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201.13 Right of Priority of Foreign Application [R-3] - 200 Types, Cross-Noting, and Status of Application
201.13 Right of Priority of Foreign Application [R-3]
Under certain conditions and on fulfilling certain requirements, an application for patent filed in the United States may be entitled to the benefit of the filing date of a prior application filed in a foreign country, to overcome an intervening reference or for similar purposes. The conditions are specified in 35 U.S.C. 119(a)-(d) and (f)>, and 37 CFR 1.55<.
35 U.S.C. 119 Benefit of earlier filing date; right of priority.
(a) An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within twelve months from the earliest date on which such foreign application was filed; but no patent shall be granted on any application for patent for an invention which had been patented or described in a printed publication in any country more than one year before the date of the actual filing of the application in this country, or which had been in public use or on sale in this country more than one year prior to such filing.
(b)
(1) No application for patent shall be entitled to this right of priority unless a claim is filed in the Patent and Trademark Office, identifying the foreign application by specifying the application number on that foreign application, the intellectual property authority or country in or for which the application was filed, and the date of filing the application, at such time during the pendency of the application as required by the Director.
(2) The Director may consider the failure of the applicant to file a timely claim for priority as a waiver of any such claim. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed claim under this section.
(3) The Director may require a certified copy of the original foreign application, specification, and drawings upon which it is based, a translation if not in the English language, and such other information as the Director considers necessary. Any such certification shall be made by the foreign intellectual property authority in which the foreign application was filed and show the date of the application and of the filing of the specification and other papers.
(c) In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country instead of the first filed foreign application, provided that any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority.
(d) Applications for inventors' certificates filed in a foreign country in which applicants have a right to apply, at their discretion, either for a patent or for an inventor"s certificate shall be treated in this country in the same manner and have the same effect for purpose of the right of priority under this section as applications for patents, subject to the same conditions and requirements of this section as apply to applications for patents, provided such applicants are entitled to the benefits of the Stockholm Revision of the Paris Convention at the time of such filing.
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(f) Applications for plant breeder's rights filed in a WTO member country (or in a foreign UPOV Contracting Party) shall have the same effect for the purpose of the right of priority under subsections (a) through (c) of this section as applications for patents, subject to the same conditions and requirements of this section as apply to applications for patents.
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37 CFR 1.55 Claim for foreign priority.
(a) An applicant in a nonprovisional application may claim the benefit of the filing date of one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) and (b).
(1)
(i) In an original application filed under 35 U.S.C. 111(a), the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. This time period is not extendable. The claim must identify the foreign application for which priority is claimed, as well as any foreign application for the same subject matter and having a filing date before that of the application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. The time periods in this paragraph do not apply in an application under 35 U.S.C. 111(a) if the application is:
(A) A design application; or
(B) An application filed before November 29, 2000.
(ii) In an application that entered the national stage from an international application after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and the Regulations under the PCT.
(2) The claim for 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 priority or the certified copy of the foreign application is filed after the date the issue fee is paid, it must be accompanied by the processing fee set forth in § 1.17(i), but the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and § 1.323
**>(3) The Office may require that the claim for priority and the certified copy of the foreign application be filed earlier than provided in paragraphs (a)(1) or (a)(2) of this section:
(i) When the application becomes involved in an interference (see § 41.202 of this title),
(ii) When necessary to overcome the date of a reference relied upon by the examiner, or
(iii) When deemed necessary by the examiner.
(4)
(i) An English language translation of a non-English language foreign application is not required except:
(A) When the application is involved in an interference (see § 41.202 of this title),
(B) When necessary to overcome the date of a reference relied upon by the examiner, or
(C) When specifically required by the examiner.
(ii) If an English language translation is required, it must be filed together with a statement that the translation of the certified copy is accurate.<
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The period of 12 months specified in this section is 6 months in the case of designs, 35 U.S.C. 172. See MPEP § 1504.10.
The conditions, for benefit of the filing date of a prior application filed in a foreign country, may be listed as follows:
(A) The foreign application must be one filed in "a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States or in a WTO member country."
(B) The foreign application must have been filed by the same applicant (inventor) as the applicant in the United States, or by his or her legal representatives or assigns.
(C) The application, or its earliest parent United States application under 35 U.S.C. 120, must have been filed within 12 months from the date of the earliest foreign filing in a "recognized" country as explained below.
(D) The foreign application must be for the same invention as the application in the United States.
(E) For an original application filed under 35 U.S.C. 111(a) (other than a design application) on or after November 29, 2000, the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. This time period is not extendable.
(F) For applications that entered the national stage from an international application filed on or after November 29, 2000, after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT Article and Regulations.
(G) In the case where the basis of the claim is an application for an inventor"s certificate, the requirements of 37 CFR 1.55(b) must also be met.
Applicant may be informed of possible priority rights under 35 U.S.C. 119(a)-(d) >and (f)< by using the wording of form paragraph 2.18.
¶ 2.18 Right of Priority Under 35 U.S.C. 119(a)-(d) and (f)
Applicant is advised of possible benefits under 35 U.S.C. 119(a)-(d) and (f), wherein an application for patent filed in the United States may be entitled to the benefit of the filing date of a prior application filed in a foreign country.
I. RECOGNIZED COUNTRIES OF FOREIGN FILING
The right to rely on a foreign application is known as the right of priority in international patent law and this phrase has been adopted in the U.S. statute. The right of priority originated in a multilateral treaty of 1883, to which the United States adhered in 1887, known as the Paris Convention for the Protection of Industrial Property (Paris Convention). The treaty is administered by the World Intellectual Property Organization (WIPO) at Geneva, Switzerland. This treaty has been revised several times, the latest revision in effect being written in Stockholm in July 1967 (copy at Appendix P of this Manual). Articles 13-30 of the Stockholm Revision became effective on September 5, 1970. Articles 1-12 of the Stockholm Revision became effective on August 25, 1973. One of the many provisions of the treaty requires each of the adhering countries to accord the right of priority to the nationals of the other countries and the first United States statute relating to this subject was enacted to carry out this obligation. There is another treaty between the United States and some Latin American countries which also provides for the right of priority. A foreign country may also provide for this right by reciprocal legislation.
The United States and Taiwan signed an agreement on priority for patent and trademark applications on April 10, 1996, and Taiwan is now a country for which the right of priority is recognized in the United States. Applicants seeking patent protection in the United States may avail themselves of the right of priority based on patent applications filed in Taiwan, on or after April 10, 1996.
An application for patent filed in the United States on or after January 1, 1996, by any person who has, or whose legal representatives or assigns have, previously filed an application for patent in Thailand shall have the benefit of the filing date in Thailand in accordance with 35 U.S.C. 119 and 172.
NOTE: Following is a list of countries with respect to which the right of priority referred to in 35 U.S.C. 119(a)-(d) has been recognized. The letter "I" following the name of the country indicates that the basis for priority in the case of these countries is the Paris Convention for the Protection of Industrial Property (613 O.G. 23, 53 Stat. 1748). The letter "P" after the name of the country indicates the basis for priority of these countries is the Inter-American Convention relating to Inventions, Patents, Designs, and Industrial Models, signed at Buenos Aires, August 20, 1910 (207 O.G. 935, 38 Stat. 1811). The letter "L" following the name of the country indicates the basis for priority is reciprocal legislation in the particular country. The letter "W" following the name of the country indicates the basis for priority is membership in the World Trade Organization (WTO). See 35 U.S.C. 119(a). The letter "W°" indicates that the country became a WTO member after January 1, 1996. See http://www.wto.org/english/thewto_e/whatis_e/tif_e/org6_e.htm for a current list of WTO member countries along with their dates of membership. Applications for plant breeder's rights filed in WTO member countries and foreign UPOV contracting parties may be relied upon for priority pursuant to 35 U.S.C. 119(f) and MPEP Chapter 1600.
Albania (I, W°),
Algeria (I),
Angola (W°),
>Andorra (I),<
Antigua and Barbuda (I, W),
Argentina (I, W),
Armenia (I>, W°<),
Australia (I, W),
Austria (I, W),
Azerbaijan (I),
Bahamas (I),
Bahrain (I, W),
Bangladesh (I, W),
Barbados (I, W),
Belarus (I),
Belgium (I, W),
Belize (I, W),
Benin (I, W°),
Bhutan (I),
Bolivia (I, P, W),
Bosnia and Herzegovina (I),
Botswana (I, W),
Brazil (I, P, W),
Brunei Darussalam (W),
Bulgaria (I, W°),
Burkina Faso (I, W),
Burundi (I, W),
Cambodia (I>, W°<),
Cameroon (I, W),
Canada (I, W),
Central African Republic (I, W),
Chad (I, W°),
Chile (I, W),
China (I, W°),
Colombia (I, W),
>Comoros (I),<
Congo (I, W°),
Costa Rica (I, P, W),
Cote d'Ivoire (I, W),
Croatia (I, W°),
Cuba (I, P, W),
Cyprus (I, W),
Czech Republic (I, W),
Democratic People's Republic of Korea (I),
Democratic Republic of the Congo (I, W°),
Denmark (I, W),
Djibouti (I, W),
Dominica (I, W),
Dominican Republic (I, P, W),
Ecuador (I, P, W°),
Egypt (I, W),
El Salvador (I, W),
Equatorial Guinea (I),
Estonia (I, W°),
European Community (W),
Fiji (W°),
Finland (I, W),
France (I, W),
Gabon (I, W),
Gambia (I, W°),
Georgia (I, W°),
Germany (I, W),
Ghana (I, W),
Greece (I, W),
Grenada (I, W°),
Guatemala (I, P, W),
Guinea (I, W),
Guinea-Bissau (I , W),
Guyana (I, W),
Haiti (I, P, W°),
Holy See (I),
Honduras (I, P, W),
Hong Kong Special Administrative Region of China (I, W),
Hungary (I, W),
Iceland (I, W),
India (I, W),
Indonesia (I, W),
Iran (Islamic Republic of) (I),
Iraq (I),
Ireland (I, W),
Israel (I, W),
Italy (I, W),
Jamaica (I, W),
Japan (I, W),
Jordan (I, W°),
Kazakstan (I),
Kenya (I, W),
Kuwait (W),
Kyrgyzstan (I, W°),
Lao People's Democratic Republic (I),
Latvia (I, W°),
Lebanon (I),
Lesotho (I, W),
Liberia (I),
Libya (I),
Libyan Arab Jamahiriya (I),
Liechtenstein (I, W),
Lithuania (I, W°),
Luxembourg (I, W),
Macau Special Administrative Region of China (I, W),
Madagascar (I, W),
Malawi (I, W),
Malaysia (I, W),
Maldives (W),
Mali (I, W),
Malta (I, W),
Mauritania (I, W),
Mauritius (I, W),
Mexico (I, W),
Monaco (I),
Mongolia (I, W°),
Morocco (I, W),
Mozambique (I, W),
Myanmar (W),
Namibia (I, W),
Nepal (I>, W°<),
Netherlands (I, W,),
New Zealand (I, W),
Nicaragua (I, P, W),
Niger (I, W°),
Nigeria (I, W),
Norway (I, W),
Oman (I, PW°),
Pakistan (>I,< W),
Panama (I, W°),
Papua New Guinea (I, W°),
Paraguay (I, P, W),
Peru (I, W),
Philippines (I, W),
Poland (I, W),
Portugal (I, W),
Qatar (I, W°),
Republic of Korea (I, W),
Republic of Moldova (I, W°),
Romania (I, W),
Russian Federation (I),
Rwanda (I, W°),
Saint Kitts and Nevis (I, W°),
Saint Lucia (I, W),
Saint Vincent and the Grenadines (I, W),
San Marino (I),
Sao Tome and Principe (I),
Saudi Arabia (I)
Senegal (I, W),
Serbia and Montenegro (I)
Seychelles (I)
Sierra Leone (I, W),
Singapore (I, W),
Slovakia (I, W),
Slovenia (I, W),
Solomon Islands (W°),
South Africa (I, W),
Spain (I, W),
Sri Lanka (I, W),
Sudan (I),
Suriname (I, W),
Swaziland (I, W),
Sweden (I, W),
Switzerland (I, W),
Syrian Arab Republic (I),
Taiwan>, Province of China (Chinese Taipei)< (L, W°),
Tajikistan (I),
Tanzania, United Republic of (I, W),
Thailand (L, W),
The former Yugoslav Republic of Macedonia (I, W°),
Togo (I, W),
Tonga (I),
Trinidad and Tobago (I, W),
Tunisia (I, W),
Turkey (I, W),
Turkmenistan (I),
Uganda (I, W),
Ukraine (I),
United Arab Emirates (I, W°),
United Kingdom (I, W),
Uruguay (I, P, W),
Uzbekistan (I),
Venezuela (I, W),
Viet Nam (I),
Zambia (I, W),
Zimbabwe (I, W).
Sixteen African Countries have joined together to create a common patent office and to promulgate a common law for the protection of inventions, trademarks, and designs. The common patent office is called "Organisation Africain de la Propriete Intellectuelle" (OAPI) and is located in Yaounde, Cameroon. The English title is "African Intellectual Property Organization." The member countries using the OAPI Patent Office are Benin, Cameroon, Central African Republic, Chad, Congo, Gabon, Cote d'Ivoire, Mauritania, Niger, Senegal, Republic of Togo, Burkina Faso>,< Guinea, Guinea-Bissau, Mali and Equatorial Guinea. Since all these countries adhere to the Paris Convention for the Protection of Industrial Property, priority under 35 U.S.C. 119(a)-(d) may be claimed of an application filed in the OAPI Patent Office.
If any applicant asserts the benefit of the filing date of an application filed in a country not on this list, the examiner should contact the Office of International Relations to determine if there has been any change in the status of that country. It should be noted that the right is based on the country of the foreign filing and not upon the citizenship of the applicant.
II. RIGHT OF PRIORITY (35 U.S.C. 119(a)-(d) AND 365) BASED ON A FOREIGN APPLICATION FILED UNDER A BILATERAL OR MULTILATERAL TREATY
Under Article 4A of the Paris Convention for the Protection of Industrial Property a right of priority may be based either on an application filed under the national law of a foreign country adhering to the Convention or on a foreign application filed under a bilateral or multilateral treaty concluded between two or more such countries. Examples of such treaties are The Hague Agreement Concerning the International Deposit of Industrial Designs, the Benelux Designs Convention, and the Libreville Agreement of September 13, 1962, relating to the creation of an African Intellectual Property Office. The Convention on the Grant of European Patents, the Patent Cooperation Treaty ( MPEP § 201.13(b)), the Office for Harmonization in the Internal Market (OHIM), and the Community Plant Variety Office (CPVO) are further examples of such treaties.
A. The Priority Claim
A priority claim need not be in any special form and may be a statement signed by a registered attorney or agent. A priority claim can be made on filing: (A) by including a copy of an unexecuted or executed oath or declaration specifying a foreign priority claim (see 37 CFR 1.63(c)(2)); or (B) by submitting an application data sheet specifying a foreign priority claim (see 37 CFR 1.76).
In claiming priority of a foreign application previously filed under such a treaty, certain information must be supplied to the U.S. Patent and Trademark Office. In addition to the application number and the date of the filing of the application, the following information is required: (A) the name of the treaty under which the application was filed; and (B) the name and location of the national or intergovernmental authority which received such application.
B. Certification of the Priority Papers
35 U.S.C. 119(b)(3) authorizes the Office to require the applicant to furnish a certified copy of priority papers. 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, it must be accompanied by the processing fee set forth in 37 CFR 1.17(i), but 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(a)(2). 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.
C. Identity of Inventors
The inventors of the U.S. nonprovisional application and of the foreign application must be the same, for a right of priority does not exist in the case of an application of inventor A in the foreign country and inventor B in the United States, even though the two applications may be owned by the same party. However, the application in the foreign country may have been filed by the assignee, or by the legal representative or agent of the inventor which is permitted in some foreign countries, rather than by the inventor himself, but in such cases the name of the inventor is usually given in the foreign application on a paper filed therein. An indication of the identity of inventors made in the oath or declaration accompanying the U.S. nonprovisional application by identifying the foreign application and stating that the foreign application had been filed by the assignee, or the legal representative, or agent, of the inventor, or on behalf of the inventor, as the case may be, is acceptable. Joint inventors A and B in a nonprovisional application filed in the United States Patent and Trademark Office may properly claim the benefit of an application filed in a foreign country by A and another application filed in a foreign country by B, i.e., A and B may each claim the benefit of their foreign filed applications. See MPEP § 605.07.
D. Time for Filing U.S. Nonprovisional Application
The United States nonprovisional application, or its earliest parent nonprovisional application under 35 U.S.C. 120, must have been filed within 12 months of the earliest foreign filing. In computing this 12 months, the first day is not counted; thus, if an application was filed in Canada on January 3, 1983, the U.S. nonprovisional application may be filed on January 3, 1984. The Convention specifies in Article 4C(2) that "the day of filing is not counted in this period." (This is the usual method of computing periods, for example a 6-month period for reply to an Office action dated January 2 does not expire on July 1, but the reply may be made on July 2.) If the last day of the 12 months is a Saturday, Sunday, or Federal holiday within the District of Columbia, the U.S. nonprovisional application is in time if filed on the next succeeding business day; thus, if the foreign application was filed on September 4, 1981, the U.S. nonprovisional application is in time if filed on September 7, 1982, since September 4, 1982, was a Saturday and September 5, 1982 was a Sunday and September 6, 1982 was a Federal holiday. Since January 1, 1953, the Office has not received applications on Saturdays and, in view of 35 U.S.C. 21, and the Convention which provides "if the last day of the period is an official holiday, or a day on which the Office is not open for the filing of applications in the country where protection is claimed, the period shall be extended until the first following working day" (Article 4C(3)), if the 12 months expires on Saturday, the U.S. application may be filed on the following Monday. Note Ex parte Olah, 131 USPQ 41 (Bd. App. 1960). See, e.g., Dubost v. U.S. Patent and Trademark Office, 777 F.2d 1561, 1562, 227 USPQ 977, 977 (Fed. Cir. 1985).
E. Filing of Papers During Unscheduled Closings of the U.S. Patent and Trademark Office
37 CFR 1.9(h) provides that the definition of "Federal holiday within the District of Columbia" includes an official closing of the Office. When the entire U.S. Patent and Trademark Office is officially closed for business for an entire day, for reasons due to adverse weather or other causes, the Office will consider each such day a "Federal holiday within the District of Columbia" under 35 U.S.C. 21. Any action or fee due on such a day may be taken, or fee paid, on the next succeeding business day the Office is open. In addition, 37 CFR 1.6(a)(1) provides "[t]he U.S. Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia" to clarify that any day that is a Saturday, Sunday or Federal holiday within the District of Columbia is a day that the U.S. Patent and Trademark Office is not open for the filing of applications within the meaning of Article 4C(3) of the Paris Convention. Note further that in accordance with 37 CFR 1.6(a)(2), even when the Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia, correspondence deposited as Express Mail with the USPS in accordance with 37 CFR 1.10 will be considered filed on the date of its deposit, regardless of whether that date is a Saturday, Sunday or Federal holiday within the District of Columbia (under 35 U.S.C. 21(b) or 37 CFR 1.7).
When the U.S. Patent and Trademark Office is open for business during any part of a business day between 8:30 a.m. and 5:00 p.m., papers are due on that day even though the Office may be officially closed for some period of time during the business day because of an unscheduled event. The procedures of 37 CFR 1.10 may be used for filing applications.
Information regarding whether or not the Office is officially closed on any particular day may be obtained by calling **>1-800-PTO-9199 or (571) 272-1000<.
F. First Foreign Application
The 12 months is from earliest foreign filing except as provided in 35 U.S.C 119(c). If an inventor has filed an application in France on January 4, 1982, and an identical application in the United Kingdom on March 3, 1982, and then files in the United States on February 2, 1983, the inventor is not entitled to the right of priority at all; the inventor would not be entitled to the benefit of the date of the French application since this application was filed more than twelve months before the U.S. application, and the inventor would not be entitled to the benefit of the date of the United Kingdom application since this application is not the first one filed. Ahrens v. Gray, 1931 C.D. 9, 402 O.G. 261 (Bd. App. 1929). If the first foreign application was filed in a country which is not recognized with respect to the right of priority, it is disregarded for this purpose.
Public Law 87-333 modified 35 U.S.C. 119(c) to extend the right of priority to "subsequent" foreign applications if one earlier filed had been withdrawn, abandoned, or otherwise disposed of, under certain conditions.
The United Kingdom and a few other countries have a system of "post-dating" whereby the filing date of an application is changed to a later date. This "post-dating" of the filing date of the application does not affect the status of the application with respect to the right of priority; if the original filing date is more than one year prior to the U.S. filing no right of priority can be based upon the application. See In re Clamp, 151 USPQ 423 (Comm'r Pat. 1966).
If an applicant has filed two foreign applications in recognized countries, one outside the year and one within the year, and the later application discloses additional subject matter, a claim in the U.S. application specifically limited to the additional disclosure would be entitled to the date of the second foreign application since this would be the first foreign application for that subject matter.
G. Incorporation by Reference
**>An applicant may incorporate by reference the foreign priority application by including, in the U.S. application-as-filed, an explicit statement that such specifically enumerated foreign priority application or applications are "hereby incorporated by reference." The statement must appear in the specification. See 37 CFR 1.57(b) and MPEP § 608.01(p). For U.S. applications filed prior to September 21, 2004, the incorporation by reference statement may appear in the transmittal letter or in the specification. The inclusion of this statement of incorporation by reference of the foreign priority application will permit an applicant to amend the U.S. application to include subject matter from the foreign priority application(s), without raising the issue of new matter. Thus, the incorporation by reference statement can be relied upon to permit the entering of a portion of the foreign priority application into the U.S. application when a portion of the foreign priority application has been inadvertently omitted from the U.S. application, or to permit the correction of translation error in the U.S. application where the foreign priority application is in a non-English language.
For U.S. applications filed on or after September 21, 2004, a claim under 37 CFR 1.55 for priority of a prior-filed foreign application that was present on the filing date of the U.S. application is considered an incorporation by reference of the prior-filed foreign priority application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(a). The purpose of 37 CFR 1.57(a) is to provide a safeguard for applicants when all or a portion of the specification and/or drawing(s) is (are) inadvertently omitted from an application. For U.S. applications filed on or after September 21, 2004, applicants are encouraged to provide an explicit incorporation by reference statement to the prior-filed foreign priority application(s) for which priority is claimed under 37 CFR 1.55 if applicants do not wish the incorporation by reference to be limited to inadvertently omitted material pursuant to 37 CFR 1.57(a). See 37 CFR 1.57(b) and MPEP § 608.01(p) for discussion regarding explicit incorporation by reference.<
III. EFFECT OF RIGHT OF PRIORITY
The right to rely on the foreign filing extends to overcoming the effects of intervening references or uses, but there are certain restrictions. For example, the 1 year bar of 35 U.S.C. 102(b) dates from the U.S. filing date and not from the foreign filing date; thus if an invention was described in a printed publication, or was in public use in this country, in November 1981, a foreign application filed in January 1982, and a U.S. application filed in December 1982, granting a patent on the U.S. application is barred by the printed publication or public use occurring more than one year prior to its actual filing in the United States.
The right of priority can be based upon an application in a foreign country for a so-called "utility model," called Gebrauchsmuster in Germany.
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