Time for Filing U.S. Nonprovisional Application

The United States nonprovisional application must be 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, unless the right of priority has been

restored, or the nonprovisional application must be entitled to claim the benefit under

35 U.S.C.

120

,

121

,

365(c)

, or

386(c)

of an application that was 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, unless the right of priority has been restored. See

37 CFR

1.55(c)

and subsection III, below. This twelve-month period is

subject to

35 U.S.C.

21(b)

(and

37 CFR 1.7(a)

) and

PCT Rule 80.5

, and

the six month period is subject to

35 U.S.C. 21(b)

,

37 CFR

1.7(a)

, and Hague Agreement Rule 4(4).

35 U.S.C.

21(b)

and

37 CFR 1.7(a)

provide that when the

day, or the last day, for taking an action (e.g., filing a nonprovisional application

within twelve months of the date on which the foreign application was filed) or paying a

fee in the Office falls on Saturday, Sunday, or a federal holiday within the District of

Columbia, the action may be taken, or fee paid, on the next succeeding secular or

business day.

PCT Rule

80.5

has similar provisions relating to the expiration of any

period during which any document or fee in an international application must reach a

national Office or intergovernmental organization. Hague Agreement Rule 4(4) provides

that if the period expires on a day on which the International Bureau or the office

concerned is not open to the public, the period shall expire on the first subsequent day

on which the International Bureau or the office concerned is open to the public.

In computing this twelve months (or six months in the case

of a design application), the first day is not counted; thus, if an application was

filed in Canada on January 3, 1983, the U.S. nonprovisional application may be filed on

January 3, 1984

open to the public, the period shall expire on the first subsequent day

on which the International Bureau or the office concerned is open to the public.

In computing this twelve months (or six months in the case

of a design application), the first day is not counted; thus, if an application was

filed in Canada on January 3, 1983, the U.S. nonprovisional application may be filed on

January 3, 1984. The Paris Convention specifies in

Article 4C(2)

that “the day of filing

is not counted in this period.” (This is the usual method of computing periods, for

example a 6-month period for reply to an Office action dated January 2 does not expire

on July 1, but the reply may be made on July 2.) If the last day of the twelve months is

a Saturday, Sunday, or federal holiday within the District of Columbia, the U.S.

non-provisional application is in time if filed on the next succeeding business day;

thus, if the foreign application was filed on September 4, 1981, the U.S. nonprovisional

application is in time if filed on September 7, 1982, since September 4, 1982, was a

Saturday and September 5, 1982 was a Sunday and September 6, 1982 was a federal holiday.

In view of

35 U.S.C.

21

, and the Paris Convention which provides “if the last day of

the period is an official holiday, or a day on which the Office is not open for the

filing of applications in the country where protection is claimed, the period shall be

extended until the first following working day” (

Article 4C(3)

), if the twelve months

expires on Saturday, the U.S. application may be filed on the following Monday. Note

Ex parte Olah,

131 USPQ 41 (Bd. App. 1960). See, e.g.,

Dubost v. U.S. Patent and Trademark Office,

777 F.2d 1561, 1562,

227 USPQ 977, 977 (Fed. Cir. 1985).

I.

FILING OF PAPERS DURING UNSCHEDULED CLOSINGS OF THE U.S. PATENT AND TRADEMARK

OFFICE

37 CFR

1.9(h)

provides that the definition of “Federal holiday within

the District of Columbia” includes an official closing of the Office. When the entire

U.S

parte Olah,

131 USPQ 41 (Bd. App. 1960). See, e.g.,

Dubost v. U.S. Patent and Trademark Office,

777 F.2d 1561, 1562,

227 USPQ 977, 977 (Fed. Cir. 1985).

I.

FILING OF PAPERS DURING UNSCHEDULED CLOSINGS OF THE U.S. PATENT AND TRADEMARK

OFFICE

37 CFR

1.9(h)

provides that the definition of “Federal holiday within

the District of Columbia” includes an official closing of the Office. When the entire

U.S. Patent and Trademark Office is officially closed for business for an entire day,

for reasons due to adverse weather or other causes, the Office will consider each

such day a “Federal holiday within the District of Columbia” under

35 U.S.C. 21

.

Any action or fee due on such a day may be taken, or fee paid, on the next succeeding

business day the Office is open. In addition,

37 CFR 1.6(a)(1)

provides “[t]he

U.S. Patent and Trademark Office is not open for the filing of correspondence on any

day that is a Saturday, Sunday or Federal holiday within the District of Columbia” to

clarify that any day that is a Saturday, Sunday or federal holiday within the

District of Columbia is a day that the U.S. Patent and Trademark Office is not open

for the filing of applications within the meaning of

Article 4C(3)

of the Paris

Convention. Note further that in accordance with

37 CFR 1.6(a)(2)

, even when the

Office is not open for the filing of correspondence on any day that is a Saturday,

Sunday or federal holiday within the District of Columbia, correspondence deposited

as Priority Mail Express

®

with the USPS in accordance with

37 CFR

1.10

or filed via the USPTO patent electronic filing system

will be considered filed on the date of its deposit, regardless of whether that date

is a Saturday, Sunday or federal holiday within the District of Columbia (under

35 U.S.C.

21(b)

or

37 CFR 1.7

).

When the U.S. Patent and Trademark Office is open for

business during any part of a business day between 8:30 a.m

PS in accordance with

37 CFR

1.10

or filed via the USPTO patent electronic filing system

will be considered filed on the date of its deposit, regardless of whether that date

is a Saturday, Sunday or federal holiday within the District of Columbia (under

35 U.S.C.

21(b)

or

37 CFR 1.7

).

When the U.S. Patent and Trademark Office is open for

business during any part of a business day between 8:30 a.m. and 5:00 p.m., papers

are due on that day even though the Office may be officially closed for some period

of time during the business day because of an unscheduled event. The procedures of

37 CFR

1.10

may be used for filing applications. Information regarding

whether or not the Office is officially closed on any particular day may be obtained

by calling 1-800-PTO-9199 or (571) 272-1000.

II.

FIRST FOREIGN APPLICATION

The twelve months is from earliest foreign filing

except as provided in

35 U.S.C. 119(c)

. If an inventor

has filed an application in France on October 4, 1981, and an identical application

in the United Kingdom on March 3, 1982, and then files in the United States on

February 2, 1983, the inventor is not entitled to the right of priority at all; the

inventor would not be entitled to the benefit of the date of the French application

since this application was filed more than twelve months before the U.S. application,

and the inventor would not be entitled to the benefit of the date of the United

Kingdom application since this application is not the first one filed.

Ahrens v. Gray,

1931 C.D. 9, 402 O.G. 261 (Bd. App. 1929). If

the first foreign application was filed in a country which is not recognized with

respect to the right of priority, it is disregarded for this purpose.

35 U.S.C.

119(c)

extends the right of priority to “subsequent” foreign

applications if one earlier filed had been withdrawn, abandoned, or otherwise

disposed of, under certain conditions.

The United Kingdom and a few other countries have a

system of “post-dating” whereby the filing date of an application is changed to a

later date

spect to the right of priority, it is disregarded for this purpose.

35 U.S.C.

119(c)

extends the right of priority to “subsequent” foreign

applications if one earlier filed had been withdrawn, abandoned, or otherwise

disposed of, under certain conditions.

The United Kingdom and a few other countries have a

system of “post-dating” whereby the filing date of an application is changed to a

later date. This “post-dating” of the filing date of the application does not affect

the status of the application with respect to the right of priority; if the original

filing date is more than one year prior to the U.S. filing no right of priority can

be based upon the application. See

In re Clamp,

151 USPQ 423

(Comm’r Pat. 1966).

If an applicant has filed two foreign applications in

recognized countries, one outside the year and one within the year, and the later

application discloses additional subject matter, a claim in the U.S. application

specifically limited to the additional disclosure would be entitled to the date of

the second foreign application since this would be the first foreign application for

that subject matter.

III.

RESTORING THE RIGHT OF PRIORITY

Effective December 18, 2013, title II of the Patent Law

Treaties Implementation Act (PLTIA) provides for restoration of the right of priority

under

35 U.S.C.

119(a)

through

(d)

and

(f)

,

172

, and

365(a)

or

(b)

. As

provided in

37

CFR 1.55(c)

, if the subsequent application has a filing date

which is after the expiration of the twelve-month period (or six-month period in the

case of a design application), but within two months from the expiration of the

period, the right of priority in the subsequent application may be restored under

PCT Rule

26bis.3

for an international application,

or upon petition under

37 CFR 1.55(c)

, if the delay in

filing the subsequent application within the period was unintentional. Thus, an

application may now validly claim priority under

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

but within two months from the expiration of the

period, the right of priority in the subsequent application may be restored under

PCT Rule

26bis.3

for an international application,

or upon petition under

37 CFR 1.55(c)

, if the delay in

filing the subsequent application within the period was unintentional. Thus, an

application may now validly claim priority under

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

(f)

,

172

,

365(a) or (b)

,

or

386(a)

or (b)

to a foreign application filed up to fourteen months

earlier (or eight months earlier in the case of a design application). As a result of

title I of the PLTIA,

37 CFR 1.55(c)

was amended

effective May 13, 2015, to provide that restoration of the right of priority is

available for priority claims under

35 U.S.C. 386(a)

or

(b)

. In addition,

37 CFR 1.55(c)

was amended to

provide that a petition to restore the right of priority 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.

A petition under

37 CFR 1.55(c)

requires:

(A) 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, 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 in

an application data sheet);

(B) the petition fee as set forth in

37 CFR 1.17(m)

; and

(C) a statement that the delay in filing the

subsequent application within the twelve-month period (or six-month period in

the case of a design application) set forth in

37 CFR

1.55(b)

was unintentional.

The Director may require additional information where

there is a question whether the delay was unintentional

an application data sheet);

(B) the petition fee as set forth in

37 CFR 1.17(m)

; and

(C) a statement that the delay in filing the

subsequent application within the twelve-month period (or six-month period in

the case of a design application) set forth in

37 CFR

1.55(b)

was unintentional.

The Director may require additional information where

there is a question whether the delay was unintentional.

Where the subsequent application is not a

nonprovisional application, the Office may not have an application file established

for the subsequent application. This would occur, for example, where an international

application designating the United States was filed in a foreign Receiving Office and

the applicant filed a continuation of an international application under

35 U.S.C.

111(a)

rather than entering the national stage under

35 U.S.C.

371

. Thus, in this situation, the petition under

37 CFR

1.55(c)

may be filed in the earliest nonprovisional application

claiming benefit under

35 U.S.C. 120

,

121

,

365(c)

, or

386(c)

to the subsequent

application. However, the statement required under

37 CFR

1.55(c)(3)

must still relate to the unintentional delay in

filing the subsequent application, i.e., the international application.

If a petition under

37 CFR

1.55(c)

to restore the right of priority is granted, a further

petition under

37 CFR 1.55(c)

is not required in an application entitled to

claim the benefit under

35 U.S.C. 120

,

121

,

365(c)

, or

386(c)

of the subsequent

application for which the right of priority was restored. A copy of the decision

granting the petition should be filed with any application claiming the benefit of

the subsequent application and the foreign application to ensure that the Office

recognizes that the right of priority has been restored.

It should be noted that although an application may now

validly claim priority under

35 U.S.C. 119(a)

through

(d)

and

(f)

,

172

,

365(a)

or

(b)

, or

386(a)

or

copy of the decision

granting the petition should be filed with any application claiming the benefit of

the subsequent application and the foreign application to ensure that the Office

recognizes that the right of priority has been restored.

It should be noted that although an application may now

validly claim priority under

35 U.S.C. 119(a)

through

(d)

and

(f)

,

172

,

365(a)

or

(b)

, or

386(a)

or

(b)

to a foreign application

filed up to fourteen months earlier (or eight months earlier in the case of a design

application) in view of the restoration provision of

37 CFR

1.55(c)

, an application subject to examination under pre-AIA

first to invent laws (rather than the first inventor to file provisions of the AIA)

would still be subject to the 12-month statutory time periods in

pre-AIA 35 U.S.C.

102(b)

and

(d)

which are measured from the

U.S. filing date. Thus, the application may still be subject to a rejection under

pre-AIA 35

U.S.C. 102(b)

or

(d)

despite the priority claim.

See

MPEP §§

2133

and

2135

et seq.