MPEP § 215 — MPEP § 215
Current through: 2022-07-01

215-Certified Copy of Foreign Application 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0200 

 Section 215 
 

 
 
 
 
 
 215 Certified Copy of Foreign Application [R-07.2022]
 I. REQUIREMENT FOR CERTIFIED COPY 35 U.S.C.
 119(b)(3) authorizes the Office to require the applicant to
 furnish a certified copy of the foreign priority application, and the Office requires
 such a copy pursuant to 37 CFR 1.55 . The filing of the
 foreign priority papers under 35 U.S.C. 119(a) - (d) makes the
 record of the file of the United States patent complete. The U.S. Patent and Trademark
 Office does not normally examine the papers to determine whether the applicant is in
 fact entitled to the right of priority and does not grant or refuse the right of
 priority, except when the application is involved in an interference or derivation
 proceeding, when necessary to overcome the date of a reference relied upon by the
 examiner, or when deemed necessary by the examiner. See MPEP §
 216 . When the claim to priority and the certified copy of the
 foreign application are received while the application is pending before the examiner,
 the examiner should review the certified copy to see that it contains no obvious formal
 defects and that it corresponds in number, date and country to the application
 identified in the application data sheet for an application filed on or after September
 16, 2012, or oath or declaration or application data sheet for an application filed
 prior to September 16, 2012. 
 

 II. MEANING OF “CERTIFIED COPY” The certified copy which must be filed is a copy of the
 original foreign application with a certification by the patent office of the foreign
 country in which it was filed. Certified copies ordinarily consist of a copy of the
 specification and drawings of the applications as filed with a certificate of the
 foreign patent office giving certain information. Certified copies include those
 retrieved by the Office in accordance with a priority document exchange program. See
 MPEP §
 215.01 . A copy of the certified copy filed by applicant,
 including a copy filed via the USPTO patent electronic filing system, will not satisfy
 the requirement in 37 CFR 1.55(g) for a certified copy. See MPEP § 502.02 ,
 subsection V. “Application” in this connection is not considered to include formal
 papers such as a petition. A copy of the foreign patent as issued does not comply since
 the application as filed is required; however, a copy of the printed specification and
 drawing of the foreign patent is sufficient if the certification indicates that it
 corresponds to the application as filed. 
 

 III. CERTIFIED COPY FILED IN PARENT OR RELATED APPLICATION 
 37 CFR 1.55 Claim for foreign priority. 

 *****

 
 (h) Certified copy in another U.S. patent or application. The
 requirement in paragraphs (f) and (g) of this section for a certified copy of
 the foreign application will be considered satisfied in a reissue application
 if the patent for which reissue is sought satisfies the requirement of this
 section for a certified copy of the foreign application and such patent is
 identified as containing a certified copy of the foreign application. The
 requirement in paragraphs (f) and (g) of this section for a certified copy of
 the foreign application will also be considered satisfied in an application if
 a prior-filed nonprovisional application for which a benefit is claimed under
 35
 U.S.C. 120 , 121 , 365(c) ,
 or 386(c) contains a certified copy of the foreign
 application and such prior-filed nonprovisional application is identified as
 containing a certified copy of the foreign application. 
 

 
 *****

 

 Where the benefit of a foreign filing date based on a
 foreign application is claimed in a later filed application (i.e., continuation,
 continuation-in-part, division) or in a reissue application, and a certified copy of the
 foreign application has been filed in a parent or related application, it is not
 necessary to file an additional certified copy in the later application. See
 37 CFR
 1.55(h) . A reminder of this provision is found in form paragraph
 2.20 . The
 applicant when making such claim for priority may simply identify the application
 containing the certified copy. In such cases, the examiner should acknowledge the claim
 on form PTOL-326. Note copy in MPEP § 707 .
 

 If the applicant fails to call attention to the fact that
 the certified copy is in the parent or related application and the examiner is aware of
 the fact that a claim for priority under 35 U.S.C. 119(a) - (d) or
 (f) was made in the parent application, the examiner should call
 applicant’s attention to these facts in an Office action, so that if a patent issues on
 the later or reissue application, the priority data will appear in the patent. In such
 cases, the language of form paragraph 2.20 should be used.
 

 ¶ 2.20 Certified Copies of Priority Papers in Parent or Related (Reissue
 Situation) - Application
 

 Applicant is reminded that in order for a patent issuing on the instant
 application to obtain priority under 35 U.S.C. 119(a)-(d) or (f) , 365(a) or (b) , or 386(a) or (b) , based on
 priority papers filed in a parent or related Application No. [1] (to which the
 present application claims the benefit under 35 U.S.C. 120 , 121 , 365(c) ), or 386(c) or is a reissue application of a patent issued on the related application), a claim for such foreign priority must be timely
 made in this application. To satisfy the requirement of 37 CFR 1.55 for a certified copy of the foreign application, applicant may simply identify the parent nonprovisional application or patent
 for which reissue is sought containing the certified copy.
 

 

 In addition, if the application is in condition for
 allowance and the examiner is aware of the fact that the certified copy is present in
 the parent or related application, the examiner can identify the parent nonprovisional
 application or patent for which reissue is sought containing the certified copy in the
 Notice of Allowability.
 

 Where the benefit of a foreign filing date, based on a
 foreign application, is claimed in a later filed application or in a reissue application
 and a certified copy of the foreign application, as filed, has not been filed in a
 parent or related application, a claim for priority may be made in the later
 application. In re Tangsrud, 184 USPQ 746 (Comm’r Pat. 1973). When
 such a claim is made in the later application and a certified copy of the foreign
 application is placed therein, the examiner should acknowledge the claim on form
 PTOL-326. Note copy in MPEP § 707 .
 

 IV. FOREIGN PRIORITY DOCUMENT INCONSISTENT WITH A TIMELY FOREIGN PRIORITY CLAIM OR NO
 CLAIM FOR FOREIGN PRIORITY For applications filed on or after September 16, 2012, the
 claim for foreign priority must be presented in an application data sheet. For
 applications filed prior to September 16, 2012, any foreign priority claim must be
 identified in either the oath or declaration or in an application data sheet. Where
 applicant has filed a certified copy that does not correspond to the foreign application
 identified in the foreign priority claim by its application number, country (or
 intellectual property authority), day month, and year of its filing, the applicant
 should be notified by using form paragraph 2.22 . Applicant must submit an application data sheet
 in compliance with 37 CFR 1.76(c) , (or, for applications filed prior to September
 16, 2012, a supplemental application data sheet or a new oath or declaration) that
 correctly sets forth the priority claim. See MPEP §§
 601.05(a) and (b) . If
 a claim for foreign priority is presented after the time period set forth in
 37 CFR
 1.55 , the claim may be accepted if the claim properly identifies
 the prior foreign application and is accompanied by a grantable petition under
 37 CFR
 1.55(e) to accept an unintentionally delayed claim for priority
 and the petition fee. 
 

 Where applicant has filed a certified copy of a foreign
 application but has not made a claim for foreign priority, applicant should be notified
 using form paragraph 2.22 .
 

 ¶ 2.22 Certified Copy Filed, But Proper Claim Not Made

 Receipt is acknowledged of a certified copy of foreign application
 [1] , however the present application does not properly claim priority to the
 submitted foreign application. If this copy is being filed to obtain priority to the foreign
 filing date under 35 U.S.C.
 119(a)-(d) or (f) , 365(a) or (b) , or 386(a) ,
 applicant must also file a claim for such priority as required by 35 U.S.C. 119(b) or
 365(b) , and 37 CFR 1.55 . 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.
 

 If the application being examined is an original application filed
 under 35 U.S.C.
 111(a) (other than a design application), the claim for priority must be
 presented during the pendency of the application, and within the later of four months from the
 actual filing date of the application or sixteen months from the filing date of the prior
 foreign application. See 37 CFR 1.55(d)(1) . If the application being examined is a national
 stage application under 35
 U.S.C. 371 , the claim for priority must be made within the time limit
 set forth in the PCT and Regulations under the PCT. See 37 CFR 1.55(d)(2) .
 Any claim for priority under 35 U.S.C. 119(a)-(d) or (f) , 365(a) or (b) , or 386(a) not
 presented within the time period set forth in 37 CFR 1.55 is considered to have been
 waived. If a claim for foreign priority is presented after the time period set forth in
 37 CFR
 1.55 , the claim may be accepted if the claim properly identifies the
 prior foreign application and is accompanied by a grantable petition under 37 CFR 1.55(e) to
 accept an unintentionally delayed claim for priority and the petition fee. 
 

 Examiner Note:
 
 1. Use this form paragraph only for original applications filed under 35 U.S.C.
 111(a) on or after November 29, 2000 and for national stage
 applications under 35
 U.S.C. 371 . DO NOT use for design applications.
 

 2. In bracket 1, insert the application number of the foreign
 application.
 
 
 
 V. APPLICATION IN ISSUE When the claim for foreign priority or the certified
 copy of the foreign application is filed after the date of payment of the issue fee but
 prior to the date of grant of the patent, the foreign priority claim or certified copy
 will be placed in the file record but there may be no review of the papers and the
 patent when published will not include the priority claim. A certificate of correction
 under 35 U.S.C.
 255 and 37 CFR 1.323 can be filed to have
 the foreign priority claim or certified copy considered after publication of the patent.
 In addition, for original applications filed under 35 U.S.C.
 111(a) or international applications entering the national stage
 under 35 U.S.C.
 371 , a grantable petition under 37 CFR 1.55(e) 
 to accept an unintentionally delayed claim for priority and the petition fee must be
 filed with the certificate of correction. See MPEP §
 216.01 .
 

 VI. NO CERTIFIED COPY Where priority is claimed but no certified copy of the
 foreign application has been filed, use form paragraph 2.25 .
 

 ¶ 2.25 Claimed Foreign Priority, No Papers 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 .
 

 Examiner Note:
 
 1. In bracket 1, insert the country
 name.
 

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

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

 Any unusual situation may be referred to the Technology
 Center (TC) Director. 
 

 VII. RETURN OF CERTIFIED COPY Certified copies that have been entered into the
 application file will not be returned to applicant.
 

 
 215.01 Electronic Priority Document Exchange [R-01.2024]

 Electronic Priority Document Exchange (PDX) agreements
 provide for the electronic transmission of priority documents to and from participating
 foreign intellectual property offices. The Office treats a proper priority claim under
 37 CFR
 1.55 to an application filed in a participating foreign
 intellectual property office as a request that the Office obtain a copy of the foreign
 application from the participating intellectual property office. A separate written
 request may be used when the applicant wishes the Office to retrieve a foreign
 application from a foreign intellectual property office that becomes a participating
 foreign intellectual property office after the foreign priority has been claimed, so
 long as the time period set in 37 CFR 1.55 has not expired. A
 separate written request is required in the situation where the foreign application is
 not originally filed in a participating office, but a certified copy of the foreign
 application was filed in an application subsequently filed in a participating foreign
 intellectual property office. Applicants can use Form PTO/SB/38 (Request to Retrieve
 Electronic Priority Application(s)) to file such a request. 
 

 An improper, incomplete, or inconsistent citation of a
 foreign priority application and/or its filing date will result in a delay or prevent
 retrieval under the Priority Document Exchange program. In particular, any foreign
 priority claim that is incomplete will prevent successful electronic retrieval of the
 priority application. Applicants are strongly encouraged to cite the foreign application
 using an acceptable format (see MPEP § 214.04 ) and use proper and
 consistent citation format throughout the U.S. application.
 

 In general, an attempt to retrieve an eligible foreign
 application to which priority is claimed in a U.S. application will be made by the USPTO
 when the application is docketed to an examiner. In any case the USPTO will not attempt
 electronic retrieval until the Office of Patent Application Processing has completed its
 review of the application. Applicants are encouraged to check Patent Center determine
 whether the foreign priority application has been successfully retrieved. A successful
 request to retrieve an electronic foreign priority application takes approximately 1
 week to complete.
 

 The Office will not send a notice setting a time period
 for filing a certified copy of the priority document. Upon receipt of a Notice of
 Allowance, applicants should check to see whether the Office has received a copy of the
 foreign application under the priority document exchange program because successful
 retrieval of priority documents cannot be guaranteed. To be entitled to priority, the
 Office must receive a copy of the foreign application from the participating foreign
 intellectual property office within the pendency of the application and before the
 patent is granted, or receive a paper certified copy of the foreign application during
 that time period. If a 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 . See
 MPEP §
 215.02(a) for information pertaining to meeting the timeliness
 requirement for filing a certified copy by using PDX.
 

 The USPTO will attempt retrieval of foreign applications
 to which priority is claimed in a U.S. design application where possible. The Spanish
 Patent and Trademark Office deposits certain ES industrial design applications for
 access by the USPTO via the WIPO DAS. Therefore, when the applicant claims foreign
 priority to an ES industrial design application and provides the WIPO DAS access code,
 the USPTO will attempt retrieval via the WIPO DAS. The USPTO will automatically attempt
 retrieval of international applications filed under the PCT where the receiving office
 is RO/AU, RO/DK, RO/ES, RO/FI, RO/IB, RO/MA or RO/SE and the applicant has provided the
 required WIPO DAS access code for the international application to which foreign
 priority is claimed.
 

 The Office website provides additional information
 concerning the priority document exchange program ( www.uspto.gov/PatentsPDX ). This information includes the
 intellectual property offices that participate in the priority document exchange
 program, as well as the information necessary for each participating foreign
 intellectual property office to provide the Office with access to the foreign
 application. 
 

 

 
 215.02 Time For Filing Certified Copy – Application Filed
 On or After March 16, 2013 [R-01.2024]
 

 [Editor Note: See MPEP § 215.03 for information
 regarding the time for filing a certified copy in an application filed before March
 16, 2013.] 

 
 37 CFR 1.55 Claim for foreign priority 

 *****

 
 (f) Time for filing certified copy of foreign application— 
 (1) Application under 35 U.S.C.
 111(a) . A certified copy of the foreign
 application must be filed within the later of four months from the actual
 filing date of the application, or sixteen months from the filing date of
 the prior foreign application, in an original application under
 35 U.S.C. 111(a) 
 filed on or after March 16, 2013, except as provided in paragraphs (h),
 (i), and (j) of this section. The time period in this paragraph does not
 apply in a design application.
 

 (2) Application under 35 U.S.C.
 371 . A certified copy of the foreign
 application must be filed within the time limit set forth in the PCT and
 the Regulations under the PCT in an international application entering
 the national stage under 35 U.S.C. 371 . If a
 certified copy of the foreign application is not filed during the
 international stage in an international application in which the national
 stage commenced on or after December 18, 2013, a certified copy of the
 foreign application must be filed within the later of four months from
 the date on which the national stage commenced under 35 U.S.C.
 371(b) or (f) (§
 1.491(a) ), four months from the date of the
 initial submission under 35 U.S.C. 371 to
 enter the national stage, or sixteen months from the filing date of the
 prior foreign application, except as provided in paragraphs (h), (i), and
 (j) of this section.
 

 (3) If a certified copy of the foreign
 application is not filed within the time period specified [in] paragraph
 (f)(1) of this section in an application under 35 U.S.C.
 111(a) or within the period specified in paragraph
 (f)(2) of this section in an international application entering the
 national stage under 35 U.S.C. 371 , and an
 exception in paragraph (h), (i), or (j) of this section is not
 applicable, the certified copy of the foreign application must be
 accompanied by a petition including a showing of good and sufficient
 cause for the delay and the petition fee set forth in § 1.17(g) .
 

 
 

 
 *****

 

 For applications filed under 35 U.S.C.
 111(a) on or after March 16, 2013, 37 CFR
 1.55(f)(1) sets forth the time period for filing a certified copy
 of the foreign application. The time period in 37 CFR
 1.55(f)(1) does not apply in design applications.
 37 CFR
 1.55(f)(1) requires that a certified copy of the foreign
 application be filed within the later of four months from the actual filing date of the
 application or sixteen months from the filing date of the prior foreign application with
 three exceptions. For international applications entering the national stage under
 35 U.S.C.
 371 , 37 CFR 1.55(f)(2) sets forth the
 time period for filing a certified copy of the foreign application. 37 CFR
 1.55(f)(2) requires a certified copy of the foreign application be
 filed within the time limit set forth in the PCT and the Regulations under the PCT, and
 if a certified copy is not filed during international stage in an international
 application in which the national stage commenced on or after December 18, 2013, a
 certified copy of the foreign application must be filed within the later of four months
 from the date on which the national stage commenced under 35 U.S.C. 371(b) 
 or (f) , four months from the date of the initial submission under
 35 U.S.C.
 371 to enter the national stage, of sixteen months from the filing
 date of the prior foreign application with three exceptions. As provided in
 37 CFR
 1.55(h) , (i) , or (j) , the
 time period requirement in 37 CFR 1.55(f)(1) or
 (f)(2) does not apply if: 
 

 
 (1) a prior-filed nonprovisional application for
 which a benefit is claimed under 35 U.S.C. 120 ,
 121 , 365(c) or 386(c) contains a certified copy of the foreign application
 and such prior-filed nonprovisional application is identified as containing a
 certified copy of the foreign application, or in the case of a reissue
 application, if the patent for which reissue is sought satisfies the requirement
 for a certified copy and such patent is identified as containing the certified
 copy (see 37 CFR 1.55(h) and
 MPEP § 215 , subsection III); 
 

 (2) the priority application was filed in a
 participating foreign intellectual property office, or if a copy of the foreign
 application was filed in an application subsequently filed in a participating
 foreign intellectual property office that permits the Office to obtain such a
 copy, and the Office either receives a copy of the foreign application from the
 participating foreign intellectual property office or a certified copy of the
 foreign application during the pendency of the application and before the patent
 is granted (see 37 CFR 1.55(i) and
 MPEP § 215.02(a) ); or 
 

 (3) the applicant provides an interim copy of the
 original foreign application within the later of four months from the actual
 filing date of the application or sixteen months from the filing date of the prior
 foreign application, and files a certified copy of the foreign application within
 the pendency of the application and before the patent is granted (see
 37
 CFR 1.55(j) and MPEP §
 215.02(b) ). 
 

 
 Because U.S. patent application publications (as well as
 U.S. patents) will have a prior art effect as of the earliest priority date (for subject
 matter disclosed in the priority application) with respect to applications subject to
 AIA 35 U.S.C.
 102 , the Office needs to ensure that it has a copy of the priority
 application by the time of publication. The time period of four months from the actual
 filing date of the application or sixteen months from the filing date of the prior
 foreign application is consistent with the international norm for when the certified
 copy of the foreign application needs to be filed in an application. See
 PCT Rule
 17.1(a) . 
 

 If a certified copy of the foreign application is not
 filed within the time period specified in 37 CFR 1.55(f)(1) or
 (f)(2) , as appropriate, and the exceptions in 37 CFR
 1.55(h) , (i) , and (j) are
 not applicable, the certified copy of the foreign application must be accompanied by a
 petition including a showing of good and sufficient cause for the delay and the petition
 fee set forth in 37 CFR 1.17(g) . This provision for
 the belated filing of a certified copy of the foreign application obviates the need for
 a petition under 37
 CFR 1.183 to waive or suspend a requirement of the regulations in
 such a situation. 37 CFR 1.55(f) provides a lower
 standard (good and sufficient cause versus an extraordinary situation) and lower fee
 (petition fee set forth in 37 CFR 1.17(g) versus the petition
 fee set forth in 37 CFR 1.17(f) ) than petitions under
 37 CFR
 1.183 .
 

 See MPEP § 213.06 for additional
 information regarding filing a certified copy in a national stage application
 ( 35 U.S.C.
 371 ).
 

 
 215.02(a) Timeliness Requirement – Met By Priority
 Document Exchange [R-07.2022]
 

 
 37 CFR 1.55 Claim for foreign priority. 

 *****

 
 (i) Foreign intellectual property office participating in a priority
 document exchange agreement. The requirement in paragraphs (f)
 and (g) of this section for a certified copy of the foreign application to
 be filed within the time limit set forth therein will be considered
 satisfied if:
 
 (1) The foreign application was
 filed in a foreign intellectual property office participating with the
 Office in a bilateral or multilateral priority document exchange
 agreement (participating foreign intellectual property office), or a
 copy of the foreign application was filed in an application
 subsequently filed in a participating foreign intellectual property
 office that permits the Office to obtain such a copy;
 

 (2) The claim for priority is
 presented in an application data sheet (§ 1.76(b)(6) ), identifying the foreign
 application for which priority is claimed, by specifying the
 application number, country (or intellectual property authority), day,
 month, and year of its filing, and the applicant provides the
 information necessary for the participating foreign intellectual
 property office to provide the Office with access to the foreign
 application;
 

 (3) The copy of the foreign
 application is received by the Office from the participating foreign
 intellectual property office, or a certified copy of the foreign
 application is filed, within the period specified in paragraph (g)(1)
 of this section; and
 

 (4) The applicant files in a
 separate document a request that the Office obtain a copy of the
 foreign application from a participating intellectual property office
 that permits the Office to obtain such a copy where, although the
 foreign application was not filed in a participating foreign
 intellectual property office, a copy of the foreign application was
 filed in an application subsequently filed in a participating foreign
 intellectual property office that permits the Office to obtain such a
 copy. The request must identify the participating intellectual
 property office and the subsequent application by the application
 number, day, month, and year of its filing in which a copy of the
 foreign application was filed. The request must be filed within the
 later of sixteen months from the filing date of the prior foreign
 application, four months from the actual filing date of an application
 under 35 U.S.C. 111(a) ,
 four months from the date on which the national stage commenced under
 35 U.S.C. 371(b) or (f) (§ 1.491(a) ), or four
 months from the date of the initial submission under 35 U.S.C.
 371 to enter the national stage, or the request
 must be accompanied by a petition under paragraph (e) or (f) of this
 section.
 

 
 

 
 *****

 

 37 CFR
 1.55(i) provides that the requirement in 37 CFR
 1.55(f) and (g) for a certified copy of the
 foreign application to be filed within the time limit set forth in 37 CFR
 1.55(f) and (g) will be considered satisfied
 if the Office receives a copy of the priority document through the priority document
 exchange program during the pendency of the application and before the patent is
 granted. 37 CFR 1.55(i) specifically provides that this requirement for
 a timely filed certified copy of the foreign application will be considered satisfied
 if: (1) The foreign application was filed in a foreign intellectual property office
 participating with the Office in a bilateral or multilateral priority document
 exchange agreement (participating foreign intellectual property office); (2) the
 claim for priority is presented in an application data sheet (§ 1.76(b)(6) ), identifying the foreign application for which
 priority is claimed, by specifying the application number, country (or intellectual
 property authority), day, month, and year of its filing, and including the
 information necessary for the participating foreign intellectual property office to
 provide the Office with access to the foreign application; and (3) the copy of the
 foreign application is received by the Office from the participating foreign
 intellectual property office, or a certified copy of the foreign application is
 filed, within the time period set forth in 37 CFR
 1.55(g)(1) ).
 

 37 CFR
 1.55(i) also provides that if the foreign application was not
 filed in a participating foreign intellectual property office, but a copy of the
 foreign application was filed in an application subsequently filed in a participating
 foreign intellectual property office that permits the Office to obtain such a copy,
 the applicant must also file a request in a separate document that the
 Office obtain a copy of the foreign application from the participating intellectual
 property office. This request must identify the participating intellectual property
 office and the application number and filing date of the subsequent application in
 which a copy of the foreign application was filed, and be filed within the later of
 sixteen months from the filing date of the prior foreign application or four months
 from the actual filing date of an application under 35 U.S.C.
 111(a) , within four months from the later of the date of
 commencement ( 37 CFR 1.491(a) ) or the date of the initial submission under
 35 U.S.C.
 371 in an application entering the national stage under
 35 U.S.C.
 371 , or with a petition under 37 CFR
 1.55(e) or (f) . Applicants can use Form
 PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a
 request.
 

 The Office website provides information concerning the
 priority document exchange program ( www.uspto.gov/patents/basics/international
 -protection/electronic-priority-document-exchange- pdx ). See also
 MPEP §
 215.01 . This information includes the intellectual property
 offices that participate in the priority document exchange program, as well as the
 information necessary for each participating foreign intellectual property office to
 provide the Office with access to the foreign application. The Office appreciates
 that an applicant may discover that the Office will not receive a copy of a foreign
 application through the priority document exchange program until after the expiration
 of the time frame specified in 37 CFR 1.55(f) . In this
 situation, an applicant who otherwise meets the conditions of 37 CFR
 1.55(i) may satisfy the requirement of 37 CFR
 1.55(i)(3) by filing a certified copy of the foreign
 application in the Office within the pendency of the application and before the
 patent is granted.
 

 Applicants continue to bear the ultimate responsibility
 for ensuring that the priority document is filed during the pendency of the
 application and before the patent is issued. Accordingly, applicants are encouraged
 to check as necessary to confirm receipt by the Office of appropriate documents.
 Priority documents retrieved from a participating foreign intellectual property
 office will bear the document description: ‘‘Priority documents electronically
 retrieved by USPTO from a participating IP Office.’’ Furthermore, 37 CFR
 1.55(i)(4) provides that, under specified conditions, if the
 foreign application was not filed in a participating foreign intellectual property
 office, the applicant can file a request in a separate document that the Office
 obtain a copy of the foreign application from a participating intellectual property
 office that permits the Office to obtain such a copy. Applicants can use Form
 PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a
 request. If the Office receives a copy of the foreign application from the
 participating foreign intellectual property office within the pendency of the
 application and before the patent is granted, the applicant need not file a certified
 paper copy of the foreign application. As a specific example, Germany is not
 currently a participating foreign intellectual property office, however a DE
 application may be retrieved via the priority document exchange program if it is
 identified in the claim for priority on the application data sheet, a subsequent
 application filed in the European Patent Office (EPO) or the Japan Patent Office
 (JPO) contains a certified copy of the DE application, and the applicant timely files
 a separate request for the Office to obtain from the EPO or JPO a copy of the
 certified copy of the DE application, wherein the request identifies the DE
 application and the subsequent EP or JP application by their application number,
 country, day, month, and year of their filing. 
 

 The Office treats a proper priority claim under
 37 CFR
 1.55 to an application filed in a participating foreign
 intellectual property office as a request that the Office obtain a copy of the
 foreign application from the participating intellectual property office. A separate
 written request may be used when the applicant wishes the Office to retrieve a
 foreign application from a foreign intellectual property office that becomes a
 participating foreign intellectual property office after the foreign priority has
 been claimed, so long as the time period set in 37 CFR
 1.55(f) has not expired. A separate written request is required
 in the situation where the foreign application is not originally filed in a
 participating office, but a certified copy of the foreign application was filed in an
 application subsequently filed in a participating foreign intellectual property
 office.
 

 

 
 215.02(b) Timeliness Requirement – Met By Interim Copy of
 Foreign Application [R-07.2022]
 
 I. TRUE COPY OF FOREIGN APPLICATION AS FILED 
 37 CFR 1.55 Claim for foreign priority. 

 *****

 
 (j) Interim copy. The requirement in paragraph (f) of this
 section for a certified copy of the foreign application to be filed
 within the time limit set forth therein will be considered satisfied
 if:
 
 (1) A copy of the original foreign
 application clearly labeled as "Interim Copy," including the
 specification, and any drawings or claims upon which it is based,
 is filed in the Office together with a separate cover sheet
 identifying the foreign application by specifying the application
 number, country (or intellectual property authority), day, month,
 and year of its filing, and stating that the copy filed in the
 Office is a true copy of the original application as filed in the
 foreign country (or intellectual property authority);
 

 (2) The copy of the foreign
 application and separate cover sheet are filed within the later of
 sixteen months from the filing date of the prior foreign
 application, four months from the actual filing date of an
 application under 35 U.S.C.
 111(a) , four months from the date on which
 the national stage commenced under 35 U.S.C.
 371(b) or (f) (§
 1.491(a) ), four
 months from the date of the initial submission under
 35 U.S.C. 371 
 to enter the national stage, or with a petition under paragraph (e)
 or (f) of this section; and
 

 (3) A certified copy of the
 foreign application is filed within the period specified in
 paragraph (g)(1) of this section.
 

 
 

 
 *****

 

 37 CFR
 1.55(j) permits an applicant to provide an “interim copy” of
 the original foreign application from the applicant’s own records to provide for
 the situation in which the applicant cannot obtain a certified copy of the foreign
 application within the time limit set forth in 37 CFR
 1.55(f) , although there is no requirement that an applicant
 be unable to obtain a certified copy of the foreign application within the time
 limit set forth in 37 CFR 1.55(f) to use
 37
 CFR 1.55(j) . The requirement for a certified copy of the
 foreign application to be filed within the time limit set forth in
 37
 CFR 1.55(f) will be considered satisfied if the applicant
 files a copy of the original foreign application clearly labeled as ‘‘Interim
 Copy,’’ including the specification, and any drawings or claims upon which it is
 based with the time period specified in 37 CFR
 1.55(j) . 37 CFR 1.55(j) also provides
 that the interim copy of the foreign application must be filed together with a
 separate cover sheet identifying the foreign application by specifying the
 application number, country (or intellectual property authority), day, month, and
 year of its filing, and stating that the copy filed in the Office is a true copy
 of the original application as filed in the foreign country (or intellectual
 property authority). 37 CFR 1.55(j) also provides
 that the interim copy of the foreign application and cover sheet must be filed
 within the later of sixteen months from the filing date of the prior foreign
 application or four months from the actual filing date of an application under
 35
 U.S.C. 111(a) , within four months from the later of the date
 of commencement ( 37 CFR 1.491(a) ) or the date
 of the initial submission under 35 U.S.C. 371 in an
 application entering the national stage under 35 U.S.C. 371 , or with a
 petition under 37 CFR 1.55(e) or
 (f) . 37 CFR 1.55(j) finally
 provides that a certified copy of the foreign application ultimately must be filed
 within the period specified in 37 CFR 1.55(g)(1) . Thus,
 providing an interim copy of a foreign application under 37 CFR
 1.55(j) satisfies the requirement for a certified copy of
 the foreign application to be filed within the time limit set forth in
 37
 CFR 1.55(f) , but a certified copy of the foreign application
 must still be filed during the pendency of the application, unless filed with a
 petition under 37 CFR 1.55(e) ,
 (f) , or (g) as appropriate.
 

 An interim copy of a foreign priority application
 will be entered into the file wrapper of the application in which it was filed and
 labeled as “Interim copy of Foreign Priority Document.”
 

 II. FILING INTERIM COPY VIA THE USPTO PATENT ELECTRONIC FILING SYSTEM If not provided as a single paper document, the main
 parts of the interim copy of the foreign priority application, i.e., Abstract,
 Drawings, Specification, Claims, and where applicable, the foreign patent office’s
 equivalent to a “Sequence Listing” (see MPEP § 2421.01 a “Sequence
 Listing XML” (see MPEP § 2412 ), “Large Tables” (see
 MPEP §
 608.05(b) ), or a “Computer Program Listing Appendix”
 (see MPEP §
 608.05(a) ), along with the separate cover sheet required
 by 37
 CFR 1.55(j) , may be filed as a single PDF image file via the
 USPTO patent electronic filing system. The PDF image file will be stored in the
 file wrapper of the application, and applicants must select the document
 description “Interim Copy of the Foreign Priority Application” to index this
 document when filing online.
 

 Application parts that were filed in a foreign
 patent office only as plain text computer files (e.g. .txt file), such as a
 foreign patent office’s equivalent to a “Sequence Listing,” “Large Tables,” or a
 “Computer Program Listing Appendix,” may be filed as a .txt file via the USPTO
 patent electronic filing system (or on a read-only optical disc). When filing
 online via the USPTO patent electronic filing system, applicants must select the
 document description “Interim Copy of the Foreign Priority (text file)” to index a
 plain text file part of the application. See MPEP § 502.05 
 for additional information regarding filing documents via the USPTO patent
 electronic filing system. Application parts that were filed in a foreign patent
 office only as an eXtensible Markup Language (XML) file, such as a Standard ST.26
 Sequence Listing, may be filed as a XML file on a read-only optical disc as part
 of the “Interim Copy of Foreign Priority.” 
 

 

 

 
 215.03 Time For Filing Certified Copy – Application
 Filed Before March 16, 2013 [R-08.2017]
 

 [Editor Note: See MPEP § 215.02 for information
 regarding the time for filing a certified copy in an application filed on or after
 March 16, 2013.] 

 
 37 CFR 1.55 Claim for foreign priority. 

 *****

 
 (g) Requirement for filing priority claim, certified copy of foreign
 application, and translation in any application. 
 (1) The claim for priority and the
 certified copy of the foreign application specified in 35 U.S.C.
 119(b) or PCT Rule 17 must, in
 any event, be filed within the pendency of the application, unless filed
 with a petition under paragraph (e) or (f) of this section, or with a
 petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and
 sufficient cause for the delay in filing the certified copy of the
 foreign application in a design application. If the claim for priority or
 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 § 1.323 .
 

 (2) The Office may require that the claim
 for priority and the certified copy of the foreign application be filed
 earlier than otherwise provided in this section:
 
 (i) When the application is involved
 in an interference (see § 41.202 of this
 chapter) or derivation (see part 42 of this chapter)
 proceeding;
 

 (ii) When necessary to overcome the
 date of a reference relied upon by the examiner; or
 

 (iii) When deemed necessary by the
 examiner.
 

 
 

 (3) An English language translation of a
 non-English language foreign application is not required except:
 
 (i) When the application is involved
 in an interference (see § 41.202 of this
 chapter) or derivation (see part 42 of this chapter)
 proceeding;
 

 (ii) When necessary to overcome the
 date of a reference relied upon by the examiner; or
 

 (iii) When specifically required by the
 examiner.
 

 
 

 (4) If an English language translation of a
 non-English language foreign application is required, it must be filed
 together with a statement that the translation of the certified copy is
 accurate.
 

 
 

 
 *****

 

 35 U.S.C.
 119(b)(3) authorizes the Office to require the applicant to
 furnish a certified copy of priority papers. Pursuant to 37 CFR 1.55 ,
 applicants are required to submit the certified copy of the foreign application
 specified in 35 U.S.C.
 119(b) or PCT Rule 17 before the patent is
 granted. If the claim for priority or 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 . See 37 CFR 1.55(g)(1) . Certification by
 the authority empowered under a bilateral or multilateral treaty to receive applications
 which give rise to a right of priority under Article 4A(2) of the Paris Convention
 will be deemed to satisfy the certification requirement. See MPEP §
 214.01 for the time period for claiming priority to a foreign
 application.
 

 If a claim for foreign priority has been made, the latest
 time at which the certified copy of the foreign application may be filed in order for
 the patent to include the priority claim without the need for a certificate of
 correction is the date of the payment of the issue fee. Under certain circumstances, the
 certified copy may be required at an earlier date. These circumstances are specified in
 37 CFR
 1.55(g)(2) as:
 

 
 (A) when the application is involved in an interference
 or derivation proceeding;
 

 (B) when necessary to overcome the date of a reference
 relied on by the examiner; and
 

 (C) when specifically required by the examiner.

 
 The claim for foreign priority and the certified copy of
 the foreign application specified in 35 U.S.C. 119(b) or
 PCT Rule
 17 must, in any event, be filed before the patent is granted. If
 the claim for foreign priority or the certified copy of the foreign application is filed
 after the date of payment of the issue fee but prior to the date of grant of the patent,
 the priority claim or certified copy will be placed in the file record but there will be
 no review of the papers and the patent when published will not include the priority
 claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can
 be filed to have the priority claim or certified copy considered after publication of
 the patent. In addition, for original applications filed under 35 U.S.C.
 111(a) (other than a design application), where the priority claim
 was not timely filed, a grantable petition to accept an unintentionally delayed claim
 for priority under 37 CFR 1.55(e) and the petition fee
 must also be filed with the certificate of correction. Furthermore, where the priority
 claim was timely filed but was not included on the patent because the certified copy was
 not submitted, a grantable petition under 37 CFR 1.55(f) and the petition fee
 or, in the case of a design application, a grantable petition under 37 CFR
 1.55(g) and the petition fee must also be filed with the
 certificate of correction unless the exception in 37 CFR
 1.55(h) is applicable. See MPEP §
 216.01 .
 

 In view of the shortened periods for prosecution leading
 to allowances, it is recommended that priority papers be filed as early as possible.
 Although 37
 CFR 1.55(g)(1) permits the filing of priority papers up to and
 including the date for payment of the issue fee, it is advisable that such papers be
 filed promptly after filing the application. Frequently, priority papers are found to be
 deficient in material respects, such as for example, the failure to include the correct
 certified copy, and applicants should ensure that there is sufficient time to remedy any
 defects. For applications filed prior to September 16, 2012, where the priority claim is
 presented in the oath or declaration, a new oath or declaration may be necessary where
 the original oath or declaration omits the reference to the foreign filing date for
 which the benefit is claimed. The early filing of priority papers would thus be
 advantageous to applicants in that it would afford time to explain any inconsistencies
 that exist or to supply any additional documents that may be necessary. It is important
 to note that for applications filed on or after September 16, 2012, the claim for
 foreign priority must be presented in an application data sheet ( 37 CFR
 1.76(b)(6) ). 
 

 It is suggested that a notation of the application number
 of the corresponding U.S. application be placed on the priority papers when such papers
 are not submitted via a priority document exchange program. Such notation should be
 placed directly on the priority papers themselves even where a cover letter is attached
 bearing the U.S. application data. Experience indicates that cover letters and priority
 papers occasionally become separated, and without the suggested notations on the
 priority papers, correlating them with the corresponding U.S. application becomes
 exceedingly difficult, frequently resulting in severe problems for both the Office and
 applicant. Adherence to the foregoing suggestion for making a notation on the priority
 document of the U.S. application data will result in a substantial lessening of the
 problem.
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 201-Types of Applications 
 201.01-National Applications 

 201.02-General Terms Used to Describe Applications 

 201.03-[Reserved] 

 201.04-Provisional Application 

 201.05-Reissue Application 

 201.06-Divisional Application 
 201.06(a)-Former 37 CFR 1.60 Divisional Continuation Procedure 

 201.06(b)-Former 37 CFR 1.62 File Wrapper Continuing Procedure 

 201.06(c)-37 CFR 1.53(b) and 37 CFR 1.63(d) Divisional-Continuation Procedure 

 201.06(d)-37 CFR 1.53(d) Continued Prosecution Application (CPA) Practice 

 
 

 201.07-Continuation Application 

 201.08-Continuation-in-Part Application 

 
 

 202-Cross-Noting 

 203-Status of Applications 
 203.01-New 

 203.02-Rejected 

 203.03-Amended 

 203.04-Allowed or in Issue 

 203.05-Abandoned 

 203.06-Incomplete 

 203.07-[Reserved] 

 203.08-Status Inquiries 
 203.08(a)-Congressional and Other Official Inquiries 

 
 

 
 

 204‑209-[Reserved] 

 210-Priority to, or the Benefit of, the Filing Date of a Prior-Filed Application 

 211-Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) 
 211.01-Requirements Related to the Prior-Filed Application 
 211.01(a)-Claiming the Benefit of a Provisional Application 

 211.01(b)-Claiming the Benefit of a Nonprovisional Application 

 211.01(c)-Claiming the Benefit of an International Application Designating the United States 

 211.01(d)-Claiming the Benefit of an International Design Application Designating the United States 

 
 

 211.02-Reference to Prior Application(s) 
 211.02(a)-Correcting or Adding a Benefit Claim After Filing 

 
 

 211.03-Time Period for Making a Claim for Benefit Under 37 CFR 1.78 

 211.04-Delayed Benefit Claims 

 211.05-Sufficiency of Disclosure in Prior-Filed Application 

 
 

 212-[Reserved] 

 213-Right of Priority of Foreign Application 
 213.01-Recognized Countries and Regional Patent Offices of Foreign Filing 

 213.02-Formal Requirements Relating to Foreign Priority Application 

 213.03-Time for Filing U.S. Nonprovisional Application 

 213.04-Requirement to File Priority Claim and Certified Copy During Pendency of Application 

 213.05-Right of Priority Based Upon an Application for an Inventor’s Certificate 

 213.06-Claiming Priority and Filing a Certified Copy in a National Stage Application (35 U.S.C. 371) 

 213.07-Claiming Priority and Filing a Certified Copy in a Nonprovisional International Design Application 

 
 

 214-Formal Requirements of Claim for Foreign Priority 
 214.01-Time for Filing Priority Claim 

 214.02-Unintentionally Delayed Priority Claims 

 214.03-Office Acknowledgement of Priority Claims 

 214.04-Proper Identification of Priority Application in Foreign Priority Claim 

 
 

 215-Certified Copy of Foreign Application 
 215.01-Electronic Priority Document Exchange 

 215.02-Time For Filing Certified Copy – Application Filed On or After March 16, 2013 
 215.02(a)-Timeliness Requirement – Met By Priority Document Exchange 

 215.02(b)-Timeliness Requirement – Met By Interim Copy of Foreign Application 

 
 

 215.03-Time For Filing Certified Copy – Application Filed Before March 16, 2013 

 
 

 216-Entitlement to Priority 
 216.01-Perfecting Claim for Priority Under 35 U.S.C. 119(a)-(d) or (f) After Issuance of a Patent 

 
 

 217-Incorporation by Reference Under 37 CFR 1.57(b) 

 

 

 
 

 
 
 

 
 

 

 
 
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