MPEP 1828
Priority Claim and Document

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

Previous: §1827.01 | Next: §1828.01

1828    Priority Claim and Document [R-07.2015]

An applicant who claims the priority of one or more earlier national, regional or international applications for the same invention must indicate on the Request, at the time of filing, the country in or for which it was filed, the date of filing, and the application number. See PCT Article 8 and PCT Rule 4.10 for priority claim particulars and PCT Rule 90bis.3 for withdrawal of priority claims. Note that under PCT Rule 4.10, an applicant may claim the priority of an application filed in or for a State which is a Member of the World Trade Organization (WTO), even if that State is not party to the Paris Convention for the Protection of Industrial Property (Paris Convention). However, a PCT Contracting State that is not a Member of the WTO would not be obliged to recognize the effects of such a priority claim.

The applicant may correct or add a priority claim by a notice submitted to the Receiving Office or the International Bureau (IB) within 16 months from the priority date, or where the priority date is changed, within 16 months from the priority date so changed, whichever period expires first, provided that a notice correcting or adding a priority claim may in any event be submitted until the expiration of 4 months from the international filing date. PCT Rule 26bis.1 and 37 CFR 1.451 and 1.465. For a withdrawal of a priority claim, see MPEP § 1859.

Under the PCT procedure, the applicant may file the certified copy of the earlier filed national application together with the international application in the receiving Office for transmittal with the record copy, or alternatively the certified copy may be submitted by the applicant to the IB or the receiving Office not later than 16 months from the priority date or, if the applicant has requested early processing in any designated Office, not later than the time such processing or examination is requested. The IB will normally furnish copies of the certified copy to the various designated Offices so that the applicant will not normally be required to submit certified copies to each designated Office. If the earlier filed application was filed with the U.S. Patent and Trademark Office, the applicant may request the U.S. Receiving Office (RO/US) to prepare, and transmit to the IB, a certified copy of the earlier application. The request (Form PCT/RO/101) contains a box which can be checked requesting that the receiving Office prepare the certified copy. In international applications filed in the RO/US on or after August 31, 2007, the RO/US will electronically transmit the certified copy of the earlier application if the applicant has made a request in accordance with PCT Rule 17.1(b) and 37 CFR 1.451(b). Further, in such international applications filed on or after August 31, 2007, the USPTO has waived the fee set out in 37 CFR 1.19(b)(1)(iii)(A) for electronically providing a copy of the patent application as filed. If the earlier application is made available to the International Bureau via a digital library, applicant may request the International Bureau to obtain a copy of the earlier application from the digital library. The International Bureau will electronically obtain the copy of the earlier application if the applicant has made a request in accordance with PCT Rule 17.1(b-bis ).

Transmission may be delayed or prevented when no inventor common to the priority application is named in the international application. Further, transmission of the priority document will not occur until its national security review is complete.

For use of the priority document in a U.S. national application which entered the national stage from an international application after compliance with 35 U.S.C. 371, see MPEP § 1893.03(c).