MPEP § 1828 — MPEP § 1828
Current through: 2022-07-01

1828-Priority Claim and Document 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 1800 

 Section 1828 
 

 
 
 
 
 
 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) .
 

 
 1828.01 Restoration of the Right of Priority [R-07.2022]

 
 37 CFR 1.452 Restoration of right of priority 

 
 (a) If the international application has an
 international filing date which is later than the expiration of the
 priority period as defined by PCT Rule 2.4 but
 within two months from the expiration of the priority period, the right
 of priority in the international application may be restored upon
 request if the delay in filing the international application within the
 priority period was unintentional.
 

 (b) A request to restore the right of priority
 in an international application under paragraph (a) of this section must
 be filed not later than two months from the expiration of the priority
 period and must include:
 
 (1) A notice under PCT Rule
 26bis.1(a) adding
 the priority claim, if the priority claim in respect of the
 earlier application is not contained in the international
 application;
 

 
 
 (2) The petition fee as set forth in §
 1.17(m) ;
 and
 

 (3) A statement that the delay in
 filing the international application within the priority period
 was unintentional. The Director may require additional
 information where there is a question whether the delay was
 unintentional.
 

 
 

 (c) If the applicant makes a request for early
 publication under PCT Article
 21(2)(b) , any requirement under paragraph (b) of
 this section filed after the technical preparations for international
 publication have been completed by the International Bureau shall be
 considered as not having been submitted in time.
 

 
 

 On April 1, 2007, the regulations to the PCT were amended to allow
 applicants with applications which were filed on or after that date and which were
 also filed after the expiration of the 12 month priority period but within two
 months of the expiration of the priority period, to request that the right of
 priority be restored, provided that the failure to file the application within the
 priority period was in spite of due care or unintentional. See PCT Rule 26
 bis.3 . Grantable requests for
 restoration of the right of priority must be filed within two months from the date
 of expiration of the priority period as defined by new PCT Rule 2.4 ,
 and must be accompanied by: (i) the requisite fee as set forth in §
 1.17(m) ; (ii) a notice under PCT Rule 26
 bis.1(a) adding the priority claim, if
 the priority claim in respect of the earlier application is not contained in the
 international application; and (iii) a statement that the delay in filing the
 international application within the priority period was unintentional. The Director
 may require additional information where there is a question whether the delay was
 unintentional. If the applicant makes a request for early publication under
 PCT Article
 21(2)(b) , any of requirements (i), (ii), or (iii) above which
 are filed after the technical preparations for international publication have been
 completed by the International Bureau shall be considered as not having been
 submitted in time.
 

 The International Bureau decides these matters under both the in
 spite of due care and unintentional standards. Therefore, in view of the fact that
 the USPTO only decides these matters under the unintentional standard, applicants
 may wish to consider filing directly with the International Bureau as receiving
 Office instead of the United States Receiving Office in the situation where
 applicant desires to request restoration of the right of priority under the in spite
 of due care standard. Applicants may also request that an application be forwarded
 to the International Bureau for processing in its capacity as a receiving Office in
 accordance with PCT Rule 19.4(a)(iii) in situations where applicants, after
 the international application has been filed, realize that the application was filed
 after the expiration of the 12 month priority period but within two months of the
 expiration of the priority period, and where applicant desires to request
 restoration of the right of priority under the in spite of due care standard.
 However, the United States Receiving Office may decline to forward the international
 application to the International Bureau under PCT Rule 19.4(a)(iii) if
 substantial processing of the international application by the United States
 Receiving Office has occurred. An international application filed with, or forwarded
 to, the International Bureau must have a foreign filing license unless: (1) the
 invention was not made in the United States; or (2) a U.S. national application on
 the invention was filed at least six months prior to the filing of the international
 application, the U.S. national application is not subject to a secrecy order under
 37 CFR
 5.2 , and the international application does not contain
 modifications, amendments, or supplements changing the general nature of the
 invention in a manner that would require any corresponding United States application
 to be or have been available for inspection under 35 U.S.C.
 181 . See 37 CFR 5.11 and
 5.15 .
 

 It should be noted that restoration of a right of priority to a
 prior application by the United States Receiving Office, or by any other receiving
 Office, under the provisions of PCT Rule 26
 bis.3 , will not entitle applicants to a
 right of priority to such prior application in a national stage application in any
 office that has notified the International Bureau under PCT Rule
 26bis.3(j) and 49ter.1(g) of an incompatibility with its
 national law. A full listing of the national offices that will not accept the
 restoration of the right of priority in the national stage may be found on WIPO’s
 website at www.wipo.int/pct/en/texts/reservations/res_incomp.html . In the
 United States, a right of priority that has been restored under PCT Rule
 26bis.3 during the international stage
 will be effective in the U.S. national stage. See MPEP §
 1893.03(c) .
 

 It should also be noted that regardless of the
 PCT Rule
 26bis.3(j) and 49ter.1(g) status of any particular
 office, the priority date will still govern all PCT time limits, including the
 thirty-month period for filing national stage papers and fees under
 37 CFR
 1.495 . PCT Article 2(xi) , which
 defines “priority date” for purposes of computing time limits, contains no
 limitation that the priority claim be valid.
 

 In addition, in the context of a request for
 restoration of the right of priority pursuant to PCT Rule
 26bis.3(a) , the receiving Office shall,
 upon reasoned request by the applicant or sua sponte , not
 transmit documents or parts thereof in relation to the request for restoration, if
 it finds that (i) the document or part thereof does not obviously serve the purpose
 of informing the public about the international application; (ii) publication or
 public access or any such document or part thereof would clearly prejudice the
 personal or economic interests of any person; and (iii) there is no prevailing
 public interest to grant access to that document or part thereof. See
 PCT Rule
 26bis.3(h-bis) .
 

 

 
 1828.02 Continuation or Continuation-in-Part
 Indication in the Request [R-07.2022]
 

 
 PCT Rule 4 

 The Request (Contents) 

 *****

 
 4.11 Reference to Continuation or
 Continuation-in-Part, or Parent Application or Grant
 

 
 (a) If:
 
 (ii) the applicant intends to make
 an indication under Rule
 49bis.1(d) of
 the wish that the international application be treated, in
 any designated State, as an application for a continuation
 or a continuation-in-part of an earlier application; the
 request shall so indicate and shall indicate the relevant
 parent application or parent patent or other parent grant.
 
 

 
 

 
 

 *****

 

 The Supplemental Box of the Request form should be
 used where the applicant has an earlier pending United States nonprovisional
 application or international application designating the U.S. and wishes the
 later-filed international application to be treated as a continuation or
 continuation-in-part of such earlier application. To properly identify the parent
 application, the specific reference must identify the parent application by
 application number and indicate the relationship to the parent application (i.e.,
 “continuation” or “continuation-in-part”). The specific reference must also indicate
 the filing date of the parent application if the parent application is an
 international application. See 37 CFR 1.78(d)(2) .
 

 The applicant may correct or add to the request any
 indication referred to in PCT Rule 4.11 by a notice
 submitted to the International Bureau within a time limit of 16 months from the
 priority date, provided that any notice received by the International Bureau after
 the expiration of that time limit shall be considered to have been received on the
 last day of that time limit if the notice reaches the International Bureau before
 the technical preparations for international publication have been completed. See
 PCT
 Rule 26quater.1 . Where any correction or
 addition of an indication referred to in PCT Rule 4.11 is not timely
 received under PCT Rule
 26quater.1 , the International Bureau shall
 notify the applicant accordingly and shall proceed as provided for in the
 Administrative Instructions. See PCT Rule
 26quater.2 . 
 

 The inclusion of a proper reference to the parent
 application in the PCT Request form or the presence of such reference on the front
 page of the published international application will satisfy the requirement in
 37 CFR
 1.78 for the presentation of a benefit claim in an
 application data sheet. See 37 CFR 1.76(g) . In such cases,
 a reference to the parent application in an application data sheet would not be
 required in the national stage application. Furthermore, inclusion of a proper
 reference to the parent application in the PCT Request form is also beneficial where
 applicant chooses to file a continuing application claiming benefit under
 35 U.S.C.
 365(c) to the international application (i.e., a bypass
 application) rather than entering the U.S. national phase under 35 U.S.C.
 371 . See MPEP § 211.02 , which indicates the
 right to rely on a prior application may be waived by an applicant if a reference to
 the prior application is not included in the later-filed application.
 

 

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 1801-Basic Patent Cooperation Treaty (PCT) Principles 

 1802-PCT Definitions 

 1803-Reservations Under the PCT Taken by, and Notifications of Incompatibility Made by, the United States of America 

 1804-[Reserved] 

 1805-Where To File an International Application 

 1806-Applicants and Inventors 

 1807-Agent or Common Representative and General Power of Attorney 

 1808-Change in or Revocation of the Appointment of an Agent or a Common Representative 

 1809-Access to the USPTO patent electronic filing system 

 1810-Filing Date Requirements 

 1811-[Reserved] 

 1812-Elements of the International Application 

 1813 - 1816-[Reserved] 

 1817-PCT Member States 

 1818-[Reserved] 

 1819-Earlier Search 

 1820-Signature of Applicant 

 1821-The Request 

 1822-[Reserved] 

 1823-The Description 
 1823.01-Reference to Deposited Biological Material 

 1823.02-Filing Nucleotide and/or Amino Acid Sequence Listings in International Applications 

 
 

 1824-The Claims 

 1825-The Drawings 

 1826-The Abstract 

 1827-Fees 
 1827.01-Refund of International Application Fees 

 
 

 1828-Priority Claim and Document 
 1828.01-Restoration of the Right of Priority 

 1828.02-Continuation or Continuation-in-Part Indication in the Request 

 
 

 1829-[Reserved] 

 1830-International Application Transmittal Letter 

 1831-[Reserved] 

 1832-License Request for Foreign Filing Under the PCT 

 1833-[Reserved] 

 1834-Correspondence 
 1834.01-Filing of Correspondence by Facsimile 

 1834.02-Irregularities in the Mail or Electronic Communications Service 

 
 

 1835-[Reserved] 

 1836-Rectification of Obvious Mistakes 

 1837 - 1839-[Reserved] 

 1840-The International Searching Authority 
 1840.01-The European Patent Office as an International Searching Authority 

 1840.02-The Korean Intellectual Property Office as an International Searching Authority 

 1840.03-The Australian Patent Office (IP Australia) as an International Searching Authority 

 1840.04-[Reserved] 

 1840.05-The Israel Patent Office (ILPO) as an International Searching Authority 

 1840.06-The Japan Patent Office (JPO) as an International Searching Authority 

 1840.07-The Intellectual Property Office of Singapore (IPOS) as an International Searching Authority 

 
 

 1841-[Reserved] 

 1842-Basic Flow Under the PCT 

 1843-The International Search 
 1843.01-Prior Art for Chapter I Processing 

 1843.02-Certain Subject Matter Need Not Be Searched 

 1843.03-No Search Required if Claims Are Unclear 

 1843.04-Procedure for Claims Not Required To Be Searched and for Claims That Are Unclear 

 1843.05-Time Limit for Establishing the International Search Report and the Written Opinion of the International Searching Authority 

 
 

 1844-The International Search Report 
 1844.01-Preparing the International Search Report (Form PCT/ISA/210) 

 
 

 1845-Written Opinion of the International Searching Authority 
 1845.01-Preparing the Written Opinion of the International Searching Authority (Form PCT/ISA/237) 

 1845.02-Notification of Transmittal of the International Search Report and the Written Opinion of the International Searching Authority,
 or the Declaration (Form PCT/ISA/220) 

 
 

 1846 - 1847-[Reserved] 

 1848-Sequence Listings 

 1849-[Reserved] 

 1850-Unity of Invention Before the International Searching Authority 

 1851-Identification of Patent Documents 

 1852-Taking Into Account Results of Earlier Search(es) 

 1853-Amendment Under PCT Article 19 

 1854 - 1855-[Reserved] 

 1856-Supplementary International Searches 

 1857-International Publication 

 1858-[Reserved] 

 1859-Withdrawal of International Application, Designations, or Priority Claims 

 1860-International Preliminary Examination Procedure 

 1861-[Reserved] 

 1862-Agreement With the International Bureau To Serve as an International Preliminary Examining Authority 

 1863-[Reserved] 

 1864-The Demand and Preparation for Filing of Demand 
 1864.01-Amendments Filed Under PCT Article 34 

 1864.02-Applicant’s Right To File a Demand 

 1864.03-States Which May Be Elected 

 1864.04-Agent’s Right To Act 

 
 

 1865-Filing of Demand 

 1866-[Reserved] 

 1867-Preliminary Examination Fees 

 1868-Correction of Defects in the Demand 

 1869-Notification to International Bureau of Demand 

 1870-Priority Document and Translation Thereof 

 1871-Processing Amendments Filed Under Article 19 and Article 34 Prior to or at the Start of International Preliminary Examination 

 1872-Availability of the International Application File for International Preliminary Examination by the Examining Corps 

 1873-[Reserved] 

 1874-Determination if International Preliminary Examination Is Required and Possible 

 1875-Unity of Invention Before the International Preliminary Examining Authority 
 1875.01-Preparation of Invitation Concerning Unity 

 1875.02-Reply to Invitation Concerning Lack of Unity of Invention 

 
 

 1876-Notation of Errors and Informalities by the Examiner 
 1876.01-Request for Rectification and Notification of Action Thereon 

 
 

 1877-Nucleotide and/or Amino Acid Sequence Listings During the International Preliminary Examination 

 1878-Preparation of the Written Opinion of the International Preliminary Examining Authority 
 1878.01-Includes Subsections Regarding Prior Art, Novelty, Inventive Step, and Industrial Applicability for Purposes of the Written
 Opinion and the International Preliminary Examination Report 
 1878.01(a)-Prior Art for Purposes of the Written Opinion and the International Preliminary Examination Report 
 1878.01(a)(1)-Novelty for Purposes of the Written Opinion and the International Preliminary Examination Report 

 1878.01(a)(2)-Inventive Step for Purposes of the Written Opinion and the International Preliminary Examination Report 

 1878.01(a)(3)-Industrial Applicability for Purposes of the Written Opinion and the International Preliminary Examination Report 

 
 

 
 

 1878.02-Reply to the Written Opinion of the ISA or IPEA 

 
 

 1879-Preparation of the International Preliminary Examination Report 
 1879.01-Time Limit for Preparing Report 

 1879.02-Transmittal of the International Preliminary Examination Report and Related Documents 

 1879.03-Translations 

 1879.04-Confidential Nature of the Report 

 
 

 1880-Withdrawal of Demand or Election 

 1881-Receipt of Notice of Election and Preliminary Examination Report by the United States Patent and Trademark Office 

 1882 - 1892-[Reserved] 

 1893-National Stage (U.S. National Application Filed Under 35 U.S.C. 371) 
 1893.01-Commencement and Entry 
 1893.01(a)-Entry via the U.S. Designated or Elected Office 
 1893.01(a)(1)-Submissions Required by 30 Months from the Priority Date 

 1893.01(a)(2)-Article 19 Amendment (Filed With the International Bureau) 

 1893.01(a)(3)-Article 34 Amendments (Filed with the International Preliminary Examining Authority) 

 1893.01(a)(4)-Claim Amendment (Filed With the U.S. Designated or Elected Office) 

 
 

 1893.01(b)-Applicant for a U.S. National Stage Application 

 1893.01(c)-Fees 

 1893.01(d)-Translation 

 1893.01(e)-Inventor’s Oath or Declaration 

 
 

 1893.02-Abandonment 

 1893.03-Prosecution of U.S. National Stage Applications Before the Examiner 
 1893.03(a)-How To Identify That an Application Is a U.S. National Stage Application 

 1893.03(b)-The Filing Date of a U.S. National Stage Application 

 1893.03(c)-The Priority Date, Priority Claim, and Priority Papers for a U.S. National Stage Application 

 1893.03(d)-Unity of Invention 

 1893.03(e)-Documents Received from the International Bureau and Placed in a U.S. National Stage Application File 
 1893.03(e)(1)-Title of the Invention 

 
 

 1893.03(f)-Drawings and PCT Rule 11 

 1893.03(g)-Information Disclosure Statement in a National Stage Application 

 
 

 
 

 1894-[Reserved] 

 1895-A Continuation, Divisional, or Continuation- in- Part Application of a PCT Application Designating the United States 
 1895.01-Handling of and Considerations in the Handling of Continuations, Divisions, and Continuations-In-Part of PCT Applications 

 
 

 1896-The Differences Between a National Application Filed Under 35 U.S.C. 111(a) and a National Stage Application Submitted Under
 35 U.S.C. 371 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:49:28