213.02 Formal Requirements Relating to Foreign Priority Application [R-07.2022]
For original applications filed under 35 U.S.C. 111(a), the claim for foreign priority must identify the foreign application for which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. For international applications entering the national stage as to the Unites States, see MPEP § 213.06. For international design applications designating the United States, see MPEP § 2920.05(d).
For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, the claim for priority must be presented in an application data sheet. See 37 CFR 1.55(d)(1). Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and 37 CFR 1.55. In an international application entering the national stage 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. See 37 CFR 1.55(d)(2). 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. For international design applications designating the United States, the claim for priority must be presented in an application data sheet unless the priority claim was made in accordance with the Hague Agreement and the Hague Agreement Regulations. See 37 CFR 1.55(m).
For applications filed prior to September 16, 2012, the claim to priority need be in no special form, and may be made by a person authorized to sign correspondence under 37 CFR 1.33(b). No special language is required in making the claim for priority, and any expression which can be reasonably interpreted as claiming the benefit of the foreign application is accepted as the claim for priority. For applications filed prior to September 16, 2012, the claim for priority must appear in the oath or declaration under 37 CFR 1.63 or in an application data sheet (37 CFR 1.76). See 37 CFR 1.55(n).
For applications filed on or after September 21, 2004, a claim under 37 CFR 1.55 for priority of a prior-filed foreign application that was present on the filing date of the application is considered an incorporation by reference of the prior-filed foreign priority application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b). The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when all or a portion of the specification and/or drawing(s) is (are) inadvertently omitted from an application. See MPEP §§ 201.06(c) and 217. However, applicants are encouraged to provide an explicit incorporation by reference statement to the prior-filed foreign priority application(s) for which priority is claimed under 37 CFR 1.55 if applicants do not wish the incorporation by reference to be limited to inadvertently omitted material pursuant to 37 CFR 1.57(b). See 37 CFR 1.57(c). Thus, the incorporation by reference statement can be relied upon to permit the entering of a portion of the foreign priority application into the U.S. application when a portion of the foreign priority application has been inadvertently omitted from the U.S. application, or to permit the correction of translation error in the U.S. application where the foreign priority application is in a non-English language. See MPEP § 217 for additional information regarding 37 CFR 1.57(b), and MPEP § 608.01(p) for information regarding incorporation by reference statements. For information regarding 37 CFR 1.57(a) and filing by reference to a previously filed application, see MPEP § 601.01(a), subsection III.
II. THE SAME INVENTOR OR AT LEAST ONE COMMON JOINT INVENTOR
Pursuant to 35 U.S.C. 119(a), the foreign application must have been filed by the same applicant as the applicant in the United States, or by applicant’s legal representatives or assigns. Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common. For example, a right of priority does not exist in the case of an application of sole inventor A in the foreign country and sole inventor B in the United States, even though the two applications may be owned by the same party. The application in the foreign country may have been filed by the assignee, or by the legal representative or agent of the inventor, rather than by the inventor, but in such cases the name of the inventor is usually given in the foreign application on a paper filed therein. Joint inventors A and B in a nonprovisional application filed in the United States Patent and Trademark Office may properly claim the benefit of an application filed in a foreign country by A and another application filed in a foreign country by B, i.e., A and B may each claim the benefit of their foreign filed applications. See MPEP § 602.09 for more information about joint inventors. See MPEP §§ 602.01(c) and 1412.04 for correction of inventorship. If upon filing of the U.S. application and the filing of a relied upon prior-filed foreign application there is an overlap in appropriately named inventorship, an application can properly claim right of priority of the prior filed application’s filing date pursuant to 35 U.S.C. 119. See 37 CFR 1.45, 1.48 and 1.78.
III. TRANSITION APPLICATION STATEMENT
If a nonprovisional application filed on or after March 16, 2013, claims priority to a foreign application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date (as defined in 35 U.S.C. 100(i)) on or after March 16, 2013, the applicant must provide a statement to that effect within a specified time period. See 37 CFR 1.55(k) and MPEP § 210, subsection III. Nonprovisional international design applications are excluded from the transition provision of 37 CFR 1.55(k), as such applications can only be filed on or after May 13, 2015.