215.03 Time For Filing Certified Copy – Application Filed Before March 16, 2013 [R-08.2017]

[Editor Note: See MPEP § 215.02 for information regarding the time for filing a certified copy in an application filed on or after March 16, 2013.]

35 U.S.C. 119(b)(3) authorizes the Office to require the applicant to furnish a certified copy of priority papers. Pursuant to 37 CFR 1.55, applicants are required to submit the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 before the patent is granted. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323. See 37 CFR 1.55(g)(1). Certification by the authority empowered under a bilateral or multilateral treaty to receive applications which give rise to a right of priority under Article 4A(2) of the Paris Convention will be deemed to satisfy the certification requirement. See MPEP § 214.01 for the time period for claiming priority to a foreign application.

If a claim for foreign priority has been made, the latest time at which the certified copy of the foreign application may be filed in order for the patent to include the priority claim without the need for a certificate of correction is the date of the payment of the issue fee. Under certain circumstances, the certified copy may be required at an earlier date. These circumstances are specified in 37 CFR 1.55(g)(2) as:

• (A) when the application is involved in an interference or derivation proceeding;
• (B) when necessary to overcome the date of a reference relied on by the examiner; and
• (C) when specifically required by the examiner.

The claim for foreign priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed before the patent is granted. If the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the priority claim or certified copy will be placed in the file record but there will be no review of the papers and the patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the priority claim or certified copy considered after publication of the patent. In addition, for original applications filed under 35 U.S.C. 111(a) (other than a design application), where the priority claim was not timely filed, a grantable petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55(e) and the petition fee must also be filed with the certificate of correction. Furthermore, where the priority claim was timely filed but was not included on the patent because the certified copy was not submitted, a grantable petition under 37 CFR 1.55(f) and the petition fee or, in the case of a design application, a grantable petition under 37 CFR 1.55(g) and the petition fee must also be filed with the certificate of correction unless the exception in 37 CFR 1.55(h) is applicable. See MPEP § 216.01.

In view of the shortened periods for prosecution leading to allowances, it is recommended that priority papers be filed as early as possible. Although 37 CFR 1.55(g)(1) permits the filing of priority papers up to and including the date for payment of the issue fee, it is advisable that such papers be filed promptly after filing the application. Frequently, priority papers are found to be deficient in material respects, such as for example, the failure to include the correct certified copy, and applicants should ensure that there is sufficient time to remedy any defects. For applications filed prior to September 16, 2012, where the priority claim is presented in the oath or declaration, a new oath or declaration may be necessary where the original oath or declaration omits the reference to the foreign filing date for which the benefit is claimed. The early filing of priority papers would thus be advantageous to applicants in that it would afford time to explain any inconsistencies that exist or to supply any additional documents that may be necessary. It is important to note that for applications filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet (37 CFR 1.76(b)(6)).

It is suggested that a notation of the application number of the corresponding U.S. application be placed on the priority papers when such papers are not submitted via a priority document exchange program. Such notation should be placed directly on the priority papers themselves even where a cover letter is attached bearing the U.S. application data. Experience indicates that cover letters and priority papers occasionally become separated, and without the suggested notations on the priority papers, correlating them with the corresponding U.S. application becomes exceedingly difficult, frequently resulting in severe problems for both the Office and applicant. Adherence to the foregoing suggestion for making a notation on the priority document of the U.S. application data will result in a substantial lessening of the problem.