1417 Claim for Priority Under 35 U.S.C. 119(a)-(d) [R-08.2017]
A claim for priority to an earlier filing date in a foreign country under 35 U.S.C. 119(a)-(d) must be made in a reissue application, even though such a claim was previously made in the application for the original patent to be reissued. However, no additional certified copy of the foreign application is necessary. See MPEP § 215. For reissue applications filed on or after September 16, 2012, the foreign priority information for the priority claim must be presented in an application data sheet (ADS) under 37 CFR 1.76. For applications filed prior to September 16, 2012, unless provided in an application data sheet, pre-AIA 37 CFR 1.63 requires that the oath or declaration must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing. See MPEP § 214.01.
The examiner should note that foreign priority information on the front page of the patent will not be carried forward to the reissue from the original patent. Therefore, it is important that the PALM bibliographic data (bib-data) sheet accurately list the application number, country (or intellectual property authority), day, month, and year of each foreign application to which the U.S. application is claiming priority. If there is a discrepancy between the PALM bib-data sheet and the front page of the original patent, the examiner should notify the applicant in the next Office action of such discrepancy and advise the applicant to take appropriate corrective action (e.g., request a corrected filing receipt, file application data sheet in accordance with 37 CFR 1.76(c)). The examiner must also indicate in the Office action and on the PALM bib-data sheet whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met.
II. PRIORITY UNDER 35 U.S.C. 119(a)-(d) IS NEWLY PERFECTED IN THE REISSUE APPLICATION
A reissue was granted in Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where the only ground urged was failure to file a certified copy of the original foreign application to obtain the right of foreign priority under 35 U.S.C. 119(a)-(d) before the patent was granted. In Brenner, the claim for priority had been made in the prosecution of the original patent, and it was only necessary to submit a certified copy of the priority document in the reissue application to perfect priority (the claim for priority must be repeated in the reissue application). Reissue is also available to correct the “error” in failing to take any steps to obtain the right of foreign priority under 35 U.S.C. 119(a) -(d) before the original patent was granted. See Fontijn v. Okamoto, 518 F.2d 610, 622, 186 USPQ 97, 106 (CCPA 1975) (“a patent may be reissued for the purpose of establishing a claim to priority which was not asserted, or which was not perfected during the prosecution of the original application”). In a situation where it is necessary to make a priority claim in a reissue application that was not made in the original patent, the reissue applicant will have to file a petition for an unintentionally delayed priority claim under 37 CFR 1.55(e) in addition to filing a reissue application. See MPEP § 214.02. See MPEP § 1481.03 for correction of a benefit claim via a certificate of correction.