[Code of Federal Regulations]
[Title 37, Volume 1]
[Revised as of July 1, 2003]
From the U.S. Government Printing Office via GPO Access
[CITE: 37CFR1.55]

[Page 55-56]
 
              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
 
  CHAPTER I--UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF 
                                COMMERCE
 
PART 1--RULES OF PRACTICE IN PATENT CASES--Table of Contents
 
                Subpart B--National Processing Provisions
 
Sec. 1.55  Claim for foreign priority.

    (a) An applicant in a nonprovisional application may claim the 
benefit of the filing date of one or more prior foreign applications 
under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 
172, and 365(a) and (b).
    (1)(i) In an original application filed under 35 U.S.C. 111(a), the 
claim for priority must be presented during the pendency of the 
application, and 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. This time period is not extendable. The claim 
must identify the foreign application for which priority is claimed, as 
well as any foreign application for the same subject matter and having a 
filing date before that of the application for which priority is 
claimed, by specifying the application number, country (or intellectual 
property authority), day, month, and year of its filing. The time 
periods in this paragraph do not apply in an application under 35 U.S.C. 
111(a) if the application is:
    (A) A design application; or
    (B) An application filed before November 29, 2000.
    (ii) In an application that entered the national stage from an 
international application after compliance with 35 U.S.C. 371, the claim 
for priority must be made during the pendency of the application and 
within the time limit set forth in the PCT and the Regulations under the 
PCT.
    (2) 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 before the patent is granted. If the claim for priority 
or the certified copy of the foreign application is filed after the date 
the issue fee is paid, it must be accompanied by the processing fee set 
forth in Sec. 1.17(i), but the patent will not include the priority 
claim unless corrected by a certificate of correction under 35 U.S.C. 
255 and Sec. 1.323.
    (3) When the application becomes involved in an interference (Sec. 
1.630), when necessary to overcome the date of a reference relied upon 
by the examiner, or when deemed necessary by the examiner, the Office 
may require that the claim for priority and the certified copy of the 
foreign application be filed earlier than provided in paragraphs (a)(1) 
or (a)(2) of this section.
    (4) An English language translation of a non-English language 
foreign application is not required except when the application is 
involved in an interference (Sec. 1.630), when necessary to overcome the 
date of a reference relied upon by the examiner, or when specifically 
required by the examiner. If an English language translation is 
required, it must be filed together with a statement that the 
translation of the certified copy is accurate.
    (b) An applicant in a nonprovisional application may under certain 
circumstances claim priority on the basis of one or more applications 
for an inventor's certificate in a country granting both inventor's 
certificates and patents. To claim the right of priority on the basis of 
an application for an inventor's certificate in such a country under 35 
U.S.C. 119(d), the applicant when submitting a claim for such right as 
specified in paragraph (a) of this section, shall include an affidavit 
or declaration. The affidavit or declaration must include a specific 
statement that,

[[Page 56]]

upon an investigation, he or she is satisfied that to the best of his or 
her knowledge, the applicant, when filing the application for the 
inventor's certificate, had the option to file an application for either 
a patent or an inventor's certificate as to the subject matter of the 
identified claim or claims forming the basis for the claim of priority.
    (c) Unless such claim is accepted in accordance with the provisions 
of this paragraph, any claim for priority under 35 U.S.C. 119(a)-(d) or 
365(a) not presented within the time period provided by paragraph (a) of 
this section is considered to have been waived. If a claim for priority 
under 35 U.S.C. 119(a)-(d) or 365(a) is presented after the time period 
provided by paragraph (a) of this section, the claim may be accepted if 
the claim identifying the prior foreign application by specifying its 
application number, country (or intellectual property authority), and 
the day, month, and year of its filing was unintentionally delayed. A 
petition to accept a delayed claim for priority under 35 U.S.C. 119(a)-
(d) or 365(a) must be accompanied by:
    (1) The claim under 35 U.S.C. 119(a)-(d) or 365(a) and this section 
to the prior foreign application, unless previously submitted;
    (2) The surcharge set forth in Sec. 1.17(t); and
    (3) A statement that the entire delay between the date the claim was 
due under paragraph (a)(1) of this section and the date the claim was 
filed was unintentional. The Director may require additional information 
where there is a question whether the delay was unintentional.

[60 FR 20224, Apr. 25, 1995, as amended at 62 FR 53188, Oct. 10, 1997; 
65 FR 57053, Sept. 20, 2000; 65 FR 66502, Nov. 6, 2000; 66 FR 67094, 
Dec. 28, 2001]