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Claiming Foreign Priority in U.S. Patent Applications

March 06, 2015

Claiming foreign priority in U.S. patent applications is an important step to take especially in light of the America Invents Act ("the AIA").

Prior to the AIA, under old 35 U.S.C. 102(e), third-party U.S. applications filed before an applicant's effective filing date but published after the applicant's effective filing date could be used to reject the applicant's application. However, the earliest effective filing date of the third-party U.S. application did not extent to any foreign applications from which it claimed priority.

Today, under the AIA and new 35 U.S.C. 102(a)(2), the earliest effective filing date of the third-party U.S. application extends to the filing date of any foreign application from which the U.S. application properly claims priority.

Therefore, it is even more critical today to claim foreign priority as a defensive safeguard as well as an offensive measure, and it is important to note the rules for the same. Claiming foreign priority in U.S. applications is governed by 37 C.F.R 1.55 and Section 213 of the Manual of Patent Examining Procedure ("MPEP").

Deadline for Filing Application in U.S. Based on Foreign Application

In general, the non-provisional U.S. application must be filed not later than twelve (12) months (six (6) months for design applications) after the date of the foreign application date. 37 C.F.R. 1.55(b). This deadline could be extended two months if the delay was unintentional and a petition is submitted with a $1,900 petition fee ($950 for small entity). 37 C.F.R. 1.55(c).

Deadline for Filing Priority Claim

Foreign priority must be filed within the later of four (4) months from the actual filing date of the U.S. application or sixteen (16) months from the foreign filing date, and must be presented in an application data sheet ("ADS"). 37 C.F.R. 1.55(d). This deadline could be extended with a petition accompanied with: (i) the priority claim properly made in an ADS; (ii) a certified copy of the foreign application; (iii) a $1,900 fee ($950 for small entity) petition fee; and (iv) a statement that the delay was unintentional. 37 C.F.R. 1.55(e). An additional processing fee of $140 ($70 for small entity) is due if the priority claim is filed after the issue fee is paid. In no event could a priority claim be filed after the U.S. patent is granted. 37 C.F.R. 1.55(g).

Deadline to File Certified Copy of Foreign Application

A certified copy of the foreign application must be filed within the later of four (4) months from the actual filing date of the U.S. application or sixteen (16) months from the foreign filing date. For PCT applications entering national stage, if the certified foreign application was not filed during international stage, the deadline is four (4) months from entering national stage or sixteen (16) months from the foreign application filing date. This deadline could be extended with a petition showing good and sufficient cause for the delay and a $200 ($100 for small entity) petition fee. 37 C.F.R. 1.55(f). An additional processing fee of $140 ($70 for small entity) is due if the priority claim is filed after the issue fee is paid but in no event could the certified foreign application be filed after the U.S. patent is granted. 37 C.F.R. 1.55(g).

Priority Document Exchange with Foreign Intellectual Property Office

Some foreign intellectual property offices participate with the U.S. Patent and Trademark Office ("USPTO") in priority document exchange to provide a convenient means of filing the certified copy of the foreign priority document. However, the U.S. applicant must ensure that the following requirements are met: (i) the foreign application must have been filed in a participating country; (ii) the claim for priority is presented in an ADS with the required details; (iii) the copy of the foreign application is received by the USPTO during the pendency of the U.S. application; and (iv) the applicant files a request within the four or sixteen month deadlines detailed above in a separate document that the USPTO obtain a copy of the foreign priority document from the participating foreign intellectual property office.

Even though claiming foreign priority has been common practice for some time, many practitioners often times overlook the rules. Properly claiming foreign priority is a critical step in the prosecution of an application especially in light of the AIA.

The rules discussed above only highlight the general rules of 37 C.F.R. 1.55 and MPEP 213. We recommend that you review the complete rules for other details not discussed herein. For more information, please contact John H. Choi & Associates LLC at email@jchoilaw.com or 201.580.0816.