214 Formal Requirements of Claim for Foreign Priority [R-07.2022]

Under the statute (35 U.S.C. 119(b)), an applicant who wishes to secure the right of priority must comply with certain formal requirements within a time specified. If these requirements are not complied with the right of priority is lost and cannot thereafter be asserted.

The maximum time limit specified in the statute is that the claim for priority and the priority papers must be filed before the patent is granted, but the statute gives the Director authority to set this time limit at an earlier time during the pendency of the application. As a result of implementation of Public Law 112-211, 126 Stat. 1527 (titles I and title II of the Patent Law Treaties Implementation Act (PLTIA)), the procedural requirements relating to claims for priority to an earlier-filed foreign application and to the submission of a certified copy of the priority document were revised. The procedural requirements and the time relating to claims for priority of an earlier filed foreign application are set forth in 37 CFR 1.55. See MPEP § 214.01 for procedural requirements pertaining to filing a claim for priority. See MPEP §§ 215.02–215.03 for timing requirements for submitting a certified copy of the priority application. See MPEP § 213.06 for claiming foreign priority and filing a certified copy of the priority document in a national stage application and MPEP § 213.07 for claiming foreign priority and filing a certified copy of the priority document in a nonprovisional international design application.

Where a claim for priority under 35 U.S.C. 119(b) has not been made in a parent application, the claim for priority may be made in a continuing application provided the parent application has been filed within twelve months from the date of the earliest foreign filing (six months for design applications). See In re Tangsrud, 184 USPQ 746 (Comm’r Pat. 1973). Where the requirements for perfecting priority under 35 U.S.C. 119(a)–(d) or (f) have not been met before the issuance of patent, see 37 CFR 1.55(g) and MPEP § 216.01 for an explanation of when the deficiencies are correctable by a certificate of correction or reissue.

It should be particularly noted that the certified copy must be filed in all cases even though it may not be necessary during the pendency of the application to overcome the date of any reference. The statute also gives the Director authority to require a translation of the foreign documents if not in the English language and such other information as the Director may deem necessary. See MPEP § 213.04 for additional information. If an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) and it must be filed together with a statement that the translation of the certified copy is accurate.