unintentional.

(f)

Time for filing certified copy of foreign application—

(1)

Application under

35 U.S.C.

111(a)

.

A certified copy of the foreign

application must be filed 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, in an original application under

35 U.S.C. 111(a)

filed on or after March 16, 2013,

except as provided in paragraphs (h), (i), and (j) of this section. The time

period in this paragraph does not apply in a design application.

ication must be filed 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, in an original application under

35 U.S.C. 111(a)

filed on or after March 16, 2013,

except as provided in paragraphs (h), (i), and (j) of this section. The time

period in this paragraph does not apply in a design application.

(2)

Application under

35 U.S.C.

371

.

A certified copy of the foreign

application must be filed within the time limit set forth in the PCT and the

Regulations under the PCT in an international application entering the

national stage under

35 U.S.C. 371

. If a

certified copy of the foreign application is not filed during the

international stage in an international application in which the national

stage commenced on or after December 18, 2013, a certified copy of the

foreign application must be filed within the later of four months from the

date on which the national stage commenced under

35 U.S.C.

371(b)

or

(f)

(§

1.491(a)

), four months from the date of the initial

submission under

35 U.S.C. 371

to enter

the national stage, or sixteen months from the filing date of the prior

foreign application, except as provided in paragraphs (h), (i), and (j) of

this section.

(3) If a certified copy of the foreign

application is not filed within the time period specified [in] paragraph

(f)(1) of this section in an application under

35 U.S.C.

111(a)

or within the period specified in paragraph

(f)(2) of this section in an international application entering the national

stage under

35 U.S.C. 371

, and an

exception in paragraph (h), (i), or (j) of this section is not applicable,

the certified copy of the foreign application must be accompanied by a

petition including a showing of good and sufficient cause for the delay and

the petition fee set forth in §

1.17(g)

.

d specified in paragraph

(f)(2) of this section in an international application entering the national

stage under

35 U.S.C. 371

, and an

exception in paragraph (h), (i), or (j) of this section is not applicable,

the certified copy of the foreign application must be accompanied by a

petition including a showing of good and sufficient cause for the delay and

the petition fee set forth in §

1.17(g)

.

(g)

Requirement for filing priority claim, certified copy of foreign

application, and translation in any application.

(1) 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 within the pendency of the application, unless filed with a

petition under paragraph (e) or (f) of this section, or with a petition

accompanied by the fee set forth in §

1.17(g)

which includes a showing of good and

sufficient cause for the delay in filing the certified copy of the foreign

application in a design application. If the claim for priority or the

certified copy of the foreign application is filed after the date the issue

fee is paid, the patent will not include the priority claim unless corrected

by a certificate of correction under

35 U.S.C. 255

and §

1.323

.

(2) The Office may require that the claim for

priority and the certified copy of the foreign application be filed earlier

than otherwise provided in this section:

(i) When the application is involved in an

interference (see §

41.202

of this

chapter) or derivation (see part 42 of this chapter) proceeding;

(ii) When necessary to overcome the date of

a reference relied upon by the examiner; or

(iii) When deemed necessary by the

examiner.

(3) An English language translation of a

non-English language foreign application is not required except:

d in this section:

(i) When the application is involved in an

interference (see §

41.202

of this

chapter) or derivation (see part 42 of this chapter) proceeding;

(ii) When necessary to overcome the date of

a reference relied upon by the examiner; or

(iii) When deemed necessary by the

examiner.

(3) An English language translation of a

non-English language foreign application is not required except:

(i) When the application is involved in an

interference (see §

41.202

of this

chapter) or derivation (see part 42 of this chapter) proceeding;

(ii) When necessary to overcome the date of

a reference relied upon by the examiner; or

(iii) When specifically required by the

examiner.

(4) If an English language translation of a

non-English language foreign application is required, it must be filed

together with a statement that the translation of the certified copy is

accurate.

(h)

Certified copy in another U.S. patent or application.

The

requirement in paragraphs (f) and (g) of this section for a certified copy of the

foreign application will be considered satisfied in a reissue application if the

patent for which reissue is sought satisfies the requirement of this section for a

certified copy of the foreign application and such patent is identified as

containing a certified copy of the foreign application. The requirement in

paragraphs (f) and (g) of this section for a certified copy of the foreign

application will also be considered satisfied in an application if a prior-filed

nonprovisional application for which a benefit is claimed under

35 U.S.C.

120

,

121

,

365(c)

, or

386(c)

contains a certified copy of the foreign application

and such prior-filed nonprovisional application is identified as containing a

certified copy of the foreign application.

tion for a certified copy of the foreign

application will also be considered satisfied in an application if a prior-filed

nonprovisional application for which a benefit is claimed under

35 U.S.C.

120

,

121

,

365(c)

, or

386(c)

contains a certified copy of the foreign application

and such prior-filed nonprovisional application is identified as containing a

certified copy of the foreign application.

(i)

Foreign intellectual property office participating in a priority document

exchange agreement.

The requirement in paragraphs (f) and (g) of this

section for a certified copy of the foreign application to be filed within the

time limit set forth therein will be considered satisfied if:

(1) The foreign application was filed in a

foreign intellectual property office participating with the Office in a

bilateral or multilateral priority document exchange agreement

(participating foreign intellectual property office), or a copy of the

foreign application was filed in an application subsequently filed in a

participating foreign intellectual property office that permits the Office

to obtain such a copy;

(2) The claim for priority is presented in an

application data sheet (§

1.76(b)(6)

), identifying

the foreign application for which priority is claimed, by specifying the

application number, country (or intellectual property authority), day,

month, and year of its filing, and the applicant provides the information

necessary for the participating foreign intellectual property office to

provide the Office with access to the foreign application;

(3) The copy of the foreign application is

received by the Office from the participating foreign intellectual property

office, or a certified copy of the foreign application is filed, within the

period specified in paragraph (g)(1) of this section; and

the information

necessary for the participating foreign intellectual property office to

provide the Office with access to the foreign application;

(3) The copy of the foreign application is

received by the Office from the participating foreign intellectual property

office, or a certified copy of the foreign application is filed, within the

period specified in paragraph (g)(1) of this section; and

(4) The applicant files in a separate document a

request that the Office obtain a copy of the foreign application from a

participating intellectual property office that permits the Office to obtain

such a copy where, although the foreign application was not filed in a

participating foreign intellectual property office, a copy of the foreign

application was filed in an application subsequently filed in a

participating foreign intellectual property office that permits the Office

to obtain such a copy. The request must identify the participating

intellectual property office and the subsequent application by the

application number, day, month, and year of its filing in which a copy of

the foreign application was filed. The request must be filed within the

later of sixteen months from the filing date of the prior foreign

application, four months from the actual filing date of an application under

35 U.S.C. 111(a)

, four months from the date on which

the national stage commenced under

35 U.S.C. 371(b)

or

(f)

(§

1.491(a)

), or four

months from the date of the initial submission under

35 U.S.C.

371

to enter the national stage, or the request must

be accompanied by a petition under paragraph (e) or (f) of this section.

pplication, four months from the actual filing date of an application under

35 U.S.C. 111(a)

, four months from the date on which

the national stage commenced under

35 U.S.C. 371(b)

or

(f)

(§

1.491(a)

), or four

months from the date of the initial submission under

35 U.S.C.

371

to enter the national stage, or the request must

be accompanied by a petition under paragraph (e) or (f) of this section.

(j)

Interim copy.

The requirement in paragraph (f) of this section

for a certified copy of the foreign application to be filed within the time limit

set forth therein will be considered satisfied if:

(1) A copy of the original foreign application

clearly labeled as "Interim Copy," including the specification, and any

drawings or claims upon which it is based, is filed in the Office together

with a separate cover sheet identifying the foreign application by

specifying the application number, country (or intellectual property

authority), day, month, and year of its filing, and stating that the copy

filed in the Office is a true copy of the original application as filed in

the foreign country (or intellectual property authority);

(2) The copy of the foreign application and

separate cover sheet are filed within the later of sixteen months from the

filing date of the prior foreign application, four months from the actual

filing date of an application under

35 U.S.C.

111(a)

, four months from the date on which the

national stage commenced under

35 U.S.C. 371(b)

or

(f)

(§

1.491(a)

), four months

from the date of the initial submission under

35 U.S.C.

371

to enter the national stage, or with a petition

under paragraph (e) or (f) of this section; and

(3) A certified copy of the foreign application

is filed within the period specified in paragraph (g)(1) of this

section.

, four months from the date on which the

national stage commenced under

35 U.S.C. 371(b)

or

(f)

(§

1.491(a)

), four months

from the date of the initial submission under

35 U.S.C.

371

to enter the national stage, or with a petition

under paragraph (e) or (f) of this section; and

(3) A certified copy of the foreign application

is filed within the period specified in paragraph (g)(1) of this

section.

(k)

Requirements for certain applications filed on or after March 16,

2013.

If a nonprovisional application filed on or after March 16,

2013, other than a nonprovisional international design application, claims

priority to a foreign application filed prior to March 16, 2013, and also

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

effective filing date as defined in §

1.109

that is on or after

March 16, 2013, the applicant must provide a statement to that effect within the

later of four months from the actual filing date of the nonprovisional

application, four months from the date of entry into the national stage as set

forth in §

1.491

in an international application, sixteen months from

the filing date of the prior foreign 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 nonprovisional application. 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 §

1.56(c)

that the 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.

, is presented in the nonprovisional application. 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 §

1.56(c)

that the 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.

(l)

Inventor's certificates.

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 this section, must 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.

(m)

Time for filing priority claim and certified copy of foreign application

in an international design application designating the United States.

In an international design application designating the United States, the claim

for priority may be made in accordance with the Hague Agreement and the Hague

Agreement Regulations

e identified claim or claims forming the basis for the

claim of priority.

(m)

Time for filing priority claim and certified copy of foreign application

in an international design application designating the United States.

In an international design application designating the United States, the claim

for priority may be made in accordance with the Hague Agreement and the Hague

Agreement Regulations. In a nonprovisional international design application, the

priority claim, unless made in accordance with the Hague Agreement and the Hague

Agreement Regulations, must be presented in an application data sheet (§

1.76(b)(6)

), identifying the foreign application for which

priority is claimed, by specifying the application number, country (or

intellectual property authority), day, month, and year of its filing. In a

nonprovisional international design application, the priority claim and certified

copy must be furnished in accordance with the time period and other conditions set

forth in paragraph (g) of this section.

(n)

Applications filed before September 16, 2012.

Notwithstanding

the requirement in paragraphs (d)(1), (e)(1), and (i)(2) of this section that any

priority claim be presented in an application data sheet (§

1.76

),

this requirement in paragraphs (d)(1), (e)(1), and (i)(2) of this section will be

satisfied by the presentation of such priority claim in the oath or declaration

under §

1.63

in a nonprovisional application filed under

35

U.S.C. 111(a)

before September 16, 2012, or resulting from

an international application filed under

35 U.S.C. 363

before September

16, 2012. The provisions of this paragraph do not apply to any priority claim

submitted for a petition under paragraph (c) of this section to restore the right

of priority to a foreign application.

(o)

Priority under

35 U.S.C. 386(a)

or

(b)

.

The right of priority under

35

U.S.C. 386(a)

or

September 16, 2012, or resulting from

an international application filed under

35 U.S.C. 363

before September

16, 2012. The provisions of this paragraph do not apply to any priority claim

submitted for a petition under paragraph (c) of this section to restore the right

of priority to a foreign application.

(o)

Priority under

35 U.S.C. 386(a)

or

(b)

.

The 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.

(p)

Time periods in this section.

The time periods set forth in

this section are not extendable, but are subject to

35 U.S.C.

21(b)

(and §

1.7(a)

),

PCT Rule

80.5

, and Hague Agreement Rule 4(4).

Implementation of Public Law 112-211, 126 Stat. 1527 (titles I

and title II of the Patent Law Treaties Implementation Act (PLTIA)), necessitated changes

to the procedural requirements relating to claims for priority to an earlier-filed foreign

application and to the submission of a certified copy of the priority document. The

conditions for claiming priority to an earlier-filed foreign application are summarized

below:

(A) The foreign application must be one filed in “a foreign

country which affords similar privileges in the case of applications filed in the

United States or to citizens of the United States or in a WTO member country.” See

MPEP §

213.01

.

(B) The foreign application must have been filed by the same

applicant as the applicant in the United States, or by applicant's legal

representatives or assigns. Consistent with longstanding Office policy, this is

interpreted to mean that the U.S. and foreign applications must name the same

inventor or have at least one joint inventor in common. See

MPEP §

213.02

.

(C) The application, or its earliest parent United States

application under

35 U.S.C

the same

applicant as the applicant in the United States, or by applicant's legal

representatives or assigns. Consistent with longstanding Office policy, this is

interpreted to mean that the U.S. and foreign applications must name the same

inventor or have at least one joint inventor in common. See

MPEP §

213.02

.

(C) The application, or its earliest parent United States

application under

35 U.S.C. 120

, must have been

filed in a “recognized” country (see

MPEP §

213.01

) within 12 months from the date of the earliest

foreign filing unless the right of priority has been restored (see

MPEP §

213.03

). However, the period of 12 months specified in this

section is 6 months in the case of designs pursuant to

35 U.S.C.

172

. See

MPEP §§ 1504.10

and

2920.05(d)

.

(D) The foreign application must be for the same invention

as the application in the United States.

(E) For an original application filed under

35 U.S.C.

111(a)

(other than a design application), the claim for

priority must be presented 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. See

MPEP § 214.01

.

(F) For applications entering the national stage under

35 U.S.C.

371

from an international application, the claim for priority

must be made and a certified copy of the foreign application must be filed within the

time limit set forth in the PCT Articles and Regulations.

(G) For a nonprovisional international design application,

the priority claim, unless made in accordance with the Hague Agreement and the Hague

Agreement Regulations, must be presented in an application data sheet during the

pendency of the application. See

37 CFR 1.55(m)

. In addition, the

right of priority under

35 U.S.C. 386(a)

or

in the

time limit set forth in the PCT Articles and Regulations.

(G) For a nonprovisional international design application,

the priority claim, unless made in accordance with the Hague Agreement and the Hague

Agreement Regulations, must be presented in an application data sheet during the

pendency of the application. See

37 CFR 1.55(m)

. In addition, the

right of priority under

35 U.S.C. 386(a)

or

(b)

with respect to an international design application can

only be claimed in a nonprovisional, international, or international design

application filed on or after May 13, 2015. See

37 CFR

1.55(o)

.

(H) In the case where the basis of the claim is an

application for an inventor's certificate, the requirements of

37 CFR

1.55(l)

must also be met. See

MPEP §

213.05

.

(I) A certified copy of the foreign application must be

filed within the time period set forth in

37 CFR 1.55

. See

MPEP §

215.02

et seq.

for applications filed on or after March 16, 2013, and

MPEP §

215.03

for applications filed before March 16, 2013. The

claim for priority and the certified copy of the foreign application must, in any

event, be filed within the pendency of the application and before the patent is

granted. See

MPEP § 213.04

.

(J) If a nonprovisional application (other than a

nonprovisional international design application) filed on or after March 16, 2013,

claims priority to a foreign application filed prior to March 16, 2013, and also

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

effective filing date (as defined in

35 U.S.C. 100(i)

) on or after

March 16, 2013, the applicant must provide a statement to that effect within a

specified time period. See

37 CFR 1.55(k)

and

MPEP §

210

, subsection III.

Applicant may be informed of possible priority rights under

35 U.S.C.

119(a)

-

(d)

and

(f)

by using the

wording of form paragraph

2.18

.