1893.03(c) The Priority Date, Priority Claim, and Priority Papers for a U.S. National Stage Application [R-10.2019]

A U.S. national stage application may be entitled to: (A) a right of priority under 35 U.S.C. 119(a) and 365(b) based on a prior foreign application or international application designating at least one country other than the United States; and (B) the benefit of an earlier filed U.S. national application or international application designating the United States pursuant to 35 U.S.C. 119(e) or 35 U.S.C. 120 and 365(c).

I. RIGHT OF PRIORITY UNDER 35 U.S.C. 119(a) and 365(b)

Pursuant to 35 U.S.C. 365(b) a U.S. national stage application shall be entitled to a right of priority based on a prior foreign application or international application designating at least one country other than the United States in accordance with the conditions and requirements of 35 U.S.C. 119(a) and the treaty and the PCT regulations. See in particular PCT Article 8 and PCT Rules 4.10 and 26bis. To obtain priority in the U.S. national stage application to such applications, the priority must have been timely claimed in the international stage of the international application. See 37 CFR 1.55(d)(2). In the event that a claim of foreign priority is not timely made in the international stage, the priority claim may be made in the U.S. national stage application upon petition under 37 CFR 1.55(e), if the entire delay between the date the priority claim was due under PCT Rule 26bis and the date the claim is filed is unintentional.

Note that in U.S. national stage applications it is permissible, but not required, to present the claim for priority in an application data sheet. A proper claim for priority will be acknowledged (subject to the paragraph below) and the national stage application file will then be checked to see if the file contains a copy of the certified copy of the priority document submitted to the International Bureau. See subsection II below for further information concerning the certified copy of the priority document.

International applications filed on or after April 1, 2007 are subject to amended PCT Rules permitting restoration of a right of priority. See MPEP § 1828.01. Consequently, international applications filed on or after April 1, 2007 may claim priority to a foreign application filed more than 12 months before the filing date of the international application. Such a priority claim will be effective in the U.S. national stage if the right of priority has been restored under PCT Rule 26bis.3 during the international stage. See 37 CFR 1.55(c).

Furthermore, the right of priority may be restored in a U.S. national stage application upon petition under 37 CFR 1.55(c). Restoration of the right of priority upon petition under 37 CFR 1.55(c) is not limited to applications having an international filing date of April 1, 2007 or later. It should be noted that where a petition under 37 CFR 1.55(c) is necessary to restore the right of priority in a U.S. national stage application, a petition under 37 CFR 1.55(e) to add a delayed priority claim will also be required where the priority claim was not properly made within the time limit set forth in the PCT and the Regulations under the PCT. 37 CFR 1.55(d)(2).

For a comparison with 35 U.S.C. 119(a) – (d) priority claims in a national application filed under 35 U.S.C. 111(a), see MPEP § 1895.01.

II. THE CERTIFIED COPY

The requirement in PCT Rule 17 for a certified copy of the foreign priority application is normally fulfilled by applicant providing a certified copy to the receiving Office or to the International Bureau, or by applicant requesting the receiving Office to prepare and transmit the priority document to the International Bureau if the receiving Office issued the priority document, or by applicant requesting the International Bureau to obtain the priority document from a digital library. Pursuant to PCT Rule 17.1(a), (b) or (b-bis), applicant must submit the certified copy, request the receiving Office to prepare and transmit the certified copy or request the International Bureau to obtain the priority document from a digital library, within 16 months from the priority date. Where applicant has complied with PCT Rule 17, the International Bureau will forward a copy of the certified priority document to each Designated Office that has requested such document with an indication that the priority document was submitted in compliance with the rule and the date the document was received by the International Bureau. This indication may be in the form of either a cover sheet attached to the copy of the priority document or a WIPO stamp on the face of the certified copy. The U.S. Patent and Trademark Office, as a Designated Office, will normally request the International Bureau to furnish the copy of the certified priority document upon receipt of applicant’s submission under 35 U.S.C. 371 to enter the U.S. national phase. The copy from the International Bureau is placed in the U.S. national stage file. The copy of the priority document received from the International Bureau with either of the indications above is acceptable to establish that applicant has filed a certified copy of the priority document in compliance with 37 CFR 1.55(f). The examiner should acknowledge in the next Office action that the copy of the certified copy of the foreign priority document has been received in the national stage application from the International Bureau.

On the following pages, note the examples of acceptable indications in the form of:

• (A) a cover sheet indicating receipt by the International Bureau on 12 April 2018 (12.04.2018) and compliance with PCT Rule 17.1(a), (b) or (b-bis) in the “Remark” section; and
• (B) the stamp (box) in the upper right hand section indicating receipt by the International Bureau (WIPO) on 30 December 2002 and the stamped indication “PRIORITY DOCUMENT SUBMITTED OR TRANSMITTED IN COMPLIANCE WITH RULE 17.1(a) OR (b).”

If the International Bureau is unable to forward a copy of the certified priority document to the U.S. Patent and Trademark Office, then applicant must provide a certified copy of the priority document during the national stage, unless the requirements of 37 CFR 1.55(h) or 37 CFR 1.55(i) have been met. For international applications in which the U.S. national stage commenced under 35 U.S.C. 371 on or after December 18, 2013, applicant must submit the certified copy within the later of four months from the date of entry into the U.S. national stage as set forth in 37 CFR 1.491 or sixteen months from the filing date of the prior-filed foreign application. See 37 CFR 1.55(f)(2). A delay in filing the certified copy under 37 CFR 1.55(f)(2) may be excused upon petition under 37 CFR 1.55(f)(3). The International Bureau may not forward a copy of the priority document because the certified priority document was not furnished in compliance with PCT Rule 17.1(a), (b) or (b-bis) or applicant requested examination to begin pursuant to 35 U.S.C. 371(f) prior to availability of the priority document from the International Bureau. If the priority claim was not in accordance with PCT Rule 4.10 or the priority document was not provided in accordance with PCT Rule 17.1(a), (b) or (b-bis), the copy of the priority document will not have been provided by the International Bureau. If a copy of the foreign priority document is not in the national stage application file but applicant asserts that a certified copy of the priority document was timely furnished under PCT Rule 17 in the international phase, then the examiner should consult with a Quality Assurance Specialist in his or her Technology Center or a PCT Special Program Examiner.

III. BENEFIT CLAIM UNDER 35 U.S.C. 119(e), OR 120 AND 365(c)

A national stage application may include a benefit claim under 35 U.S.C. 119(e), or 120 and 365(c) to a prior U.S. national application or under 35 U.S.C. 120 and 365(c) to a prior international application designating the U.S. The conditions for according benefit under 35 U.S.C. 120 are as described in MPEP §§ 201.07, 201.08, and 211et seq. and are similar regardless of whether the U.S. national application is a national stage application submitted under 35 U.S.C. 371 or a national application filed under 35 U.S.C. 111(a).

The conditions for according benefit of a provisional application under 35  U.S.C. 119(e) are also similar for national stage applications and applications filed under 35 U.S.C. 111(a), and the conditions are described in MPEP § 211.01(a).

In order for a national stage application (of international application “X”) to obtain benefit under 35 U.S.C. 119(e) of a prior U.S. provisional application, the national stage application must comply with the requirements set forth in 37 CFR 1.78(a). 37 CFR 1.78(a)(2) requires that the prior provisional application must be entitled to a filing date as set forth in 37 CFR 1.53(c), and the basic filing fee set forth in 37 CFR 1.16(d) must be paid on the provisional application within the time period set forth in 37 CFR 1.53(g). Additionally, the provisional application must name as an inventor at least one inventor named in the later filed international application “X” and disclose the named inventor’s invention claimed in at least one claim of the national stage application in the manner provided by the first paragraph of 35 U.S.C. 112. The national stage application must contain a reference to the provisional application identifying it as a provisional application, and including the provisional application number (series code and serial number). If the national stage application has an international filing date prior to September 16, 2012, then the reference must be in either an application data sheet (37 CFR 1.76) or in the first sentence(s) of the specification. See pre-AIA 37 CFR 1.78(a)(5)(iii). If the national stage application has an international filing date that is on or after September 16, 2012, then the reference must be in an application data sheet (37 CFR 1.76). See 37 CFR 1.78(a)(3). However, the requirement for inclusion of the benefit claim in an application data sheet will be satisfied in a U.S. national stage application by the presentation of such benefit claim in the PCT request form contained in the international application or the presence of such benefit claim on the front page of the published international application. See 37 CFR 1.76(g). The required reference to the earlier provisional application must be submitted within the time period provided by 37 CFR 1.78(a)(4). This time period is not extendable. However, if the entire delay, between the date the claim was due under 37 CFR 1.78(a)(4) and the date the claim was filed, was unintentional, a petition under 37 CFR 1.78(c) may be filed to accept the delayed claim. If the provisional application was filed in a language other than English, an English-language translation of the non-English language provisional application and a statement that the translation is accurate will be required. See MPEP § 211.01(a). If the translation and statement that the translation is accurate were not filed in the provisional application or in the later-filed national stage application before November 25, 2005, applicant will be notified and given a period of time within which to file an English-language translation and a statement that the translation is accurate in the provisional application, and a reply in the national stage application that the translation and statement were filed in the provisional application. Failure to timely reply to such a notice will result in abandonment of the national stage application. See 37 CFR 1.78(a)(5).

Public Law 106-113 amended 35 U.S.C. 119(e) to eliminate the copendency requirement for a nonprovisional application claiming benefit of a provisional application. 35 U.S.C. 119(e)(2) as amended became effective on November 29, 1999 and applies to provisional applications filed on or after June 8, 1995. An international application claiming benefit under 35 U.S.C. 365(c) and 35 U.S.C. 119(e) to a prior filed provisional application must be filed within twelve months of the filing date of the provisional application. The Director may extend the twelve month statutory period by an additional two months in situations where the failure to file the international application under 35 U.S.C. 363 was unintentional. See 35 U.S.C. 119(e).

International applications filed on or after April 1, 2007 are subject to amended PCT Rules permitting restoration of a right of priority. See MPEP § 1828.01. Consequently, international applications filed on or after April 1, 2007 may claim the benefit of a provisional application filed more than 12 months before the filing date of the international application. Such a benefit claim will be effective in the U.S. national stage if the benefit of the provisional application has been restored under PCT Rule 26bis.3 during the international stage. See 37 CFR 1.78(b).

Furthermore, the benefit of a provisional application may be restored in a U.S. national stage application upon petition under 37 CFR 1.78(b). Restoration of the benefit of a provisional application upon petition under 37 CFR 1.78(b) is not limited to applications having an international filing date of April 1, 2007 or later. It should be noted that where a petition under 37 CFR 1.78(b) is necessary to restore the benefit of a provisional application in a U.S. national stage application, a petition under 37 CFR 1.78(c) to add a delayed benefit claim will also be required, unless the benefit claim was timely made under 37 CFR 1.78(a)(4) (which includes, inter alia, making the benefit claim during the international stage).

In order for a national stage application (of international application “X”) to obtain benefit under 35 U.S.C. 120 and 365(c) of a prior filed copending nonprovisional application or prior filed copending international application designating the United States of America, the national stage application must comply with the requirements set forth in 37 CFR 1.78(d). The prior nonprovisional application or international application must name as an inventor at least one inventor named in the later filed international application “X” and disclose the named inventor’s invention claimed in at least one claim of the national stage application in the manner provided by the first paragraph of 35 U.S.C. 112. The national stage application must contain a reference to the prior nonprovisional or international application identifying it by application number (series code and serial number) or international application number and international filing date and indicating the relationship of the applications. If the national stage application has an international filing date prior to September 16, 2012, then the reference must be in either an application data sheet (37 CFR 1.76) or in the first sentence(s) of the specification. See pre-AIA 37 CFR 1.78(a)(2)(iii). If national stage application has an international filing date that is on or after September 16, 2012, then the reference must be in an application data sheet (37 CFR 1.76). See 37 CFR 1.78(d)(2). However, the requirement for inclusion of the benefit claim in an application data sheet will be satisfied in a U.S. national stage application by the presentation of such benefit claim in the PCT Request form contained in the international application or the presence of such benefit claim on the front page of the published international application. See 37 CFR 1.76(g). The required reference to the earlier filed application must be submitted within the time period set forth in 37 CFR 1.78(d)(3). This time period is not extendable and failure to timely submit the required reference to the earlier application will be considered a waiver of any benefit under 35 U.S.C. 120, 121, or 365(c) to such prior-filed application. See 37 CFR 1.78(d)(3). However, if the entire delay, between the date the claim was due under 37 CFR 1.78(d)(3) and the date the claim was filed, was unintentional, a petition under 37 CFR 1.78(e) may be filed to accept the delayed claim.

A prior filed nonprovisional application is copending with the national stage application if the prior U.S. national application was pending on the international filing date of the national stage application.

A prior-filed international application designating the United States of America is copending with the national stage application if the prior international application was not abandoned or withdrawn, either generally or as to the United States, on the international filing date of the national stage application.

Note: a national stage application submitted under 35 U.S.C. 371 may not claim benefit of the filing date of the international application of which it is the national stage since its filing date is the international filing date of the international application. See also MPEP § 1893.03(b). Stated differently, since the international application is not an earlier application (it has the same filing date as the national stage), a benefit claim under 35 U.S.C. 120 in the national stage to the international application is inappropriate.

For a comparison with 35 U.S.C. 120 benefit claims in a national application filed under 35 U.S.C. 111(a), see MPEP § 1895.