Filing a US Patent Application Claiming Foreign Priority Under the Paris Convention

Under Section 119 of the US patent law, a US utility patent application can be filed claiming the benefit of an earlier filing date of a foreign priority patent application for the same invention. A “conventional” priority may be claimed under the Paris Convention between member states. This priority claim differs from a US national stage application based on a PCT application filed in the US or a foreign receiving office. One significant difference between these priority types is that a US patent application claiming conventional priority must be filed within 12 months of the priority date of the foreign application. The priority date is the earliest filing date of the foreign patent application. This time limit is shorter than the approximate 30-month limit from the PCT priority date to file a national phase application.

The same 12-month period applies to foreign filings that claim priority to an earlier filed US utility patent application.

A Checklist for US Utility Patent Application Filings Based on Foreign Priority Claim

A checklist of documents and information needed for an initial US patent application includes:

• details of priority application, including country, filing date, priority date, application number, and title;

• details of the applicant(s), including whether they qualify as a small or micro entity;

• name and address of each inventor;

• English translation of the specification and claims of the foreign priority application;

• copy of drawings in the foreign priority application;

• amended claims to be filed with US patent application;

  • Unlike a national phase application, a preliminary amendment is unnecessary to file claims that differ from those in the foreign priority application.

• DAS code (digital access code) to avoid the need for obtaining a certified copy of foreign priority application;

• any known prior art references material to patentability to be included in an Information Disclosure Statement; and

• whether there has been a prior favorable ruling on the claims to serve as the basis for a PPH (Patent Prosecution Highway) request.

  
  

Translation of Foreign Priority Application

A US utility patent application claiming conventional priority does not require an exact English translation of the foreign priority application. Instead, what is essential is that there be sufficient support in the foreign priority application for the claims in the US patent application. If there is sufficient support, the claims in the US patent application will be entitled to the benefit of the earlier foreign filing date.

This contrasts with a US national phase application, which requires a precise and accurate translation of its corresponding PCT application.

Therefore, a US application claiming conventional priority may contain new matter in addition to the matter disclosed in the foreign priority application. The new matter, which lacks support in the foreign patent application, is assigned the later filing date of the US patent application instead of the earlier filing date of the foreign priority application.

The MPEP states that “[a] certified translation of every foreign benefit application or Patent Cooperation Treaty (PCT) application not filed in English is required” and “[t]he applicant should provide the required translation if the applicant wants the application to be accorded benefit of the non-English language application.” See MPEP 2304.01.

Preliminary Amendment

The claims of a US patent application with conventional priority do not have to be the same as those in its foreign priority document. Instead, they only need to be supported by the disclosure of the foreign priority application. Therefore, the claims in an original US patent application can be changed from those of its foreign priority application without needing a preliminary amendment showing the marked-up claims.

This differs from US national phase applications, where the claims must be identical to those of their corresponding PCT application. As a result, a preliminary amendment is necessary to change the claims of a national phase application at the time of filing. This preliminary amendment will include marked-up claims reflecting amendments to the claims in the foreign priority application.

Of course, a preliminary amendment will also be needed to change the claims of the US application after it has been filed and before the first office action.

Information Disclosure Statement (IDS)

An IDS must be filed to disclose any known prior art references that are material to the patentability of the invention claimed in the US patent application. This includes references cited by the foreign patent office during the examination of the foreign priority application.

The USPTO requires that copies and English translations of foreign references cited in an IDS be submitted along with the IDS.

The duty to disclose known prior art material to patentability is ongoing and may require filing multiple subsequent IDSs.

How TCP Law Can Help

A TCP Law patent attorney can help you collect, organize, and prepare the materials needed for your US patent application and then file that application with the USPTO.

If you need assistance with preparing and filing a US patent application or with any other patent issue, please contact TCP Law at info@tcplawfirm.com or 917-612-1059.