MPEP 1504.10
Priority Under 35 U.S.C. 119(a)-(d), 386(a) and (b)

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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1504.10    Priority Under 35 U.S.C. 119(a)-(d), 386(a) and (b) [R-08.2017]

35 U.S.C. 172 Right of priority.

The right of priority provided for by subsections (a) through (d) of section 119 shall be six months in the case of designs. The right of priority provided for by section 119(e) shall not apply to designs.

The provisions of 35 U.S.C. 119(a) -(d), 172, 386(a) and (b) apply to design patent applications. In order to obtain the benefit of an earlier foreign filing date, the U.S. application must be filed within 6 months of the earliest date on which any foreign application for the same design was filed. It should be noted that where a design patent application claims benefit under 35 U.S.C. 120 to an intermediate nonprovisional utility patent application that directly claims priority to a foreign application, the intermediate nonprovisional utility application must have been filed within 6 months of the filing date of the foreign priority application in order for the design patent application to obtain the benefit of the earlier foreign filing date. See 35 U.S.C. 172. Under certain conditions, a right of priority to a foreign application may be restored if the U.S. design application is filed within two months of the expiration of the six-month period specified in 35 U.S.C. 172. See 37 CFR 1.55(c). Design applications may not claim the benefit of a provisional application under 35 U.S.C. 119(e). See 37 CFR 1.55 and MPEP § 213 - 216 for further information concerning the right of priority to a foreign application and the formal requirements applicable thereto.

¶ 15.01    Conditions Under 35 U.S.C. 119(a)-(d), 172, 386(a) and (b)

Applicant is advised of conditions as specified in 35 U.S.C. 119(a) -(d), 172, 386(a) and (b). An application for a design patent for an invention filed in this country by any person who has, or whose legal representatives have previously filed an application for a design patent, or equivalent protection for the same design in a foreign country which offers similar privileges in the case of applications filed in the United States or in a WTO member country, or to citizens of the United States, 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 six (6) months from the earliest date on which such foreign application was filed. If the design application is filed within two months from the expiration of the six-month period and the delay was unintentional, the right of priority in the design application may be restored by filing a petition under 37 CFR 1.55(c).

¶ 15.01.01    Conditions Under 35 U.S.C. 172 Not Met

The claim for priority under 35 U.S.C. 119(a) -(d), 386(a) or (b) to the [1] application is acknowledged, however, the claim for priority cannot be based on such application since it was filed more than six (6) months before the filing date of the subsequent application in the United States and no petition to restore the right of priority under 37 CFR 1.55(c) has been granted. 35 U.S.C 172.

Applicant may wish to file a petition under 37 CFR 1.55(c) to restore the right of priority if the subsequent application was filed within two months from the expiration of the six-month period and the delay was unintentional. A petition to restore the right of priority must include: (1) the priority claim under 35 U.S.C. 119(a) - (d), 386(a) or (b) in an application data sheet, identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing (unless previously submitted); (2) the petition fee set forth in 37 CFR 1.17(m); and (3) a statement that the delay in filing the subsequent application within the six-month period was unintentional. The petition to restore the right of priority must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia, 22313-1450.

Examiner Note:

In bracket 1, insert the name of the foreign country.

¶ 15.03    Certified Copy Filed, But Proper Claim Not Made

Receipt is acknowledged of a certified copy of foreign application [1]. If this copy is being filed to obtain priority to the foreign filing date under 35 U.S.C. 119(a)-(d), 386(a) or (b), applicant should also file a claim for such priority as required by 35 U.S.C. 119(b). If the application was filed before September 16, 2012, the priority claim must be made in either the oath or declaration or in an application data sheet; if the application was filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet.

In the case of a design application, the claim for priority must be presented during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e). If the claim for priority is filed after the date the issue fee is paid, 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.

Examiner Note:

In bracket 1, insert the application number of the foreign application.

For design applications filed on or after May 13, 2015, a claim for priority may be made pursuant 35 U.S.C. 386(a) to an international design application filed under the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, provided the international design application designates at least one Contracting Party other than the United States. The United States will also recognize claims for the right of priority under 35 U.S.C. 119(a) -(d) based on applications filed under such bilateral or multilateral treaties as the "Hague Agreement Concerning the International Deposit of Industrial Designs," "Uniform Benelux Act on Designs and Models" and "European Community Design." In filing a claim for priority of a foreign application previously filed under such a treaty, certain information must be supplied to the United States Patent and Trademark Office. The required information is:

  • (A) the application number,
  • (B) the date of filing of the foreign application,
  • (C) the name and location of the national or inter-governmental authority which received the application.

¶ 15.02    Claimed Foreign Priority, No Certified Copy 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 37 CFR 1.55. In the case of a design application, the certified copy must be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(g) together with the fee set forth in 37 CFR 1.17(g), that includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application. If the certified copy of the foreign application is filed after the date the issue fee is paid, 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.

Examiner Note:

1. In bracket 1, insert the name of the country or intellectual property authority.

2. In bracket 2, insert the filing date of the foreign application.

3. In bracket 3, insert the application number of the foreign application.

The notation requirement on design patent application file wrappers when foreign priority is claimed is set forth in MPEP § 202.

¶ 15.04    Priority Under Bilateral or Multilateral Treaties

The United States will recognize claims for the right of priority under 35 U.S.C. 119(a) -(d) based on applications filed under such bilateral or multilateral treaties as the Hague Agreement Concerning the International Deposit of Industrial Designs, the Benelux Designs Convention and European Community Design. In filing a claim for priority of a foreign application previously filed under such a treaty, certain information must be supplied to the United States Patent and Trademark Office. The required information is (1) the application number: (2) the date of filing of the application, and (3) the name and location of the national or international governmental authority which received such application.