Claiming Priority and Filing a Certified Copy in a National Stage Application (35 U.S.C. 371)

37 CFR 1.55 Claim for foreign priority.

*****

(d)

Time for filing priority claim—

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(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.

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(f)

Time for filing certified copy of foreign application—

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(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.

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PCT Rule 4

The Request (Contents)

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4.10 Priority Claim

(a) Any declaration referred to in

Article 8(1)

(“priority claim”) may claim the priority

of one or more earlier applications filed either in or for any country party to

the Paris Convention for the Protection of Industrial Property or in or for any

Member of the World Trade Organization that is not party to that Convention.

Any priority claim shall be made in the request; it shall consist of a

statement to the effect that the priority of an earlier application is claimed

and shall indicate:

or more earlier applications filed either in or for any country party to

the Paris Convention for the Protection of Industrial Property or in or for any

Member of the World Trade Organization that is not party to that Convention.

Any priority claim shall be made in the request; it shall consist of a

statement to the effect that the priority of an earlier application is claimed

and shall indicate:

(i) the date on which the earlier application was

filed;

(ii) the number of the earlier application;

(iii) where the earlier application is a national

application, the country party to the Paris Convention for the Protection

of Industrial Property or the Member of the World Trade Organization that

is not party to that Convention in which it was filed;

(iv) where the earlier application is a regional

application, the authority entrusted with the granting of regional

patents under the applicable regional patent treaty;

(v) where the earlier application is an international

application, the receiving Office with which it was filed.

(b) In addition to any indication required under paragraph

(a)(iv) or (v):

(i) where the earlier application is a regional

application or an international application, the priority claim may

indicate one or more countries party to the Paris Convention for the

Protection of Industrial Property for which that earlier application was

filed;

(ii) where the earlier application is a regional

application and at least one of the countries party to the regional

patent treaty is neither party to the Paris Convention for the Protection

of Industrial Property nor a Member of the World Trade Organization, the

priority claim shall indicate at least one country party to that

Convention or one Member of the Organization for which that earlier

application was filed.

(c) For the purposes of paragraphs (a) and (b),

Article

2(vi)

shall not apply.

ty to the regional

patent treaty is neither party to the Paris Convention for the Protection

of Industrial Property nor a Member of the World Trade Organization, the

priority claim shall indicate at least one country party to that

Convention or one Member of the Organization for which that earlier

application was filed.

(c) For the purposes of paragraphs (a) and (b),

Article

2(vi)

shall not apply.

(d) If, on September 29, 1999, paragraphs (a) and (b) as

amended with effect from January 1, 2000, are not compatible with the national

law applied by a designated Office, those paragraphs as in force until December

31, 1999, shall continue to apply after that date in respect of that designated

Office for as long as the said paragraphs as amended continue not to be

compatible with that law, provided that the said Office informs the

International Bureau accordingly by October 31, 1999. The information received

shall be promptly published by the International Bureau in the Gazette.

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PCT Rule 17

The Priority Document

17.1. Obligation to Submit Copy of Earlier National or International

Application

(a) Where the priority of an earlier national or

international application is claimed under

Article 8

, a copy of that

earlier application, certified by the authority with which it was filed (“the

priority document”), shall, unless that priority document has already been

filed with the receiving Office together with the international application in

which the priority claim is made, and subject to paragraphs (b) and

(b

-bis

), be submitted by the applicant to the

International Bureau or to the receiving Office not later than 16 months after

the priority date, provided that any copy of the said earlier application which

is received by the International Bureau after the expiration of that time limit

shall be considered to have been received by that Bureau on the last day of

that time limit if it reaches it before the date of international publication

of the international application.

the receiving Office not later than 16 months after

the priority date, provided that any copy of the said earlier application which

is received by the International Bureau after the expiration of that time limit

shall be considered to have been received by that Bureau on the last day of

that time limit if it reaches it before the date of international publication

of the international application.

(b) Where the priority document is issued by the

receiving Office, the applicant may, instead of submitting the priority

document, request the receiving Office to prepare and transmit the priority

document to the International Bureau. Such request shall be made not later than

16 months after the priority date and may be subjected by the receiving Office

to the payment of a fee.

(c) If the requirements of none of the three

preceding paragraphs are complied with, any designated Office may, subject to

paragraph (d), disregard the priority claim, provided that no designated Office

shall disregard the priority claim before giving the applicant an opportunity

to furnish the priority document within a time limit which shall be reasonable

under the circumstances.

(d) No designated Office shall disregard the priority

claim under paragraph (c) if the earlier application referred to in paragraph

(a) was filed with it in its capacity as national Office or if the priority

document is, in accordance with the Administrative Instructions, available to

it from a digital library.

17.2. Availability of Copies

(a) Where the applicant has complied with

Rule

17.1(a)

,

.

(d) No designated Office shall disregard the priority

claim under paragraph (c) if the earlier application referred to in paragraph

(a) was filed with it in its capacity as national Office or if the priority

document is, in accordance with the Administrative Instructions, available to

it from a digital library.

17.2. Availability of Copies

(a) Where the applicant has complied with

Rule

17.1(a)

,

(b)

or

(b

-bis

), the International Bureau shall, at the specific

request of the designated Office, promptly but not prior to the international

publication of the international application, furnish a copy of the priority

document to that Office. No such Office shall ask the applicant himself to

furnish it with a copy. The applicant shall not be required to furnish a

translation to the designated Office before the expiration of the applicable

time limit under

Article 22

. Where the

applicant makes an express request to the designated Office under

Article

23(2)

prior to the international publication of the

international application, the International Bureau shall, at the specific

request of the designated Office, furnish a copy of the priority document to

that Office promptly after receiving it.

(b) The International Bureau shall not make copies of

the priority document available to the public prior to the international

publication of the international application.

(c) Where the international application has been

published under

Article 21

, the

International Bureau shall furnish a copy of the priority document to any

person upon request and subject to reimbursement of the cost unless, prior to

that publication:

(i) the international application was

withdrawn,

(ii) the relevant priority claim was withdrawn

or considered, under

Rule

26bis.2(b)

, not to have been

made.

37 CFR 1.451 The priority claim and priority document in an

international application.

(a) The claim for priority must, subject to paragraph

o any

person upon request and subject to reimbursement of the cost unless, prior to

that publication:

(i) the international application was

withdrawn,

(ii) the relevant priority claim was withdrawn

or considered, under

Rule

26bis.2(b)

, not to have been

made.

37 CFR 1.451 The priority claim and priority document in an

international application.

(a) The claim for priority must, subject to paragraph

(d) of this section, be made on the Request (

PCT Rule

4.10

) in a manner complying with sections 110 and 115 of

the Administrative Instructions.

(b) Whenever the priority of an earlier United States

national application or international application filed with the United States

Receiving Office is claimed in an international application, the applicant may

request in the Request or in a letter of transmittal accompanying the

international application upon filing with the United States Receiving Office

or in a separate letter filed in the United States Receiving Office not later

than 16 months after the priority date, that the United States Patent and

Trademark Office prepare a certified copy of the prior application for

transmittal to the International Bureau (

PCT Article 8

and

PCT Rule

17

). The fee for preparing a certified copy is set forth

in §

1.19(b)(1)

.

(c) If a certified copy of the priority document is

not submitted together with the international application on filing, or, if the

priority application was filed in the United States and a request and

appropriate payment for preparation of such a certified copy do not accompany

the international application on filing or are not filed within 16 months of

the priority date, the certified copy of the priority document must be

furnished by the applicant to the International Bureau or to the United States

Receiving Office within the time limit specified in

PCT Rule

17.1(a)

.

(d) The applicant may correct or add a priority claim

in accordance with

PCT Rule

26bis.1

.

37 CFR

1.55(d)(2)

and

tional application on filing or are not filed within 16 months of

the priority date, the certified copy of the priority document must be

furnished by the applicant to the International Bureau or to the United States

Receiving Office within the time limit specified in

PCT Rule

17.1(a)

.

(d) The applicant may correct or add a priority claim

in accordance with

PCT Rule

26bis.1

.

37 CFR

1.55(d)(2)

and

(f)(2)

pertain to the time for

filing a priority claim and the time for filing a certified copy of a foreign

application in an international application entering the national stage under

35 U.S.C.

371

.

In an international application entering the national

stage under

35 U.S.C.

371

, 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 and the

Regulations under the PCT with limited exceptions. See

MPEP §§

214.02

and

215.02

.

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

application data sheet in an international application entering the national stage under

35 U.S.C.

371

.

An international application which seeks to establish the

right of priority must comply with the conditions and requirements as prescribed by the

Treaty and the PCT Regulations, in order to avoid rejection of the claim to the right of

priority. Reference is especially made to the requirement of making a declaration of the

claim of priority at the time of filing of the international application

(

Article

8(1)

of the Treaty and

Rule 4.10

of the PCT Regulations) or

correcting or adding a priority claim (

PCT Rule 26bis.1

)

and the requirement of either filing a certified copy of the priority document with the

international application, or submitting a certified copy of the priority document to

the International Bureau at a certain time (

Rule 17

of the PCT Regulations)

national application

(

Article

8(1)

of the Treaty and

Rule 4.10

of the PCT Regulations) or

correcting or adding a priority claim (

PCT Rule 26bis.1

)

and the requirement of either filing a certified copy of the priority document with the

international application, or submitting a certified copy of the priority document to

the International Bureau at a certain time (

Rule 17

of the PCT Regulations). The

submission of the priority document to the International Bureau is only required in

those instances where priority is based on an earlier filed foreign

national

application. With respect to the requirements of

37 CFR

1.55

as they pertain to applications entering the national stage

under

35 U.S.C.

371

, if the applicant submitted a certified copy of the foreign

priority document in compliance with

PCT Rule 17

during the international

phase, the International Bureau will forward a copy of the certified priority document

to each Designated Office that has requested a copy of the foreign priority document and

the copy received from the International Bureau is acceptable to establish that

applicant has filed a certified copy of the priority document. See

MPEP § 1893.03(c)

.

If, however, the International Bureau is unable to forward a copy of the certified

priority document because the applicant failed to submit a certified copy of the foreign

priority document during the international phase, the applicant will need to provide a

certified copy of the priority document or have the Office retrieve the priority

application in accordance with the priority document exchange program during the

national stage to fulfill the requirements of

37 CFR 1.55

.

If the priority document is an earlier national

application and did not accompany the international application when filed with the

Receiving Office, an applicant must submit such document to the International Bureau not

later than 16 months after the priority date

ation in accordance with the priority document exchange program during the

national stage to fulfill the requirements of

37 CFR 1.55

.

If the priority document is an earlier national

application and did not accompany the international application when filed with the

Receiving Office, an applicant must submit such document to the International Bureau not

later than 16 months after the priority date. However, should an applicant request early

processing of the international application in accordance with

Article 23(2)

of

the Treaty, the priority document may not be available to the Office at that time

(

Rule

17.2(a)

of the PCT Regulations). Applicants are encouraged to

check Patent Center to verify that the certified copy has been received from the

International Bureau. The formal requirements for obtaining the right of priority under

35 U.S.C.

365

differ somewhat from those imposed by

35 U.S.C.

119(a)

-

(d)

and

(f)

, however, the

substantive right of priority is the same, in that it is derived from

Article 4

of the

Paris Convention for the Protection of Industrial Property (

Article 8(2)

of

the Treaty).

35 U.S.C.

365(c)

recognizes the benefit of the filing date of an earlier

application under

35 U.S.C. 120

. Any international application designating the

United States, whether filed with a Receiving Office in this country or abroad, and even

though other countries may have also been designated, has the effect of a regular

national application in the United States, as of the international filing date. As such,

any later filed national application, or international application designating the

United States, may claim the benefit of the filing date of an earlier international

application designating the United States, if the requirements and conditions of

35 U.S.C.

120

are fulfilled. Under the same circumstances, the benefit of

the earlier filing date of a national application may be obtained in a later filed

international application designating the United States. See

MPEP §

211.01(c)

United States, may claim the benefit of the filing date of an earlier international

application designating the United States, if the requirements and conditions of

35 U.S.C.

120

are fulfilled. Under the same circumstances, the benefit of

the earlier filing date of a national application may be obtained in a later filed

international application designating the United States. See

MPEP §

211.01(c)

.

In those instances, where the applicant relies on an

international application designating, but not originating in, the United States the

Director may require submission of a copy of such application together with an English

translation, since in some instances, and for various reasons, a copy of that

international application or its translation might not otherwise be filed in the U.S.

Patent and Trademark Office.