Correcting Priority Claims in Patent Applications

Why claim priority to a previous application?

U.S. non-provisional patent applications can claim priority to a previously filed application in order to establish an earlier effective date. Claiming priority and the earlier effective date can preclude an examiner from using publications dated after the initial filing date against your later-filed application, if the material is not new matter in the child application. This can increase the likelihood of overcoming rejections and ultimately obtaining an issued patent.

When can a priority claim be made on initial filing of the child application?

Priority to a provisional application can be claimed for up to twelve months after the filing date of the provisional. Priority can be claimed to a non-provisional application any time during the pendency of the parent non-provisional. Thus, the parent application cannot be issued or abandoned before the child application is filed.

What are some requirements for claiming priority to a parent application?

As of September 16, 2012, a specific reference to the priority application must be included in an application data sheet (ADS) of the child application. Otherwise, the filing receipt will likely reflect the priority date as the filing date of the child rather than the parent. The Examiner can cite prior art having a publication date after the effective date of the parent application.

Prior to September 16, 2012, the specific reference to the priority application could be included either in the ADS or in the first sentences of the specification. However, MPEP 211.02 encourages applicants to provide in the specification an explicit incorporation by reference statement to the prior-filed application(s) for which benefit is claimed, if applicants do not wish the incorporation by reference to be limited to inadvertently omitted material. Therefore, the specific reference to the priority claim should be included in both the ADS and the first sentences of the specification.

Furthermore, both the parent and child application must share at least one inventor in common to properly maintain a priority claim between the applications.

What is a proper specific reference to an parent application?

A proper specific reference must identify the application number and the relationship between the parent and child applications. For example, a common method is to state the the present application is a [identify relationship (e.g. continuation, continuation-in-part, divisional, etc.)] of [application number], which is a [identify relationship] of [application number]. This chain continues until the first application in the priority chain.

Can a priority claim be added or amended into a filed application after-the-fact?

When a benefit claim is submitted after the filing of an application, and the later-filed application as filed did not incorporate the prior-filed application by reference, applicant cannot add an incorporation by reference statement of the prior application. An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)). See Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980). See also 37 CFR 1.57(b).

MPEP 211.02

This means that the specific reference to the priority application cannot be added to the specification after the fact. However, a forgotten priority claim in the ADS can be amended. Typically, the USPTO will require a petition under 37 CFR 1.78 and the petition fee, often several thousand dollars, to correct the claim if the correction is sought after expiration of the time period set in 37 CFR 1.78. Under 37 CFR 1.78(a)(4), the specific reference in the ADS must be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed provisional application. After that deadline, a petition may be filed to restore priority with statement that the entire delay was unintentional with the proper fee.

Conclusion

When filing a patent application claiming priority, include a specific reference to the priority claim in the first sentences of the specification and also in the ADS. The specification cannot be amended to add the reference without introducing new matter. The ADS can be amended to include the specific reference within four months from the child application or sixteen months from the provisional application. Thereafter, a petition for unintentional delay with a fee of several thousand dollars will be required to correct the claim.


If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

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