A continuation application is an application for the invention(s) disclosed in a prior- filed copending nonprovisional application, international application designating the United States, or international design application designating the United States. The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.
The continuation application may be filed under 37 CFR 1.53(b) (or 1.53(d) if the application is a design application, but not an international design application). The inventorship in the continuation application must include at least one inventor named in the prior-filed application, and the continuation application must also claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c). See 37 CFR 1.78, especially paragraphs (d) and (e), and MPEP § 211 et seq. for additional requirements and more information regarding entitlement to the benefit of the filing date of a prior-filed copending application.
An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a "divisional" of the provisional application. See 37 CFR 1.78, especially paragraphs (a)-(c), and MPEP § 211 et seq. for requirements and information pertaining to entitlement to the benefit of the filing date of a provisional application.
At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office. A continued prosecution application (CPA) under 37 CFR 1.53(d) (available only for design applications, but not international design applications), however, must be filed prior to payment of the issue fee unless a petition under 37 CFR 1.313(c) is granted in the prior application. In addition, a continuation or divisional application may only be filed under 37 CFR 1.53(d) if the prior application is a nonprovisional design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b) (except for the inventor’s oath or declaration if the CPA is filed on or after September 16, 2012), and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor. Use form paragraph 2.05 to remind applicant of possible continuation status.
This application discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or divisional. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq .
1. In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.
2. This form paragraph should only be used if it appears that the application may be a continuation, but a benefit claim has not been properly established.
3. An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a "continuation" of the provisional application.
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· (d) Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.
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· (2) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under § 1.1023. If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5) ). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.
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A continuation-in-part is an application filed during the lifetime of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application. A continuation-in-part application may only be filed under 37 CFR 1.53(b). The continuation-in-part application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c). For more information on claiming the benefit of a prior-filed application, see MPEP § 211 et seq. A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).
An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a "continuation-in-part" of the provisional application because such an application claims the benefit of the provisional application and is not a continuation, division, or continuation-in-part of the provisional application.
The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.
A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78. Subject to the same conditions, a continuation-in-part application that has joint inventors may derive from an earlier application that has a sole inventor.
The Office does not need to make a determination as to whether the requirement of 35 U.S.C. 120 that the earlier nonprovisional application discloses the invention of the second application in the manner provided by 35 U.S.C. 112(a) is met unless the filing date of the earlier nonprovisional application is relied upon in a proceeding before the Office. Accordingly, an alleged continuation-in-part application should be permitted to claim the benefit of the filing date of an earlier nonprovisional application if the alleged continuation-in-part application complies with the other requirements of 35 U.S.C. 120 and 37 CFR 1.78, such as:
· (A) The first application and the alleged continuation-in-part application were filed with the same inventor or at least one common joint inventor;
· (B) The alleged continuation-in-part application was "filed before the patenting or abandonment of or termination of proceedings on the first application or an application similarly entitled to the benefit of the filing date of the first application"; and
· (C) The alleged continuation-in-part application "contains or is amended to contain a specific reference to the earlier filed application." (For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet. For applications filed prior to September 16, 2012, the specific reference must be submitted either in the first sentence(s) of the specification or in an application data sheet (see 37 CFR 1.76(b)(5) ).)
See MPEP § 211 et seq. for more information on claiming the benefit of a prior nonprovisional application.
For notation to be put in the file history by the examiner in the case of a continuation-in-part application see MPEP § 202. See MPEP § 708 for order of examination.
Use form paragraph 2.06 to remind applicant of possible continuation-in-part status.
This application repeats a substantial portion of prior Application No. [1], filed [2], and adds disclosure not presented in the prior application. Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq.
1. In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.
2. This form paragraph should only be used if it appears that the application may qualify as a continuation-in-part, but no benefit claim has been properly established.
3. An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a "continuation-in-part" of the provisional application.
The front page of a printed patent identifies all prior applications for which benefits are claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in continuation-in-part, continuation, divisional, and reissue applications. Therefore, the identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012. See 37 CFR 1.78(a)(3) and (d)(2) and MPEP § 211 et seq. For example, the reference to a prior nonprovisional application must include the appropriate relationship (e.g., continuation, divisional, or continuation-in-part) between the nonprovisional applications.
The front page of a printed patent issuing on a continued prosecution application (CPA) filed under 37 CFR 1.53(d) will identify the application number and filing date of the most recent noncontinued prosecution application (but not the filing date of the CPA) as well as all prior applications from which benefit was claimed in the most recent noncontinued prosecution application.
Where prior application data, including provisional application data, is included on the bib-data sheet, the examiner should check that data for accuracy, including whether the application is, in fact, copending with the prior nonprovisional application or applications for which benefit is claimed. Similarly, the application number of any provisional application for which benefit is claimed should be printed on the bib-data sheet. If applicant claims benefit under 35 U.S.C. 119(e) to a prior provisional application, and states that the provisional application claims the benefit of, or priority to, earlier domestic or foreign application(s), the earlier application(s) should not be reflected on the bib-data sheet because a provisional application is not entitled to the benefit of, or right of priority to, any other application. See 35 U.S.C. 111(b)(7).
Where the data is correct, the examiner should initial the bib-data sheet in the provided space. Should there be an error in the preprinted prior application data, the correction or entry of the data in the Patent Data Portal data base can be made by technical support staff of the Technology Center, if appropriate. Upon entry of the data, a new bib-data sheet should be printed and scanned into the file. If the error was an applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate. See MPEP § 601.05 et seq. and MPEP § 211.02(a). A petition for an unintentionally delayed benefit claim may also be required. See MPEP § 211.04.
The inclusion of prior application information in the patent does not necessarily indicate that the claims are entitled to the benefit of the earlier filing date. See MPEP § 2136.03 and MPEP § 2154.01(b) for additional information. See MPEP § 306 for information pertaining to the assignment of applications claiming a benefit under 35 U.S.C. 119(e) or 120 to the filing date of an earlier filed application. In the situation in which there has been no reference to a prior application because the benefit of its filing date is not desired, no notation as to the prior application is made on the bib-data sheet.
If a foreign application listed on the oath or declaration (for applications filed prior to September 16, 2012) or application data sheet is not listed on the bib-data sheet and the foreign priority claim is proper (e.g., the foreign priority claim was timely made ), the examiner should provide the information regarding the foreign application number, the country, and the filing date on the bib-data sheet and forward the marked-up bib-data sheet to the Legal Instrument Examiner for correction in the Office computer systems. Applications listed on the bib-data sheet but filed in countries not qualifying for benefits under 35 U.S.C. 119(a) -(d) should be lined through. A listing of countries qualifying for benefits under 35 U.S.C. 119(a) -(d) appears at MPEP § 213.01.
Where foreign applications are listed on the pre AIA 37 CFR 1.63 oath or declaration (for applications filed prior to September 16, 2012) or application data sheet, the examiner should check that such foreign applications are properly listed on the bib-data sheet. A bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application that the U.S. application is claiming the priority of. The examiner should check this information for accuracy. Should there be an error on the oath or declaration, or application data sheet itself, the examiner should require a new oath or declaration, or application data sheet, where appropriate. A petition for an unintentionally delayed claim for priority may also be required. See MPEP § 214.02. If the oath or declaration or the application data sheet is accurate, but there is an error on the bib-data sheet, the examiner should make the appropriate corrections directly on the bib-data sheet, and have the information corrected in the Office computer systems by forwarding the information to the examiner’s Legal Instrument Examiner, with an explanation of the correction to be made. The examiner should initial the bib-data sheet in the "VERIFIED" space provided when the information is correct or has been amended to be correct. However, the examiner must still indicate in the Office action and on the bib-data sheet whether the conditions of 35 U.S.C. 119(a) -(d) or (f) have been met.
If the filing dates of several foreign applications are claimed and the certified copy of each foreign application has been received, information regarding each of the foreign applications is to be entered on the bib-data sheet.
The front page of the patent when it is issued, and the listing in the Official Gazette, will refer to the claim of priority, giving the country, the filing date, and the number of the foreign application in those applications in which the bib-data sheet has been endorsed.
A "new" application is a nonprovisional application that has not yet received an action by the examiner. An amendment filed prior to the first Office Action does not alter the status of a "new" application. Note that a request for continued examination (RCE)(see 37 CFR 1.114 ) is not a type of new application filing. See MPEP § 706.07(h).
A nonprovisional application which, during its prosecution in the examining group and before allowance, contains an unanswered examiner’s action is designated as a "rejected" application. Its status as a "rejected" application continues as such until acted upon by the applicant in reply to the examiner’s action (within the allotted reply period), or until it becomes abandoned.
An "amended" nonprovisional application is one that having been acted on by the examiner, has in turn been acted on by the applicant in reply to the examiner’s action. The applicant’s reply may be confined to an election, a traverse of the action taken by the examiner or may include an amendment of the application.
An "allowed" nonprovisional application or an application "in issue" is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant. Its status as an "allowed" application continues from the date of the notice of allowance until it issues as a patent, unless it is withdrawn from issue (37 CFR 1.313 ), or becomes abandoned for failure to pay the issue fee and any required publication fee (37 CFR 1.314 and 1.316 ).
An abandoned application is, inter alia, one which is removed from the Office docket of pending applications:
· (A) through formal abandonment by the applicant or by the attorney or agent of record;
· (B) through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional application;
· (C) for failure to pay the issue fee (MPEP § 711 to § 711.05); or
· (D) in the case of a provisional application, no later than 12 months after the filing date of the provisional application (see MPEP § 711.03(c) and 35 U.S.C. 111(b)(5) ).
An application that is not entitled to a filing date (e.g., for lacking some of the essential parts) is termed an incomplete application. (MPEP § 506 and § 601.01(d)-(g)).
Status information relating to patent applications is available through Patent Center and the Patent Application Information Retrieval (PAIR) system. In Patent Center, information is available relating to issued patents, published patent applications, and applications to which a patented or published application claims domestic benefit. In private PAIR, an applicant (or applicant's registered patent attorney or registered patent agent) can securely track the progress of applicant's application(s) through the USPTO. Private PAIR makes available information relating to unpublished patent applications, but the applicant must associate a Customer Number with the application to obtain access. See MPEP § 403 for Customer Number practice.
Applicants and other persons seeking status information regarding an application should check Patent Center on the Office website at www.uspto.gov/patents/apply/patent-center. Alternatively, the requester may contact the Application Assistance Unit (AAU) (see MPEP § 1730, subsection VI.C.). The AAU will check the relevant Office records and will inform the requester whether the application has been published or has issued as a patent. If the application has been published, the AAU will inform the requester of the publication number and publication date, and if the application has issued as a patent, the AAU will inform the requester of the patent number, issue date and classification. If the application has not been published, but is pending or abandoned then the AAU determines whether the requester is entitled to such information. See MPEP § 102 for additional information.
Inquiries as to the status of applications, by persons entitled to the information, should be directed to Private PAIR.
If the correspondent is not entitled to the information, in view of 37 CFR 1.14, the correspondent should be so informed.
For Congressional and other official inquiries, see MPEP § 203.08(a).
A Notice of Allowability, Form PTOL-37, is routinely mailed in every application determined to be allowable. Thus, the mailing of a form PTOL-37 in addition to a formal Notice of Allowance and Fee(s) Due (PTOL-85) in all allowed applications would seem to obviate the need for status inquiries even as a precautionary measure where the applicant may believe the new application may have been passed to issue on the first examination. However, as an exception, a status inquiry would be appropriate where a Notice of Allowance (PTOL-85) is not received within three months from receipt of form PTOL-37.
Current examining procedures aim to minimize the spread in dates among the various examiner dockets of each art unit and TC with respect to actions on new applications. Accordingly, the dates of the "oldest new applications" appearing in the Official Gazette are fairly reliable guides as to the expected time frames of when the examiners reach the applications or action.
Amended applications are expected to be taken up by the examiner and an action completed within two months of the date the examiner receives the application. Accordingly, a status inquiry is not in order after reply by the attorney until 5 or 6 months have elapsed with no response from the Office. However, in the event that a six month period has elapsed, and no response from the Office is received, applicant should inquire as to the status of the application to avoid potential abandonment.
Applicants are encouraged to use Patent Center or Private PAIR to make status inquiries. See subsection I, above. A stamped postcard receipt or Electronic Acknowledgement Receipt for replies to Office actions, adequately and specifically identifying the papers filed, will be considered prima facie proof of receipt of such papers. See MPEP § 503. Where such proof indicates the timely filing of a reply, the submission of a copy of the postcard or Electronic Acknowledgement Receipt with a copy of the reply will ordinarily obviate the need for a petition to revive. Proof of receipt of a timely reply to a final action will obviate the need for a petition to revive only if the reply was in compliance with 37 CFR 1.113.
Correspondence and inquiries from the White House, Members of Congress, embassies, and heads of Executive departments and agencies normally are cleared by the USPTO’s Office of Policy and International Affairs and/or the Office of Governmental Affairs.
Inquiries referred to in this section such as correspondence from embassies, the Office of the U.S. Trade Representative, and the Department of State should immediately be transmitted to the Administrator of the Office of Policy and International Affairs, and a staff member of that office should be notified by phone that such correspondence has been received at 571-272-9300. Inquiries referred to in this section such as correspondence from Congress or the White House should immediately be transmitted to the Director of the Office of Governmental Affairs, and a staff member of that office should be notified by phone that such correspondence has been received at 571-272-7300.
This procedure is used so that there will be uniformity in the handling of contacts from the indicated sources, and also so that compliance with directives of the Department of Commerce is attained.
Under certain conditions and on fulfilling certain requirements, a later-filed application for patent filed in the United States may claim the benefit of, or priority to, a prior application filed in the United States (see 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78 ) or in a foreign country (see 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55 ).
As a result of recent changes to the applicable laws and rules, the procedural requirements and time frames for claiming priority to, or the benefit of, an earlier-filed application may vary based on the filing date of the later-filed nonprovisional application.
Note that effective December 18, 2013, the Patent Law Treaties Implementation Act of 2012 (PLTIA) amended the patent laws to implement the provisions of the Patent Law Treaty (PLT) in title II; corresponding revisions to title 37 of the Code of Federal Regulations also became effective on December 18, 2013. Notable changes to the law and rules included the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application. In addition, title I of the PLTIA became effective May 13, 2015, along with corresponding revisions to the rules. Notable changes included the ability to file international design applications and to claim priority to, and the benefit of, international design applications in nonprovisional applications.
The following is an overview of the substantive changes to 37 CFR 1.78 resulting from implementation of Public Law 112-29, 125 Stat. 284 (Leahy Smith America Invents Act (AIA)) and implementation of Public Law 112-211, 126 Stat. 1527 (titles I and II of the Patent Law Treaties Implementation Act (PLTIA)). See MPEP § 211 et seq. for the detailed requirements for claiming (and entitlement to), the benefit of an earlier-filed application under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c).
Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application. 35 U.S.C. 119(e), 120.
The inventor’s oath or declaration provisions of Public Law 112-29, sec. 4, 125 Stat. 284 (the Leahy-Smith America Invents Act) and the rules related thereto became effective September 16, 2012. In implementing these provisions the Office revised 37 CFR 1.78 to require that a benefit claim under 35 U.S.C. 119(e), 120, 121, or 365(c) must be in the application data sheet (37 CFR 1.76 ). Thus for all applications filed on or after September 16, 2012, the specific reference to the prior application must be in the application data sheet; for applications filed prior to September 16, 2012, the specific reference to the prior application must be in an application data sheet or in the first sentence(s) of the specification.
In implementing the Patent Law Treaties Implementation Act (PLTIA), the Office reorganized and revised 37 CFR 1.78 effective May 13, 2015. All versions of 37 CFR 1.78 in effect prior to May 13, 2015, have been consolidated in the current version of 37 CFR 1.78. The following is a summary of the provisions of 37 CFR 1.78.
· (A) 37 CFR 1.78(a) contains provisions relating to claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application;
· (B) 37 CFR 1.78(b) contains provisions relating to restoration of the right to claim the benefit of a provisional application under 35 U.S.C. 119(e) when the delay in filing the subsequent application was unintentional.
· (C) 37 CFR 1.78(c) contains provisions relating to delayed claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application;
· (D) 37 CFR 1.78(d) contains provisions relating to claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application;
· (E) 37 CFR 1.78(e) contains provisions relating to delayed claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application;
· (F) 37 CFR 1.78(f) contains provisions relating to applications containing patentably indistinct claims;
· (G) 37 CFR 1.78(g) contains provisions relating to applications or patents under reexamination naming different inventors and containing patentably indistinct claims;
· (H) 37 CFR 1.78(h) provides for situations where the specific reference to a prior filed application may be presented in the first sentence(s) of the specification in applications filed before September 16, 2012;
· (I) 37 CFR 1.78(i) provides for situations where a petition under 37 CFR 1.78(b), (c), or (e) required in an international application can be filed in the earliest nonprovisional application that claims benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the international application;
· (J) 37 CFR 1.78(j) provides that benefit under 35 U.S.C. 386(c) with respect to an international design application can only be claimed in nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon; and
· (K) 37 CFR 1.78(k) provides that the time periods set forth in 37 CFR 1.78 are not extendable, but are subject to 35 U.S.C. 21(b) (and 37 CFR 1.7(a) ), PCT Rule 80.5, and Hague Agreement Rule 4(4).
37 CFR 1.78(a)(6) and (d)(6) set forth provisions that are only applicable to nonprovisional applications filed on or after March 16, 2013 that claim the benefit of the filing date of a provisional or nonprovisional application filed prior to March 16, 2013. Specifically, the paragraphs require that if the later filed application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect within the time periods set forth in the rule. An applicant is not required to provide such a statement if the applicant reasonably believes on the basis of information already known to the individuals designated in 37 CFR 1.56(c) that the later filed nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013. An applicant is also not required to provide such a statement if the application claims the benefit of an earlier application in which a statement that the earlier application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013 has been filed. See MPEP § 211.01 for additional information.
The following is an overview of the substantive changes to 37 CFR 1.55 resulting from implementation of Public Law 112-29, 125 Stat. 284 (Leahy Smith America Invents Act (AIA)) and implementation of Public Law 112-211, 126 Stat. 1527 (titles I and title II of the Patent Law Treaties Implementation Act (PLTIA)). See MPEP § 213 et seq. for the detailed requirements for claiming (and entitlement to), priority to of an earlier filed foreign application under 35 U.S.C. 119(a) -(d) or (f), 35 U.S.C. 365(a) or (b), or 386(a) or (b).
Whether an application was filed before, on, or after March 16, 2013, 35 U.S.C. 119(b)(1) requires a claim for priority identifying the foreign application. Prior to September 16, 2012, 37 CFR 1.55 and 1.63 required the claim for priority to be identified on an application data sheet or in the oath or declaration.
The inventor’s oath or declaration provisions of Public Law 112-29, sec. 4, 125 Stat. 284 (the Leahy-Smith America Invents Act) and the rules related thereto became effective September 16, 2012. In implementing these provisions the Office revised 37 CFR 1.55 to require that a claim for foreign priority must be presented in the application data sheet (37 CFR 1.76 ). Thus for all applications filed on or after September 16, 2012, a claim for priority under 35 U.S.C. 119(a) -(d) or (f), 365(a) or (b), or 386(a) or (b) to the prior application must be presented in the application data sheet; for applications filed prior to September 16, 2012, the claim for priority to the foreign application must be identified in an application data sheet or in the oath or declaration.
In implementing the Patent Law Treaties Implementation Act (PLTIA), the Office reorganized and revised 37 CFR 1.55 effective May 13, 2015. All versions of 37 CFR 1.55 in effect prior to May 13, 2015, have been consolidated in the current version of 37 CFR 1.55. The following is a summary of the provisions of 37 CFR 1.55.
· (A) 37 CFR 1.55(a) provides generally that a nonprovisional application may claim priority to one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) and (b), and 386(a) and (b);
· (B) 37 CFR 1.55(b) contains provisions relating to the time for filing a nonprovisional application claiming priority to a foreign application under 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) and (b), and 386(a) and (b);
· (C) 37 CFR 1.55(c) contains provisions relating to the restoration of the right of priority under35 U.S.C. 119(a) through (d) and (f), 172, 365(a) and (b), and 386(a) and (b);
· (D) 37 CFR 1.55(d) contains provisions relating to the time for filing a priority claim in an application filed under 35 U.S.C. 111(a) and in an application entering the national stage under 35 U.S.C. 371;
· (E) 37 CFR 1.55(e) contains provisions relating to delayed claims for priority under 35 U.S.C. 119(a) through (d) and (f), 365(a) or (b), and 386(a) or (b);
· (F) 37 CFR 1.55(f) contains provisions relating to the time for filing the certified copy of a foreign application in an application filed under 35 U.S.C. 111(a) and in an application entering the national stage under 35 U.S.C. 371;
· (G) 37 CFR 1.55(g) contains provisions relating to the filing of a priority claim, certified copy of the foreign application, and translation of a non-English language foreign application in any application;
· (H) 37 CFR 1.55(h) contains provisions relating to when the requirement for a certified copy will be considered satisfied based on a certified copy filed in another U.S. patent or application;
· (I) 37 CFR 1.55(i) contains provisions relating to the priority document exchange agreement;
· (J) 37 CFR 1.55(j) contains provisions relating to the filing of an interim copy of a foreign application;
· (K) 37 CFR 1.55(k) contains provisions relating to requirements for certain applications filed on or after March 16, 2013;
· (L) 37 CFR 1.55(l) contains provisions relating to inventor's certificates; and
· (M) 37 CFR 1.55(m) contains provisions relating to the time for the filing of a priority claim and certified copy of the foreign application in an international design application designating the Unite
