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201.14(c) Right of Priority, Practice [R-3] - 200 Types, Cross-Noting, and Status of Application
201.14(c) Right of Priority, Practice [R-3]
Before going into the practice with respect to those instances in which the priority papers are used to overcome a reference, there will first be described the practice when there is no occasion to use the papers, which will be in the majority of cases. In what follows in this section it is assumed that no reference has been cited which requires the priority date to be overcome.
I. UNTIMELY CLAIM FOR PRIORITY
If the foreign priority claim in an original application filed under 35 U.S.C.111(a) (other than a design application) on or after November 29, 2000 is submitted after the time period set in 37 CFR 1.55(a)(1)(i) and without a petition under 37 CFR 1.55(c), the examiner may use form paragraph 2.21.01 to notify applicant that the foreign priority claim will not be entered.
II. NO IRREGULARITIES AND PRIORITY CLAIM TIMELY
When the papers under 35 U.S.C. 119(a)-(d) are received within the time period set forth in 37 CFR 1.55(a)(1), if applicable, they are **>entered into the application file history.< Assuming that the papers are timely and regular in form and that there are no irregularities in dates, the examiner in the next Office action will advise the applicant that the papers have been received on form PTOL-326 or by use of form paragraph 2.26. For Image File Wrapper (IFW) processing, see the IFW Manual.
¶ 2.26 Claimed Foreign Priority - Papers Filed
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Where the priority papers have been filed in another application, use form paragraph 2.27.
¶ 2.27 Acknowledge Foreign Priority Paper in Parent
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. [1], filed on [2].
Examiner Note
1. For problems with foreign priority, see form paragraphs 2.18 to 2.24.
2. In bracket 1, insert series code and serial no. of parent.
The examiner will enter the information specified in MPEP § 202.03 on the face of the file wrapper or on the PALM bib-data sheet*>,< as appropriate.
III. PAPERS INCONSISTENT WITH A TIMELY PRIORITY CLAIM
If the certified copy filed does not correspond to the foreign application identified in the application oath or declaration or an application data sheet, or if the application oath or declaration or an application data sheet does not refer to the particular foreign application, the applicant has not complied with the requirements of the rule relating to the oath or declaration. In such instances, the Office action, after acknowledging receipt of the papers, should require the applicant to explain the inconsistency and to file a new oath or declaration or an application data sheet stating correctly the facts concerning foreign applications required by 37 CFR 1.63 by using form paragraph 2.21.
¶ 2.21 Oath, Declaration, or Application Data Sheet Does Not Contain Reference to Foreign Filing
Receipt is acknowledged of papers filed under 35 U.S.C. 119(a)-(d) based on an application filed in [1] on [2]. Applicant has not complied with the requirements of 37 CFR 1.63(c), since the oath, declaration, or application data sheet does not acknowledge the filing of any foreign application. A new oath, declaration, or application data sheet is required in the body of which the present application should be identified by application number and filing date.
Other situations requiring some action by the examiner are exemplified by other form paragraphs.
IV. NO CLAIM FOR PRIORITY
Where applicant has filed a certified copy but has not made a claim for priority, use form paragraph 2.22.
¶ 2.22 Certified Copy Filed, But No Claim Made
Receipt is acknowledged of a certified copy of the [1] application referred to in the oath or declaration or in an application data sheet. If this copy is being filed to obtain the benefits of the foreign filing date under 35 U.S.C. 119(a)-(d), applicant should also file a claim for such priority as required by 35 U.S.C. 119(b). If the application being examined is 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. See 37 CFR 1.55(a)(1)(i). If the application being examined has 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 and Regulations of the PCT. See 37 CFR 1.55(a)(1)(ii). Any claim for priority under 35 U.S.C. 119(a)-(d) or (f) or 365(a) or (b) not presented within the time period set forth in 37 CFR 1.55(a)(1) is considered to have been waived. If a claim for foreign priority is presented after the time period set forth in 37 CFR 1.55(a)(1), the claim may be accepted if the claim properly identifies the prior foreign application and is accompanied by a grantable petition to accept an unintentionally delayed claim for priority. See 37 CFR 1.55(c).
Examiner Note
In bracket 1, insert the application number of the foreign application.
NOTE: Where the applicant's accompanying letter states that the certified copy is filed for priority purposes or for the convention date, it is accepted as a claim for priority.
V. FOREIGN APPLICATIONS ALL FILED MORE THAN A YEAR BEFORE EARLIEST EFFECTIVE U.S. FILING
Where the earlier foreign application was filed more than 12 months prior to the U.S. application, use form paragraph 2.23.
¶ 2.23 Foreign Filing More Than 12 Months Earlier
Acknowledgment is made of applicant"s claim for priority under 35 U.S.C. 119(a)-(d) based upon an application filed in [1] on [2]. A claim for priority under 35 U.S.C. 119(a)-(d) cannot be based on said application, since the United States application was filed more than twelve months thereafter.
Examiner Note
1. In bracket 1, insert the country name.
2. In bracket 2, insert the filing date of the foreign application.
VI. SOME FOREIGN APPLICATIONS FILED MORE THAN A YEAR BEFORE U.S. FILING
For example, where a British provisional specification was filed more than a year before a U.S. application, but the British complete application was filed within the year, and certified copies of both were submitted, language similar to the following should be used: "Receipt is acknowledged of papers filed on September 18, 1979, purporting to comply with the requirements of 35 U.S.C. 119(a)-(d). It is not seen how the claim for priority can be based on the British specification filed January 23, 1978, because the instant application was filed more than one year thereafter. However, the printed heading of the patent will note the claimed priority date based on the complete specification; i.e., November 1, 1978, for such subject matter as was not disclosed in the provisional specification."
VII. CERTIFIED COPY NOT THE FIRST FOREIGN APPLICATION
Form paragraph 2.24 may be used to notify applicant that the date for which foreign priority is claimed is not the date of the first filed foreign application acknowledged in the oath or declaration.
¶ 2.24 Claimed Foreign Priority Date Not the Earliest Date
Receipt is acknowledged of papers filed on [1] purporting to comply with the requirements of 35 U.S.C. 119(a)-(d) and they have been placed of record in the file. Attention is directed to the fact that the date for which foreign priority is claimed is not the date of the first filed foreign application acknowledged in the oath or declaration.
VIII. NO CERTIFIED COPY
Where priority is claimed but no certified copy of the foreign application has been filed, use form paragraph 2.25.
¶ 2.25 Claimed Foreign Priority, No Papers Filed
Acknowledgment is made of applicant"s claim for foreign priority based on an application filed in [1] on [2]. It is noted, however, that applicant has not filed a certified copy of the [3] application as required by 35 U.S.C. 119(b).
Examiner Note
1. In bracket 1, insert the country name.
2. In bracket 2, insert the filing date of the foreign application.
3. In bracket 3, insert the application number of the foreign application.
Any unusual situation may be referred to the Technology Center (TC) Director.
IX. APPLICATION IN ISSUE
When priority papers for applications which have been sent to the Publishing Division are received, the priority papers should be sent to the Publishing Division. For Image File Wrapper (IFW) processing, see the IFW Manual.
When 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 must be accompanied by a processing fee set forth in 37 CFR 1.17(i). 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 design applications) on or after November 29, 2000, a grantable petition to accept an unintentionally delayed claim for priority under 37 CFR 1.55(c) must be filed with the certificate of correction.
X. RETURN OF PAPERS
For Image File Wrapper (IFW) processing, see the IFW Manual. It is sometimes necessary for the examiner to return papers filed under 35 U.S.C. 119(a)-(d) either upon request of the applicant, for example, to obtain a translation of the certified copy of the foreign application, or because they fail to meet a basic requirement of the statute, such as where all foreign applications were filed more than a year prior to the U.S. filing date.
When the papers have not been **>entered into the application file history<, it is not necessary to secure approval of the Director of the United States Patent and Trademark Office for their return but they should be sent to the TC Director for cancellation of the Office stamps. Where the papers have been **>entered into the application file history,< a request for permission to return the papers should be addressed to the Director of the United States Patent and Trademark Office and forwarded to the TC Director for approval. Where the return is approved, the written approval should be **>entered into the application file history.< Any questions relating to the return of papers filed under 35 U.S.C. 119(a)-(d) should be directed to the Office of the Commissioner for Patents.
XI. **>NOTATION IN FILE HISTORY RE-GARDING FOREIGN PRIORITY AP-PLICATION<
For Image File Wrapper (IFW) processing, see the IFW Manual. Where foreign applications are listed on the 37 CFR 1.63 oath or declaration or application data sheet, the examiner should check that such foreign applications are properly listed on the **>PALM bib-data sheet<, correcting errors of typography or format as necessary, and initialing the "verified" line when the information on the **>PALM bib-data sheet< matches the oath or declaration or application data sheet. See MPEP § 202.03. Should there be an error on the oath or declaration, or application data sheet itself, the examiner should require a new oath or declaration, or application data sheet, where appropriate. If a foreign application listed on the oath or declaration, or application data sheet is not listed on the **>PALM bib-data sheet, the examiner should provide the information regarding the foreign application number, the country, and the filing date on the PALM bib-data sheet and forward the marked-up PALM bib-data sheet to the Legal Instrument Examiner for correction in the Office computer systems.< Applications listed on the **>PALM bib-data sheet< but filed in countries not qualifying for benefits under 35 U.S.C. 119(a)-(d) should be lined through in * ink. A listing of countries qualifying for benefits under 35 U.S.C. 119(a)-(d) appears at MPEP § 201.13.
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