Whether a claimed invention is entitled to patent protection often hinges on the effective filing date of the claimed invention. Accordingly, establishing a proper claim to priority, where applicable, is crucial when filing a patent application.
Claiming the Benefit of a Provisional Application
A nonprovisional application may claim priority to one or more prior filed provisional applications provided that the nonprovisional application is filed not later than 12 months after the filing date of the provisional application(s). Additionally, each prior filed provisional application from which priority is claimed must have the same inventor, or at least one inventor in common, with the nonprovisional application.
In instances where a priority claim is made to a prior provisional application filed in a language other than English, an English language translation of the provisional application and a statement that the translation is accurate are required to be filed in the provisional application. However, if the translation and statement were not filed in the provisional application, the applicant will be notified in the nonprovisional application and given a period of time within which (1) to file the translation and statement in the provisional application, and a reply in the nonprovisional application confirming that the translation and statement were filed in the provisional application; or (2) file a corrected application data sheet in compliance with 37 CFR 1.76(c) deleting the reference to the prior-filed provisional application.See, e.g., MPEP § 211.01(a).
Claiming the Benefit of a Nonprovisional Application
A later filed nonprovisional application may claim priority to one or more prior filed non provisional applications provided that the later filed nonprovisional application is copending with the prior filed nonprovisional application(s) and has the same inventor, or at least one inventor in common, with the prior filed nonprovisional application(s). Copendency is established where the later-filed application is filed before: (1) the patenting of the prior application(s); (2) the abandonment of the prior application(s); or (3) the termination of proceedings in the prior application(s). Accordingly, the later-filed application may be filed while a prior application is still pending before the examiner, is in issue, or even between the time the issue fee is paid and the patent issues. It is generally advisable, however, to file any continuing application no later than the date the issue fee of the prior filed nonprovisional is paid, to avoid issuance of the prior application before the continuing application is filed.See, e.g., MPEP § 211.01(b).
Claiming the Benefit of an International Application
A later filed nonprovisional application may claim priority to one or more prior filed international applications provided that the international application designates the United States and is entitled to a filing date in accordance with PCT Article 11. Moreover, the later-filed application must be filed during the pendency (e.g., prior to the abandonment) of the international application.See, e.g., MPEP § 211.01(c).
Reference to Prior Applications From Which Priority is Claimed
For applications filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed domestic application, the later-filed application must contain a specific reference to the earlier-filed application. For all applications filed on or after September 16, 2012, the specific reference to the prior application must be in the application data sheet (ADS). This reference in the ADS must also be made within the later of: (1) four months from the actual filing date of the later filed nonprovisional application; or (2) sixteen months from the prior filed provisional or nonprovisional application from which priority is claimed. If the later-filed application is a nonprovisional application entering the national stage from an international application, the reference must be made within the later of: (1) four months from the date of entry into the national stage in an international application; or (2) sixteen months from the filing date of the prior-filed application.
If the aforementioned time periods have expired, a claim to a prior filed provisional or nonprovisional may be nonetheless accepted if a petition to accept an unintentionally delayed priority claim is submitted. Such a petition must be accompanied by: (1) the required reference to the prior filed application; (2) a surcharge; and (3) a statement that the entire delay between the date the benefit claim was due and the date the benefit claim was filed was unintentional.
In instances where a benefit claim is made in the application but not in the manner specified by 37 CFR 1.78 (e.g., if the claim is included in an oath or declaration or the application transmittal letter) within the aforementioned time periods, a petition and the respective surcharge will not be required to correct the priority claim provided the information concerning the claim was recognized by the USPTO as shown by its inclusion on the filing receipt. However, if a priority claim is not included in an ADS (for applications filed on or after September 16, 2012) and is not recognized by the USPTO as shown by its absence on the filing receipt, a petition and the respective surcharge will be required to correct the claim.See, e.g., MPEP § 211.02; see also 37 C.F.R. § 1.78.