Right of Priority Based Upon an Application for an Inventor’s Certificate
Ninth Edition of the MPEP, Revision 10.2019, Last Revised in June 2020
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213.05 Right of Priority Based Upon an Application for an Inventor’s Certificate [R-08.2017]
35 U.S.C. 119 Benefit of earlier filing date; 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.
37 C.F.R. 1.55 Claim for foreign priority.
- (l) Inventor's certificates. An applicant in a nonprovisional application may under certain circumstances claim priority on the basis of one or more applications for an inventor’s certificate in a country granting both inventor’s certificates and patents. To claim the right of priority on the basis of an application for an inventor’s certificate in such a country under 35 U.S.C. 119(d), the applicant when submitting a claim for such right as specified in this section, must include an affidavit or declaration. The affidavit or declaration must include a specific statement that, upon an investigation, he or she is satisfied that to the best of his or her knowledge, the applicant, when filing the application for the inventor’s certificate, had the option to file an application for either a patent or an inventor’s certificate as to the subject matter of the identified claim or claims forming the basis for the claim of priority.
37 CFR 1.55(l) contains the provisions relating to claiming priority to inventor's certificates. An inventor’s certificate may form the basis for rights of priority under 35 U.S.C. 119(d) only when the country in which it is filed gives to applicants, at their discretion, the right to apply, on the same invention, either for a patent or for an inventor’s certificate. The affidavit or declaration specified under 37 CFR 1.55(l) is only required for the purpose of ascertaining whether, in the country where the application for an inventor’s certificate originated, this option generally existed for applicants with respect to the particular subject matter of the invention involved. The requirements of 35 U.S.C. 119(d) and 37 CFR 1.55(l) are not intended, however, to probe into the eligibility of the particular applicant to exercise the option in the particular priority application involved.
It is recognized that certain countries that grant inventors’ certificates also provide by law that their own nationals who are employed in state enterprises may only receive inventors’ certificates and not patents on inventions made in connection with their employment. This will not impair their right to be granted priority in the United States based on the filing of the inventor’s certificate.
Accordingly, affidavits or declarations filed pursuant to 37 CFR 1.55(l) need only show that in the country in which the original inventor’s certificate was filed, applicants generally have the right to apply at their own option either for a patent or an inventor’s certificate as to the particular subject matter of the invention. Priority rights on the basis of an inventor’s certificate application will be honored only if the applicant had the option or discretion to file for either an inventor’s certificate or a patent on the invention in applicant's home country. Certain countries which grant both patents and inventor’s certificates issue only inventor’s certificates on certain subject matter, generally pharmaceuticals, foodstuffs, and cosmetics.
To ensure compliance with the treaty and statute, 37 CFR 1.55(l) provides that at the time of claiming priority to an inventor’s certificate, the applicant must submit an affidavit or declaration stating that the applicant when filing the application for the inventor’s certificate had the option either to file for a patent or an inventor’s certificate as to the subject matter forming the basis for the claim of priority.