Perfecting Claim for Priority Under 35 U.S.C. 119(a)-(d) or (f) After Issuance of a Patent

35 U.S.C. 119

Benefit of Earlier Filing Date; Right of

Priority.

*****

(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.

*****

37 CFR 1.55 Claim for foreign priority.

*****

(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

ction 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

(b)

, or

386(a)

or

386(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),

py 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.

(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

.

*****

The failure to perfect a claim to foreign priority prior

to issuance of the patent may be cured via a certificate of correction under

35 U.S.C.

255

and

37 CFR 1.323

, provided the

requirements of

37

CFR 1.55

are met, or by filing a reissue application.

Except in certain situations, a certificate of correction

can generally be used to perfect a claim to foreign priority where a petition under

37 CFR

1.55(e)

to accept an unintentionally delayed priority claim is

filed with a request for a certificate of correction in an issued patent. See

MPEP §

214.02

for a discussion of the requirements for the petition.

In situations where further examination would be required, the petition should not be

granted

ction

can generally be used to perfect a claim to foreign priority where a petition under

37 CFR

1.55(e)

to accept an unintentionally delayed priority claim is

filed with a request for a certificate of correction in an issued patent. See

MPEP §

214.02

for a discussion of the requirements for the petition.

In situations where further examination would be required, the petition should not be

granted. For example, further examination would be required where grant of the petition

would cause the patent to be subject to a different statutory framework, e.g., where the

foreign application has a pre-March 16, 2013 filing date in a patent that was examined

under the first inventor to file (FITF) provisions of the AIA. In such situations, the

filing of a reissue application with a petition for an unintentionally delayed priority

claim would be required.

I.

PERFECTING PRIORITY CLAIM VIA CERTIFICATE OF CORRECTION

Effective May 13, 2015,

37 CFR

1.55(g)

provides that the claim for priority and the certified

copy of the foreign application must be filed within the pendency of the application,

unless filed with a petition under

37 CFR 1.55(e)

,

(f)

,

or

(g)

as appropriate.

37 CFR

1.55(g)

eliminates the need in many instances to file a reissue

application in order to perfect a claim for foreign priority. Specifically,

(A) Where the priority claim required under

37 CFR

1.55

was timely filed in the application but was not

included on the patent because the requirement under

37 CFR

1.55

for a certified copy was not satisfied, the patent

may be corrected to include the priority claim via a certificate of correction

under

35

U.S.C. 255

and

37 CFR 1.323

, accompanied

by a grantable petition under

37 CFR 1.55(f)

or, in the

case of a design application, a grantable petition under

37 CFR

1.55(g)

. In this situation, a petition under

37 CFR 1.55(e)

to accept an unintentionally delayed

priority claim is not needed. A grantable petition under

37 CFR

1.55(f)

or

clude the priority claim via a certificate of correction

under

35

U.S.C. 255

and

37 CFR 1.323

, accompanied

by a grantable petition under

37 CFR 1.55(f)

or, in the

case of a design application, a grantable petition under

37 CFR

1.55(g)

. In this situation, a petition under

37 CFR 1.55(e)

to accept an unintentionally delayed

priority claim is not needed. A grantable petition under

37 CFR

1.55(f)

or

(g)

must include the fee

set forth in

37 CFR 1.17(g)

and a

showing of good and sufficient cause for the delay in filing the certified copy

of the foreign application; and

(B) Where a priority claim under

37 CFR

1.55

was not timely made,

37 CFR

1.55(g)

allows the priority claim and the certified copy

required under

37 CFR 1.55

to be filed

pursuant to a petition under

37 CFR 1.55(e)

even if the

application is not pending (e.g., a patented application) in situations where

the correction sought would not require further examination.

37 CFR

1.55(h)

provides that the requirement for a certified copy of

the foreign application will 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 the prior-filed nonprovisional application is identified as containing a

certified copy of the foreign application. Thus, applicant may request a certificate

of correction under

35 U.S.C. 255

and

37 CFR 1.323

where the

prior-filed nonprovisional application is identified as containing a certified copy

of the foreign application and where the priority claim was timely made in the

application claiming benefit under

35 U.S.C. 120

,

121

,

365(c)

, or

386(c)

and the certified copy of

the foreign application was timely filed in the parent application.

As an example of when a request to issue a certificate

of correction may be used in order to perfect a claim to foreign priority benefits,

see

In re Van Esdonk,

187 USPQ 671 (Comm’r Pat. 1975)

priority claim was timely made in the

application claiming benefit under

35 U.S.C. 120

,

121

,

365(c)

, or

386(c)

and the certified copy of

the foreign application was timely filed in the parent application.

As an example of when a request to issue a certificate

of correction may be used in order to perfect a claim to foreign priority benefits,

see

In re Van Esdonk,

187 USPQ 671 (Comm’r Pat. 1975). In

In re Van Esdonk,

a claim to foreign priority benefits had not

been filed in the application prior to issuance of the patent. However, the

application was a continuation of an earlier application in which the requirements of

35 U.S.C.

119(a)

-

(d)

or

(f)

had been

satisfied. Accordingly, the Commissioner held that the “applicants’ perfection of a

priority claim under

35 U.S.C. 119

in the parent

application will satisfy the statute with respect to their continuation application.”

Although

In re Van Esdonk

involved

the patent of a continuation application filed under former

37 CFR 1.60

, it

is proper to apply the holding of that case in similar factual circumstances to any

patented application having benefits under

35 U.S.C. 120

. This is primarily

because a claim to foreign priority benefits in a continuing application, where the

claim has been perfected in the parent application, constitutes in essence a mere

affirmation of the applicant’s previously expressed desire to receive benefits under

35 U.S.C.

119(a)

-

(d)

or

(f)

for subject

matter common to the foreign, parent, and continuing applications.

In summary, a certificate of correction under

35 U.S.C.

255

and

37 CFR 1.323

may be requested and

issued in order to perfect a claim for foreign priority benefit in a patent if (1)

the requirements of

35 U.S.C. 119(a)

-

(d)

or

pplicant’s previously expressed desire to receive benefits under

35 U.S.C.

119(a)

-

(d)

or

(f)

for subject

matter common to the foreign, parent, and continuing applications.

In summary, a certificate of correction under

35 U.S.C.

255

and

37 CFR 1.323

may be requested and

issued in order to perfect a claim for foreign priority benefit in a patent if (1)

the requirements of

35 U.S.C. 119(a)

-

(d)

or

(f)

had been

satisfied in the patented application or in a parent application prior to issuance of

the patent, (2) the requirements of

37 CFR 1.55

are met, and (3) the

correction sought would not require further examination.

II.

PERFECTING PRIORITY CLAIM VIA REISSUE

As an alternative to requesting a certificate of

correction, a claim to foreign priority benefits can be perfected by way of a reissue

application in accordance with the rationale set forth in

Brenner v. State

of Israel,

400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968). In circumstances

where a claim to foreign priority benefits cannot be perfected via a certificate of

correction because the requirements of

35 U.S.C.

119(a)

-

(d)

or

(f)

had not

been satisfied in the patented application, or its parent, prior to issuance, and the

requirements of

37 CFR 1.55

are not met, or where the correction sought would

require further examination (e.g., where the foreign application has a pre-March 16,

2013 filing date in a patent that was examined under the first inventor to file

(FITF) provisions of the AIA) the claim to foreign priority benefits can be perfected

only by way of a reissue application. Note that

37 CFR

1.55(h)

provides that the requirement 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 for a certified copy of

the foreign application and such patent is identified as containing a certified copy

of the foreign application.

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