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Is priority different in the US?

I have a client who has two foreign (outside US) patent applications, applications A and B.  These applications are related but application B contains subject matter not contained in application A.  The twelfth-month date is approaching for filing in the US with a priority claim to the foreign applications.  Our client wishes to add new matter to the US application.

Under the rules of practice in the US, particularly 37 CFR 1.55, an applicant in a nonprovisional application may claim priority to one or more prior foreign applications under the conditions specified in 35 U.S.C. 119 (emphasis added).

According to 35 U.S.C. 119:

An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, 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 12 months from the earliest date on which such foreign application was filed (emphasis added).

It should be noted, without exception, 35 U.S.C. 119 refers to an application for the same invention.

So, even though 37 CFR 1.55 states that an applicant in a nonprovisional application may claim priority to one or more prior foreign applications, 35 U.S.C. 119 governs, and it refers to a single application for the same invention.

It appears to me that separate US applications would have to be filed claiming priority to applications A and B to perfect the foreign claim for priority.

The issue of adding new matter to an application in which priority is claimed in the US is treated under the US continuation practice, which is governed by 35 U.S.C. 120, which states:

An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States … shall …

The rules of practice in the US for continuing applications, namely  37 CFR 1.78, refer to "prior-filed nonprovisional application, international application, or international design application".

This limits the continuation practice, particularly applications with new matter (i.e., continuation-in-part applications), to prior filed US applications.

So, it would appear to me that our client under these circumstances would have to file separate US applications, each claiming priority to a respective earlier filed foreign application, and then file a continuation-in-part application, claiming priority to the US applications to which foreign priority is claimed.

Or am I wrong?

 

 

Your statement "It appears to me that separate US applications would have to be filed claiming priority to applications A and B to perfect the foreign claim for priority." is wrong. The Paris Conventi ... [read more]