MPEP § 216 — MPEP § 216
Current through: 2022-07-01

216-Entitlement to Priority 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0200 

 Section 216 
 

 
 
 
 
 
 216 Entitlement to Priority [R-01.2024]

 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 generally makes no examination of the papers except to see that they contain no
 obvious formal defects and correspond 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. In addition, for original applications filed under 35 U.S.C.
 111(a) (other than design applications) and international
 applications entering the national stage under 35 U.S.C. 371 , the examiner should make
 sure that the claim for foreign priority is timely. Examiners may use form paragraph
 2.21.01 to
 notify applicant that the foreign priority claim is untimely. See also
 MPEP §
 214.03 .
 

 The subject matter of the application is not examined to
 determine whether the applicant is actually entitled to the priority of the foreign filing
 date unless such determination is required for patentability reasons. For example, when
 examining an application under the first inventor to file provisions of the AIA, the
 examiner considers the merits of an applicant’s claim of priority when a reference by the
 inventive entity is found with an effective date between the date of the foreign filing and
 the date of filing in the United States. This would be necessary in order to determine
 whether the reference's prior art date is within the grace period for the application under
 examination and when an interference situation is under consideration. If at the time of
 making an action the examiner has found such an intervening reference, the examiner simply
 rejects whatever claims may be considered unpatentable thereover, without paying any
 attention to the priority date (assuming the certified copy of the priority papers has not
 yet been filed). The applicant in reply may argue the rejection if it is of such a nature
 that it can be argued, or present the foreign papers for the purpose of overcoming the date
 of the reference. If the applicant argues the reference, the examiner, in the next action
 in the application, may specifically require the foreign papers to be filed in addition to
 repeating the rejection if it is still considered applicable, or the examiner may merely
 continue the rejection.
 

 Form paragraph 2.19 may be used in this instance.
 

 ¶ 2.19 Overcome Rejection by Translation

 Applicant cannot rely upon the certified copy of the foreign priority
 application to overcome this rejection because a translation of said application has not been
 made of record in accordance with 37 CFR 1.55 . When an English language
 translation of a non-English language foreign application is required, the translation must be
 that of the certified copy (of the foreign application as filed) submitted together with a
 statement that the translation of the certified copy is accurate. See MPEP §§ 215 
 and 216 .
 

 Examiner Note:

 This paragraph should follow a
 rejection based on an intervening reference.
 

 

 In those cases where the applicant files the certified copy
 of the foreign application for the purpose of overcoming the effective date of a reference,
 a translation is required if the certified copy is not in the English language. When the
 examiner requires the filing of the certified copy, the translation should also be required
 at the same time. If an English language translation of a non-English language foreign
 application is required, the translation must be that of the certified copy (of the foreign
 application as filed) and it must be filed together with a statement that the translation
 of the certified copy is accurate. When the necessary certified copy and translation are
 filed to overcome the date of the reference, the examiner’s action, if the examiner
 determines that the applicant is not entitled to the priority date, is to repeat the
 rejection on the reference, stating the reasons why the applicant is not considered
 entitled to the date. If it is determined that the applicant is entitled to the date, the
 rejection is withdrawn in view of the priority date.
 

 If the certified copy, and translation if necessary, is
 already in the file when the examiner finds a reference with the intervening effective
 date, the examiner will study the certified copy, if it is in the English language, to
 determine if the applicant is entitled to the priority date. If the applicant is found to
 be entitled to the priority date, the reference is not relied upon as prior art, but may be
 cited to applicant on form PTO-892. If the applicant is found not entitled to the date, the
 unpatentable claims are rejected on the reference with an explanation. If the certified
 copy is not in the English language and there is no translation, the examiner may reject
 the unpatentable claims and at the same time require an English translation (the
 translation must be that of the certified copy (of the foreign application as filed) that
 is submitted together with a statement that the translation of the certified copy is
 accurate) for the purpose of determining the applicant’s right to rely on the foreign
 filing date.
 

 The foreign application may have been filed by and in the
 name of the assignee or legal representative or agent of the inventor, as applicant. In
 such cases, if the certified copy of the foreign application corresponds with the one
 identified in an application data sheet, or for applications filed prior to September 16,
 2012, in an application data sheet or in the oath or declaration filed under
 37 CFR
 1.63 (see 37 CFR 1.55(n) ) and no discrepancies
 appear, it may be assumed that the nonprovisional application is entitled to claim priority
 to the foreign application. If the nonprovisional application and the certified copy of the
 foreign application do not name the same inventor or do not have at least one joint
 inventor in common, the priority date should be refused until the inconsistency is
 resolved. See also MPEP § 213.02 .
 

 The most important aspect of the examiner’s action pertaining
 to a right of priority is the determination of the identity of invention between the U.S.
 and the foreign applications. The foreign application may be considered in the same manner
 as if it had been filed in this country on the same date that it was filed in the foreign
 country, and the applicant is ordinarily entitled to any claims based on such foreign
 application that applicant would be entitled to under U.S. laws and practice. The foreign
 application must be examined for the question of sufficiency of the disclosure under
 35 U.S.C.
 112 as well as to determine if there is a basis for the claims
 sought.
 

 In applications filed from the United Kingdom there may be
 submitted a certified copy of the “provisional specification,” which may also in some cases
 be accompanied by a copy of the “complete specification.” The nature and function of the
 United Kingdom provisional specification is described in an article in the Journal of the
 Patent Office Society of November 1936, pages 770-774. According to United Kingdom law the
 provisional specification need not contain a complete disclosure of the invention in the
 sense of 35 U.S.C.
 112 , but need only describe the general nature of the invention, and
 neither claims nor drawings are required. Consequently, in considering such provisional
 specifications, the question of completeness of disclosure is important. If it is found
 that the United Kingdom provisional specification is insufficient for lack of disclosure,
 reliance may then be had on the complete specification and its date, if one has been
 presented, the complete specification then being treated as a different application than
 the provisional specification. In some instances, the specification and drawing of the
 foreign application may have been filed at a date subsequent to the filing of the petition
 in the foreign country. Even though the petition is called the application and the filing
 date of this petition is the filing date of the application in a particular country, the
 date accorded here is the date on which the specification and drawing were filed.
 

 A nonprovisional application may be found entitled to the
 filing date of the foreign application with respect to some claims and not with respect to
 others. In addition, an applicant may rely on two or more different foreign applications
 and may be entitled to the filing date of one of them with respect to certain claims and to
 another with respect to other claims. 
 

 
 216.01 Perfecting Claim for Priority Under 35 U.S.C.
 119(a)-(d) or (f) After Issuance of a Patent [R-07.2022]
 

 
 35 U.S.C. 119 
 Benefit of Earlier Filing Date; Right of
 Priority. 

 *****

 
 (b)
 
 (1) No application for patent shall be entitled
 to this right of priority unless a claim is filed in the Patent and
 Trademark Office, identifying the foreign application by specifying the
 application number on that foreign application, the intellectual property
 authority or country in or for which the application was filed, and the
 date of filing the application, at such time during the pendency of the
 application as required by the Director.
 

 (2) The Director may consider the failure of
 the applicant to file a timely claim for priority as a waiver of any such
 claim. The Director may establish procedures, including the requirement
 for payment of the fee specified in section 41(a)(7) , to accept an unintentionally delayed
 claim under this section.
 

 (3) The Director may require a certified copy
 of the original foreign application, specification, and drawings upon
 which it is based, a translation if not in the English language, and such
 other information as the Director considers necessary. Any such
 certification shall be made by the foreign intellectual property
 authority in which the foreign application was filed and show the date of
 the application and of the filing of the specification and other
 papers.
 

 
 

 
 *****

 

 
 37 CFR 1.55 Claim for foreign priority. 

 *****

 
 (e) Delayed priority claim. Unless such claim is accepted in
 accordance with the provisions of this paragraph, any claim for priority under
 35 U.S.C.
 119(a) through (d) or (f) ,
 365(a) or (b) , or 386(a) or 386(b) not presented in the
 manner required by paragraph (d) or (m) of this section during pendency and
 within the time period provided by paragraph (d) of this section (if
 applicable) is considered to have been waived. If a claim for priority is
 considered to have been waived under this section, the claim may be accepted if
 the priority claim was unintentionally delayed. A petition to accept a delayed
 claim for priority under 35 U.S.C. 119(a) through
 (d) or (f) , 365(a) or
 (b) , or 386(a) or 386(b) must be accompanied by:
 
 (1) The priority claim under
 35
 U.S.C. 119(a) through (d) 
 or (f) , 365(a) or
 (b) , or 386(a) or 386(b) in an application data sheet (§
 1.76(b)(6) ), identifying the foreign application
 to which priority is claimed, by specifying the application number,
 country (or intellectual property authority), day, month, and year of its
 filing, unless previously submitted;
 

 (2) A certified copy of the foreign
 application, unless previously submitted or an exception in paragraph
 (h) ,
 (i) , or
 (j) of this section
 applies;
 

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

 (4) A statement that the entire delay
 between the date the priority claim was due under this section and the
 date the priority claim was filed was unintentional. The Director may
 require additional information where there is a question whether the
 delay was unintentional.
 

 
 

 (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) .
 

 
 

 (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 .
 

 
 

 
 *****

 

 The failure to perfect a claim to foreign priority prior
 to issuance of the patent may be cured via a certificate of correction under
 35 U.S.C.
 255 and 37 CFR 1.323 , provided the
 requirements of 37
 CFR 1.55 are met, or by filing a reissue application.
 

 Except in certain situations, a certificate of correction
 can generally be used to perfect a claim to foreign priority where a petition under
 37 CFR
 1.55(e) to accept an unintentionally delayed priority claim is
 filed with a request for a certificate of correction in an issued patent. See
 MPEP §
 214.02 for a discussion of the requirements for the petition.
 In situations where further examination would be required, the petition should not be
 granted. For example, further examination would be required where grant of the petition
 would cause the patent to be subject to a different statutory framework, e.g., where the
 foreign application has a pre-March 16, 2013 filing date in a patent that was examined
 under the first inventor to file (FITF) provisions of the AIA. In such situations, the
 filing of a reissue application with a petition for an unintentionally delayed priority
 claim would be required.
 

 I. PERFECTING PRIORITY CLAIM VIA CERTIFICATE OF CORRECTION Effective May 13, 2015, 37 CFR
 1.55(g) provides that the claim for priority and the certified
 copy of the foreign application must be filed within the pendency of the application,
 unless filed with a petition under 37 CFR 1.55(e) , (f) ,
 or (g) as appropriate. 37 CFR
 1.55(g) eliminates the need in many instances to file a reissue
 application in order to perfect a claim for foreign priority. Specifically, 
 

 
 (A) Where the priority claim required under
 37 CFR
 1.55 was timely filed in the application but was not
 included on the patent because the requirement under 37 CFR
 1.55 for a certified copy was not satisfied, the patent
 may be corrected to include the priority claim via a certificate of correction
 under 35
 U.S.C. 255 and 37 CFR 1.323 , accompanied
 by a grantable petition under 37 CFR 1.55(f) or, in the
 case of a design application, a grantable petition under 37 CFR
 1.55(g) . In this situation, a petition under
 37 CFR 1.55(e) to accept an unintentionally delayed
 priority claim is not needed. A grantable petition under 37 CFR
 1.55(f) or (g) must include the fee
 set forth in 37 CFR 1.17(g) and a
 showing of good and sufficient cause for the delay in filing the certified copy
 of the foreign application; and
 

 (B) Where a priority claim under 37 CFR
 1.55 was not timely made, 37 CFR
 1.55(g) allows the priority claim and the certified copy
 required under 37 CFR 1.55 to be filed
 pursuant to a petition under 37 CFR 1.55(e) even if the
 application is not pending (e.g., a patented application) in situations where
 the correction sought would not require further examination. 
 

 
 37 CFR
 1.55(h) provides that the requirement for a certified copy of
 the foreign application will 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 the prior-filed nonprovisional application is identified as containing a
 certified copy of the foreign application. Thus, applicant may request a certificate
 of correction under 35 U.S.C. 255 and 37 CFR 1.323 where the
 prior-filed nonprovisional application is identified as containing a certified copy
 of the foreign application and where the priority claim was timely made in the
 application claiming benefit under 35 U.S.C. 120 , 121 ,
 365(c) , or 386(c) and the certified copy of
 the foreign application was timely filed in the parent application.
 

 As an example of when a request to issue a certificate
 of correction may be used in order to perfect a claim to foreign priority benefits,
 see In re Van Esdonk, 187 USPQ 671 (Comm’r Pat. 1975). In
 In re Van Esdonk, a claim to foreign priority benefits had not
 been filed in the application prior to issuance of the patent. However, the
 application was a continuation of an earlier application in which the requirements of
 35 U.S.C.
 119(a) - (d) or (f) had been
 satisfied. Accordingly, the Commissioner held that the “applicants’ perfection of a
 priority claim under 35 U.S.C. 119 in the parent
 application will satisfy the statute with respect to their continuation application.” 
 

 Although In re Van Esdonk involved
 the patent of a continuation application filed under former 37 CFR 1.60 , it
 is proper to apply the holding of that case in similar factual circumstances to any
 patented application having benefits under 35 U.S.C. 120 . This is primarily
 because a claim to foreign priority benefits in a continuing application, where the
 claim has been perfected in the parent application, constitutes in essence a mere
 affirmation of the applicant’s previously expressed desire to receive benefits under
 35 U.S.C.
 119(a) - (d) or (f) for subject
 matter common to the foreign, parent, and continuing applications.
 

 In summary, a certificate of correction under
 35 U.S.C.
 255 and 37 CFR 1.323 may be requested and
 issued in order to perfect a claim for foreign priority benefit in a patent if (1)
 the requirements of 35 U.S.C. 119(a) - (d) or (f) had been
 satisfied in the patented application or in a parent application prior to issuance of
 the patent, (2) the requirements of 37 CFR 1.55 are met, and (3) the
 correction sought would not require further examination. 
 

 II. PERFECTING PRIORITY CLAIM VIA REISSUE As an alternative to requesting a certificate of
 correction, a claim to foreign priority benefits can be perfected by way of a reissue
 application in accordance with the rationale set forth in Brenner v. State
 of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968). In circumstances
 where a claim to foreign priority benefits cannot be perfected via a certificate of
 correction because the requirements of 35 U.S.C.
 119(a) - (d) or (f) had not
 been satisfied in the patented application, or its parent, prior to issuance, and the
 requirements of 37 CFR 1.55 are not met, or where the correction sought would
 require further examination (e.g., where the foreign application has a pre-March 16,
 2013 filing date in a patent that was examined under the first inventor to file
 (FITF) provisions of the AIA) the claim to foreign priority benefits can be perfected
 only by way of a reissue application. Note that 37 CFR
 1.55(h) provides that the requirement 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 for a certified copy of
 the foreign application and such patent is identified as containing a certified copy
 of the foreign application.
 

 

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 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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 03/09/2026 20:50:41