Why do priority claims matter for patents?

Patenting is about winning the race to the Patent Office by applying for a protectable invention before others do. In order to be first to the Patent Office, you need an earlier filing date that precedes the filing dates of others attempting to patent similar inventions. A priority claim is a helpful, and often critical, way to link a later-filed patent application to an earlier-filed patent application. Known as a priority application, the earlier-filed application must generally have common subject matter and common inventorship in order for a priority claim to be made. The common subject matter in the later-filed application will be backdated to the earlier filing date (priority date) of the earlier-filed application.

The earlier-filed application may be a US priority application or foreign priority application, or a PCT application. Strict deadlines apply as discussed further below, so you do not have the flexibility to postpone filing decisions indefinitely.

Priority deadlines: starting from provisional

Many entrepreneurs and startups find provisional patent applications appealing for the generally lower cost and immediate patent-pending status. If you start with a provisional patent application, then you must keep in mind the following deadlines:

  1. 12-month deadline to file US nonprovisional application;
  2. 12-month deadline to file nonprovisional applications in non-PCT foreign countries; and
  3. 12-month deadline to file either: a) PCT application, or b) nonprovisional applications directly in foreign countries with conventional priority claim (Paris Convention).

Priority deadlines: starting from nonprovisional

If your first patent filing for a particular invention was a US nonprovisional application, then the following priority deadlines apply:

  1. 12-month deadline to file nonprovisional applications in non-PCT foreign countries; and
  2. 12-month deadline to file either: a) PCT application, or b) nonprovisional applications directly in foreign countries with conventional priority claim (Paris Convention).

Priority deadlines: starting from PCT application

If your first patent filing for a particular patent application was a PCT application, then you have 30 months from the PCT filing date to nationalize the application in each desired PCT member country. Some PCT member countries have a 31-month national stage deadline. Certain non-PCT countries might allow you to file within 12 months of the PCT filing date.

What if you missed a priority deadline?

In certain situations, you may be able to file a late application and still maintain a priority claim. Additional declarations and government fees may be required.

Priority claims between parent and child applications

There may be several reasons to file a continuing application. Perhaps you wish to add new subject matter or pursue claims different from the allowed claims in the parent application. In order to include a priority claim in a continuing application, the child application must be filed while the parent application is still pending (i.e., before grant or abandonment).

Can a priority claim be added after initial filing?

In certain circumstances, it may be possible to add a priority claim in the later-filed application. Certain time periods will apply, so the priority claim must be timely added. For utility applications, the deadline for adding a priority is generally the later of four months from the filing date of the later-filed application or 16 months from the filing date of the prior-filed application.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
If you are a startup or small business, we want to help. Our mission is to equip entrepreneurs with solid IP rights that facilitate funding, growth and sales. Let's get to work! Direct: 949.223.9623 | Email: vlin@icaplaw.com
Vic Lin

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