213.03 Time for Filing U.S. Nonprovisional Application [R-07.2022]

Created OnMay 31, 2023

byChhabra Law Firm

The United States nonprovisional application must be filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, unless the right of priority has been restored, or the nonprovisional application must be entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of an application that was filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, unless the right of priority has been restored. See 37 CFR 1.55(c) and subsection III, below. This twelve-month period is subject to 35 U.S.C. 21(b) (and 37 CFR 1.7(a)) and PCT Rule 80.5, and the six month period is subject to 35 U.S.C. 21(b), 37 CFR 1.7(a), and Hague Agreement Rule 4(4).

35 U.S.C. 21(b) and 37 CFR 1.7(a) provide that when the day, or the last day, for taking an action (e.g., filing a nonprovisional application within twelve months of the date on which the foreign application was filed) or paying a fee in the Office falls on Saturday, Sunday, or a federal holiday within the District of Columbia, the action may be taken, or fee paid, on the next succeeding secular or business day. PCT Rule 80.5 has similar provisions relating to the expiration of any period during which any document or fee in an international application must reach a national Office or intergovernmental organization. Hague Agreement Rule 4(4) provides that if the period expires on a day on which the International Bureau or the office concerned is not open to the public, the period shall expire on the first subsequent day on which the International Bureau or the office concerned is open to the public.

In computing this twelve months (or six months in the case of a design application), the first day is not counted; thus, if an application was filed in Canada on January 3, 1983, the U.S. nonprovisional application may be filed on January 3, 1984. The Paris Convention specifies in Article 4C(2) that “the day of filing is not counted in this period.” (This is the usual method of computing periods, for example a 6-month period for reply to an Office action dated January 2 does not expire on July 1, but the reply may be made on July 2.) If the last day of the twelve months is a Saturday, Sunday, or federal holiday within the District of Columbia, the U.S. non-provisional application is in time if filed on the next succeeding business day; thus, if the foreign application was filed on September 4, 1981, the U.S. nonprovisional application is in time if filed on September 7, 1982, since September 4, 1982, was a Saturday and September 5, 1982 was a Sunday and September 6, 1982 was a federal holiday. In view of 35 U.S.C. 21, and the Paris Convention which provides “if the last day of the period is an official holiday, or a day on which the Office is not open for the filing of applications in the country where protection is claimed, the period shall be extended until the first following working day” (Article 4C(3)), if the twelve months expires on Saturday, the U.S. application may be filed on the following Monday. Note Ex parte Olah, 131 USPQ 41 (Bd. App. 1960). See, e.g., Dubost v. U.S. Patent and Trademark Office, 777 F.2d 1561, 1562, 227 USPQ 977, 977 (Fed. Cir. 1985).

I. FILING OF PAPERS DURING UNSCHEDULED CLOSINGS OF THE U.S. PATENT AND TRADEMARK OFFICE

37 CFR 1.9(h) provides that the definition of “Federal holiday within the District of Columbia” includes an official closing of the Office. When the entire U.S. Patent and Trademark Office is officially closed for business for an entire day, for reasons due to adverse weather or other causes, the Office will consider each such day a “Federal holiday within the District of Columbia” under 35 U.S.C. 21. Any action or fee due on such a day may be taken, or fee paid, on the next succeeding business day the Office is open. In addition, 37 CFR 1.6(a)(1) provides “[t]he U.S. Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia” to clarify that any day that is a Saturday, Sunday or federal holiday within the District of Columbia is a day that the U.S. Patent and Trademark Office is not open for the filing of applications within the meaning of Article 4C(3) of the Paris Convention. Note further that in accordance with 37 CFR 1.6(a)(2), even when the Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or federal holiday within the District of Columbia, correspondence deposited as Priority Mail Express^® with the USPS in accordance with 37 CFR 1.10 or filed via the USPTO patent electronic filing system will be considered filed on the date of its deposit, regardless of whether that date is a Saturday, Sunday or federal holiday within the District of Columbia (under 35 U.S.C. 21(b) or 37 CFR 1.7).

When the U.S. Patent and Trademark Office is open for business during any part of a business day between 8:30 a.m. and 5:00 p.m., papers are due on that day even though the Office may be officially closed for some period of time during the business day because of an unscheduled event. The procedures of 37 CFR 1.10 may be used for filing applications. Information regarding whether or not the Office is officially closed on any particular day may be obtained by calling 1-800-PTO-9199 or (571) 272-1000.

II. FIRST FOREIGN APPLICATION

The twelve months is from earliest foreign filing except as provided in 35 U.S.C. 119(c). If an inventor has filed an application in France on October 4, 1981, and an identical application in the United Kingdom on March 3, 1982, and then files in the United States on February 2, 1983, the inventor is not entitled to the right of priority at all; the inventor would not be entitled to the benefit of the date of the French application since this application was filed more than twelve months before the U.S. application, and the inventor would not be entitled to the benefit of the date of the United Kingdom application since this application is not the first one filed. Ahrens v. Gray, 1931 C.D. 9, 402 O.G. 261 (Bd. App. 1929). If the first foreign application was filed in a country which is not recognized with respect to the right of priority, it is disregarded for this purpose. 35 U.S.C. 119(c) extends the right of priority to “subsequent” foreign applications if one earlier filed had been withdrawn, abandoned, or otherwise disposed of, under certain conditions.

The United Kingdom and a few other countries have a system of “post-dating” whereby the filing date of an application is changed to a later date. This “post-dating” of the filing date of the application does not affect the status of the application with respect to the right of priority; if the original filing date is more than one year prior to the U.S. filing no right of priority can be based upon the application. See In re Clamp, 151 USPQ 423 (Comm’r Pat. 1966).

If an applicant has filed two foreign applications in recognized countries, one outside the year and one within the year, and the later application discloses additional subject matter, a claim in the U.S. application specifically limited to the additional disclosure would be entitled to the date of the second foreign application since this would be the first foreign application for that subject matter.

III. RESTORING THE RIGHT OF PRIORITY

Effective December 18, 2013, title II of the Patent Law Treaties Implementation Act (PLTIA) provides for restoration of the right of priority under 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) or (b). As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional. Thus, an application may now validly claim priority under 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) or (b), or 386(a) or (b) to a foreign application filed up to fourteen months earlier (or eight months earlier in the case of a design application). As a result of title I of the PLTIA, 37 CFR 1.55(c) was amended effective May 13, 2015, to provide that restoration of the right of priority is available for priority claims under 35 U.S.C. 386(a) or (b). In addition, 37 CFR 1.55(c) was amended to provide that a petition to restore the right of priority filed on or after May 13, 2015, must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application.

A petition under 37 CFR 1.55(c) requires:

(A) the priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) in an application data sheet, 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 in an application data sheet);
(B) the petition fee as set forth in 37 CFR 1.17(m); and
(C) a statement that the delay in filing the subsequent application within the twelve-month period (or six-month period in the case of a design application) set forth in 37 CFR 1.55(b) was unintentional.

The Director may require additional information where there is a question whether the delay was unintentional.

Where the subsequent application is not a nonprovisional application, the Office may not have an application file established for the subsequent application. This would occur, for example, where an international application designating the United States was filed in a foreign Receiving Office and the applicant filed a continuation of an international application under 35 U.S.C. 111(a) rather than entering the national stage under 35 U.S.C. 371. Thus, in this situation, the petition under 37 CFR 1.55(c) may be filed in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application. However, the statement required under 37 CFR 1.55(c)(3) must still relate to the unintentional delay in filing the subsequent application, i.e., the international application.

If a petition under 37 CFR 1.55(c) to restore the right of priority is granted, a further petition under 37 CFR 1.55(c) is not required in an application entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of the subsequent application for which the right of priority was restored. A copy of the decision granting the petition should be filed with any application claiming the benefit of the subsequent application and the foreign application to ensure that the Office recognizes that the right of priority has been restored.

It should be noted that although an application may now validly claim priority under 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) or (b), or 386(a) or (b) to a foreign application filed up to fourteen months earlier (or eight months earlier in the case of a design application) in view of the restoration provision of 37 CFR 1.55(c), an application subject to examination under pre-AIA first to invent laws (rather than the first inventor to file provisions of the AIA) would still be subject to the 12-month statutory time periods in pre-AIA 35 U.S.C. 102(b) and (d) which are measured from the U.S. filing date. Thus, the application may still be subject to a rejection under pre-AIA 35 U.S.C. 102(b) or (d) despite the priority claim. See MPEP §§ 2133 and 2135et seq.