213.01 Recognized Countries and Regional Patent Offices of Foreign Filing [R-10.2019]

The right to rely on a foreign application is known as the right of priority in international patent law and this phrase has been adopted in the U.S. statute. The right of priority originated in a multilateral treaty of 1883, to which the United States adhered in 1887, known as the Paris Convention for the Protection of Industrial Property (Paris Convention). The treaty is administered by the World Intellectual Property Organization (WIPO) at Geneva, Switzerland. This treaty has been revised several times, the latest revision in effect being written in Stockholm in July 1967 (copy at Appendix P of this Manual). Articles 13-30 of the Stockholm Revision became effective on September 5, 1970. Articles 1-12 of the Stockholm Revision became effective on August 25, 1973. One of the many provisions of the Paris Convention requires each of the adhering countries to accord the right of priority to the nationals of the other countries and the first United States statute relating to this subject was enacted to carry out this obligation. A foreign country may also provide for this right by reciprocal legislation.

I. LIST OF RECOGNIZED COUNTRIES

Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a)–(d) has been recognized. The table indicates whether a basis for priority is that the state is party to the Patent Cooperation Treaty (PCT) or the Paris Convention for the Protection of Industrial Property (Paris), or a member of the World Trade Organization (WTO). See 35 U.S.C. 119(a). See www.wipo.int/pct/en/paris_wto_pct.html for the most current version of the table reproduced below. See also www.wto.org/english/thewto_e/whatis_e/tif_e/ org6_e.htm for a current list of WTO member countries along with their dates of membership. Applications for plant breeder’s rights filed in WTO member countries and foreign UPOV contracting parties may be relied upon for priority pursuant to 35 U.S.C. 119(f). See MPEP §§ 1612 and 1613.

Note that the United States and Taiwan signed an agreement on priority for patent and trademark applications on April 10, 1996, and as of that date Taiwan is a country for which the right of priority is recognized in the United States. Taiwan became a member of the WTO on January 1, 2002.

If any applicant asserts the benefit of the filing date of an application filed in a country not on this list, the examiner should contact the Office of Policy and International Affairs to determine if there has been any change in the status of that country. It should be noted that the right is based on the country of the foreign filing and not upon the citizenship of the applicant.

II. RIGHT OF PRIORITY BASED UPON AN INTERNATIONAL APPLICATION FILED UNDER THE PATENT COOPERATION TREATY

35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States. Of course, the conditions prescribed by 35 U.S.C. 119(a)–(d), which deals with the right of priority based on earlier filed foreign applications, must be complied with.

35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application. The international application upon which the claim of priority is based can either have been filed in the United States or a foreign country; however, it must contain the designation of at least one country other than, or in addition to, the United States.

As far as the actual place of filing is concerned, for the purpose of 35 U.S.C. 365(a) and (b) and 35 U.S.C. 119(a)–(d) and (f), an international application designating a country is considered to be a national application regularly filed in that country on the international filing date irrespective of whether it was physically filed in that country, in another country, or in an intergovernmental organization acting as Receiving Office for a country.

III. RIGHT OF PRIORITY BASED UPON AN INTERNATIONAL DESIGN APPLICATION

Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)–(d) and 172 with respect to a prior international design application that designates at least one country other than the United States. Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)–(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States. The provisions of 35 U.S.C. 386(a) and (b) apply to nonprovisional applications, international applications (PCT) and international design applications filed on or after May 13, 2015, and patents issued therefrom. See 37 CFR 1.55(o) and MPEP §§ 213et seq. and 1504.10.

See MPEP § 2920.05(d) for additional information pertaining to the right of priority based upon an international design application.

IV. RIGHT OF PRIORITY (35 U.S.C. 119(a)-(d), 365(a)-(b), AND 386(a)-(b)) BASED ON A FOREIGN APPLICATION FILED UNDER A BILATERAL OR MULTILATERAL TREATY

Under Article 4A of the Paris Convention for the Protection of Industrial Property, a right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design filed under the national law of a foreign country adhering to the Convention, or on a foreign application filed under a bilateral or multilateral treaty concluded between two or more such countries. Examples of such treaties pertaining to the protection of designs are The Hague Agreement Concerning the International Registration of Industrial Designs, the Benelux Designs Convention, and the Office for Harmonization in the Internal Market (OHIM) as created under European Union law. Treaties pertaining to utility and/or plant patents include The Convention on the Grant of European Patents (which established the European Patent Office), the Patent Cooperation Treaty, and the International Convention for the Protection of New Varieties of Plants (UPOV).

In addition to the list of recognized countries set forth in subsection I, above, applicants may claim priority under 35 U.S.C. 119(a)–(d) to applications filed in foreign regional patent offices having member states who are members of the Paris Convention. These include the African Regional Intellectual Property Organization (ARIPO), the Eurasian Patent Office (EAPO), the European Patent Office (EPO), the Gulf Cooperation Council (GCC) Patent Office, and the African Intellectual Property Organization (known under the acronym OAPI for its French name, Organisation Africaine de la Propriété Intellectuelle).