2258.02 Claiming Foreign Priority and Domestic Benefit in Reexamination [R-08.2017]

Created OnMay 31, 2023

byChhabra Law Firm

The patent owner may correct the failure to adequately claim foreign priority or domestic benefit in a patent to be reexamined during reexamination in accordance with the guidelines set forth in this section. However, a renewal of previously made claims for foreign priority under 35 U.S.C. 119 or domestic benefit under 35 U.S.C. 119(e) or 120, is not necessary during reexamination. Note that a design application cannot claim the benefit of a provisional application. See MPEP § 211.02, subsection III; see also MPEP § 1504.20 for benefit information specific to design applications.

I. FOREIGN PRIORITY

A. Claim Made Before Patent Granted; Certified Copy Needed to Perfect Priority

The patent owner may obtain the right of foreign priority under 35 U.S.C. 119(a)-(d) where a claim for priority had been made before the patent was granted, and it is only necessary for submission of the certified copy in the reexamination proceeding to perfect priority.

However, where a petition to accept a delayed certified copy under 37 CFR 1.55(f) or (g) is required (such as, for example, when the application which matured in the patent to be reexamined was filed on or after March 16, 2013), a grantable petition, the appropriate fee, and any required attachments must be filed in the file of the application that matured into the patent to be reexamined. See MPEP § 215.02 for further guidance. In addition, a letter must be filed as a separate paper in the reexamination proceeding, notifying the Office that a petition to accept a delayed certified copy under 37 CFR 1.55(f) or (g), the appropriate fee, and any required attachments was or is being concurrently filed in the file of the patent to be reexamined. When a decision on the petition to accept a delayed certified copy under 37 CFR 1.55(f) or (g) is rendered in the file of the application that matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding.

B. Submitting for the First Time Both the Claim for Foreign Priority and the Certified Copy

The patent owner may obtain the right of foreign priority under 35 U.S.C. 119(a)-(d) where the claim for foreign priority was not previously made. However, a grantable petition for an unintentionally delayed priority claim under 37 CFR 1.55(e) must be filed. The petition, and any required attachments, must be filed in the file of the application which matured into the patent to be reexamined, and a letter must be filed in the reexamination proceeding as a separate paper notifying the Office that the petition and accompanying attachments was or is concurrently being filed in the application (identifying the application number) which matured into the patent to be reexamined, according to the following guidance:

1. Application Which Became Patent to be Reexamined Filed On or After September 16, 2012

If the patent to be reexamined matured from an application filed on or after September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:

(a) A grantable petition for an unintentionally delayed priority claim under 37 CFR 1.55(e);
(b) An application data sheet (37 CFR 1.76(b)(6)), 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;
(c) A certified copy of the foreign application, unless previously submitted, or the exception in 37 CFR 1.55(h) is applicable;
(d) The petition fee as set forth in 37 CFR 1.17(m); and
(e) A statement that the entire delay between the date the priority claim was due under 37 CFR 1.55 and the date the priority claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(f) In the Reexamination Proceeding:

A letter, as a separate paper, notifying the Office that items (a)-(e), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.

When a decision on the petition for an unintentionally delayed priority claim under 37 CFR 1.55(e) is rendered in the file of the application which matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of the application data sheet which was determined by the Office in its decision to meet the requirements of 37 CFR 1.55(e) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.

2. Application Which Became Patent to be Reexamined Filed Before September 16, 2012

If the patent to be reexamined matured from an application filed before September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:

(a) A grantable petition for an unintentionally delayed priority claim under 37 CFR 1.55(e);
(b) Unless previously submitted, either (i) an application data sheet (37 CFR 1.76(b)(6)) or (ii) an oath or declaration under 37 CFR 1.63; where the application data sheet, oath or declaration, whichever is filed, identifies 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 (see 37 CFR 1.55(n));
(c) A certified copy of the foreign application, unless previously submitted, or the exception in 37 CFR 1.55(h) is applicable;
(d) The petition fee as set forth in 37 CFR 1.17(m); and
(e) A statement that the entire delay between the date the priority claim was due under 37 CFR 1.55 and the date the priority claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(f) In the Reexamination Proceeding:

A letter, as a separate paper, notifying the Office that items (a)-(e), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.

When a decision on the petition for an unintentionally delayed priority claim under 37 CFR 1.55(e) is rendered in the file of the application which matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of the application data sheet, oath, or declaration, which was determined by the Office in its decision to meet the requirements of 37 CFR 1.55(e) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.

For further guidance on the requirements for a grantable petition for an unintentionally delayed priority claim under 37 CFR 1.55(e), see MPEP § 214.02.

C. Restoring Right of Foreign Priority Where the Filing of the Subsequent Application Was Delayed

The patent owner may also restore the right of foreign priority under 35 U.S.C. 119(a)-(d) where the filing of the subsequent application was delayed, in accordance with 37 CFR 1.55(c). A grantable petition to restore the right of foreign priority and any required attachments, including an application data sheet, must be filed in the application specified in 37 CFR 1.55(c), not in the reexamination proceeding. A letter must be filed in the reexamination proceeding as a separate paper notifying the Office that the petition and accompanying attachments was or is concurrently being filed in the application specified in 37 CFR 1.55(c) (identifying the application number).

When a decision on the petition to restore the right of foreign priority under 37 CFR 1.55(c) is rendered in the file of the application specified in 37 CFR 1.55(c), a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of the application data sheet which was determined by the Office in its decision to meet the requirements of 37 CFR 1.55(c) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.

For further guidance on the requirements for a grantable petition to restore the right of foreign priority under 37 CFR 1.55(c), see MPEP § 213.03, subsection III.

II. DOMESTIC BENEFIT

A. Claiming Benefit under 35 U.S.C. 120

The patent owner may also correct the failure to adequately claim (in the application for the patent to be reexamined) benefit under 35 U.S.C. 120 of an earlier filed copending U.S. patent application. For a patent to be reexamined, a grantable petition for an unintentionally delayed benefit claim under 37 CFR 1.78(e) must be filed. The petition, and any required attachments (with the exception of an amendment to the first sentence(s) of the specification if the application which matured into the patent to be reexamined is a nonprovisional application filed before September 16, 2012 – see subsection II.A.2. below), must be filed in the file of the application which matured into the patent to be reexamined, and a letter must be filed in the reexamination proceeding as a separate paper notifying the Office that the petition and accompanying attachments was or is concurrently being filed in the application (identifying the application number) which matured into the patent to be reexamined, according to the following guidance:

1. Application Which Became Patent to be Reexamined Filed On or After September 16, 2012

(a) A grantable petition for an unintentionally delayed benefit claim under 37 CFR 1.78(e);
(b) An application data sheet including the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed application (37 CFR 1.76(b)(5)), unless previously submitted;
(c) The petition fee as set forth in 37 CFR 1.17(m); and
(d) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(e) In the Reexamination Proceeding:

A letter, as a separate paper, notifying the Office that items (a)-(d), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.

When a decision on the petition for an unintentionally delayed benefit claim under 37 CFR 1.78(e) is rendered in the file of the application which matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of the application data sheet which was determined by the Office in its decision to meet the requirements of 37 CFR 1.78(e) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.

2. Application Which Became Patent to be Reexamined Filed Before September 16, 2012

If the patent to be reexamined matured from an application filed before September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:

(a) A grantable petition for an unintentionally delayed benefit claim under 37 CFR 1.78(e);
(b) If the patent owner does not choose to file an amendment as set forth in (e) below in the reexamination proceeding, an application data sheet including the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed application (37 CFR 1.76(b)(5)), unless previously submitted;
(c) The petition fee as set forth in 37 CFR 1.17(m); and
(d) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(e) In the Reexamination Proceeding:

If the patent owner does not choose to file an application data sheet as set forth in (b) above in the application which matured into the patent to be reexamined, an amendment inserting the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed application in the first sentence(s) of the specification following the title as set forth in 37 CFR 1.78(h), unless previously submitted; and
(f) In the Reexamination Proceeding:
A letter, as a separate paper, notifying the Office that items (a)-(d), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.

When a decision on the petition for an unintentionally delayed benefit claim under 37 CFR 1.78(e) is rendered in the file of the application which matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of any application data sheet, where applicable, which was determined by the Office in its decision to meet the requirements of 37 CFR 1.78(e) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.

Note, if the application which matured into the patent to be reexamined is a nonprovisional application filed before September 16, 2012, the patent owner must choose to either (i) file, in the application which matured into the patent to be reexamined, an application data sheet including the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed application (37 CFR 1.76(b)(5)), unless previously submitted; or (ii) file, in the reexamination proceeding, an amendment inserting the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed application in the first sentence(s) of the specification following the title as set forth in 37 CFR 1.78(h), unless previously submitted. See (b) and (e) above.

For further guidance on the requirements for a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(e), see MPEP § 211.04.

B. Claiming Benefit under 35 U.S.C. 119(e)

The patent owner may correct, in a patent to be reexamined which matured from a utility or plant application, the failure to adequately claim benefit under 35 U.S.C. 119(e) of an earlier filed provisional application. A design application cannot claim the benefit of a provisional application. See MPEP § 211.02; see also MPEP § 1504.20 for benefit information specific to design applications.

In order to make such a correction in a utility or plant patent, the patent owner must file a grantable petition for an unintentionally delayed claim under 35 U.S.C. 119(e), pursuant to 37 CFR 1.78(c). The petition, and any required attachments (with the exception of an amendment to the first sentence(s) of the specification if the application which matured into the patent to be reexamined is a nonprovisional utility or plant application filed before September 16, 2012 – see subsection II.B.2. below), must be filed in the file of the application which matured into the patent to be reexamined, and a letter must be filed in the reexamination proceeding as a separate paper notifying the Office that the petition and accompanying attachments was or is concurrently being filed in the application (identifying the application number) which matured into the patent to be reexamined, according to the following guidance:

1. Application Which Became Patent to be Reexamined Filed On or After September 16, 2012

If the patent to be reexamined matured from a utility or plant application filed on or after September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:

(a) A grantable petition for an unintentionally delayed claim under 35 U.S.C. 119(e), pursuant to 37 CFR 1.78(c);
(b) An application data sheet including the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed provisional application; unless previously submitted;
(c) The petition fee as set forth in 37 CFR 1.17(m); and
(d) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(a)(4) and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(e) In the Reexamination Proceeding:

A letter, as a separate paper, notifying the Office that items (a)-(d), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.

When a decision on the petition for an unintentionally delayed claim under 35 U.S.C. 119(e) is rendered in the file of the application which matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of the application data sheet which was determined by the Office in its decision to meet the requirements of 35 U.S.C. 119(e) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.

2. Application Which Became Patent to be Reexamined Filed Before September 16, 2012

If the patent to be reexamined matured from a utility or plant application filed before September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:

(a) A grantable petition for an unintentionally delayed claim under 35 U.S.C. 119(e), pursuant to 37 CFR 1.78(c);
(b) If the patent owner does not choose to file an amendment as set forth in (e) below in the reexamination proceeding, an application data sheet including the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed provisional application; unless previously submitted;
(c) The petition fee as set forth in 37 CFR 1.17(m); and
(d) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(a)(4) and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(e) In the Reexamination Proceeding:

If the patent owner does not choose to file an application data sheet as set forth in (b) above in the application which matured into the patent to be reexamined, an amendment inserting the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed application in the first sentence(s) of the specification following the title as set forth in 37 CFR 1.78(h), unless previously submitted; and
(f) In the Reexamination Proceeding:

A letter, as a separate paper, notifying the Office that items (a)-(d), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.

When a decision on the petition for an unintentionally delayed claim under 35 U.S.C. 119(e) is rendered in the file of the application which matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of any application data sheet, where applicable, which was determined by the Office in its decision to meet the requirements of 35 U.S.C. 119(e) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.

Note, if the application which matured into the patent to be reexamined is a nonprovisional utility or plant application filed before September 16, 2012, the patent owner must choose to either (i) file, in the application which matured into the patent to be reexamined, an application data sheet including the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed application (37 CFR 1.76(b)(5)), unless previously submitted; or (ii) file, in the reexamination proceeding, an amendment inserting the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed application in the first sentence(s) of the specification following the title as set forth in 37 CFR 1.78(h), unless previously submitted. See (b) and (e) above.

For further guidance on petitions for an unintentionally delayed benefit claim under 35 U.S.C. 119(e), pursuant to 37 CFR 1.78(c), see MPEP § 211.04.

C. Restoring the Benefit of a Provisional Application Where the Filing of the Application Which Became the Patent to be Reexamined Was Delayed

The patent owner may also restore the benefit of a provisional application where the filing of the application which matured into the patent to be reexamined (i.e., the subsequent nonprovisional application) was unintentionally delayed, in accordance with 37 CFR 1.78(b). The patent owner must file a grantable petition to restore the benefit of a provisional application under 37 CFR 1.78(b), and any required attachments, including an application data sheet meeting the requirements set forth in 37 CFR 1.78(b), in the file of the application which matured into the patent to be reexamined (i.e., the subsequent application as specified in 37 CFR 1.78(b)). A letter must be filed in the reexamination proceeding as a separate paper notifying the Office that the petition and accompanying attachments was or is concurrently being filed in the application (identifying the application number) which matured into the patent to be reexamined. Note that a design application cannot claim the benefit of a provisional application.

When a decision on the petition to restore the benefit of a provisional application is rendered in the file of the application which matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of the application data sheet which was determined by the Office in its decision to meet the requirements of 37 CFR 1.78(b) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.

For further guidance on the requirements for a grantable petition to restore the benefit of a provisional application under 37 CFR 1.78(b), see MPEP § 211.01(a), subsection II.