How To File A US Utility Patent Based On Foreign Priority Claim (Paris Convention, not PCT)

What is a conventional priority claim?

A US utility patent application may be filed claiming the benefit of an earlier filing date of a foreign priority application for the same invention. This conventional priority claim under 35 USC Section 119 may go by different names such as “straight priority” or “Paris Convention” or direct priority. Whatever it may be called, a direct priority application differs from a national stage entry based on a PCT application. In particular, a US utility patent application with a conventional priority must be filed within 12 months of the priority date of the foreign application.

What is the deadline for filing a US utility patent application with a direct priority claim?

By skipping the PCT and its delay benefits, a US utility patent application with a conventional priority claim must be filed within 12 months of the foreign priority date. The priority date is earliest filing date of the foreign application by the applicant for the particular invention.

The same 12-month deadline applies to a first-filed US utility patent application that will be directly filed in foreign countries.

Keep in mind that a US design patent application must be filed within 6 months of the foreign priority date.

US Utility Patent Checklist: What information do we need for the initial filing?

Here is a helpful checklist for the initial filing of a US utility patent application:

  • details of priority application, including country, filing date, application number, title;
  • details of applicant(s), including whether or not they qualify as a small entity or large entity;
  • name and address of each inventor;
  • English translation of specification of priority application;
  • copy of drawings in priority application;
  • amended claims, which may be direclty included in the specification (no Preliminary Amendment necessary);
  • DAS code (digital access code) to avoid need for obtaining certified copy of priority application;
  • any known prior art references material to patentability; and
  • whether there has been a prior favorable ruling on the claims to serve as the basis for a PPH request.

Do you need an exact translation in a US application with a direct foreign priority claim?

Unlike a US national stage application which requires a precisely accurate English translation, a direct priority application need not be translated exactly. What is important is that the counterpart foreign application provides adequate support for the claims in the US application. If sufficient support is found in the specification of the foreign priority application, the claims in the US application will be entitled to the benefit of the earlier foreign filing date.

Therefore, it is possible to add new matter to a US application claiming direct priority from a foreign application. The new matter, which by definition lacks support from the priority application, will get the later filing date of the US application.

Is a Preliminary Amendment required to amend the US claims with respect to the foreign priority application?

Suppose you desire claims in the US application that are different from those in the foreign priority application. Would you need to file a Preliminary Amendment with the initial filing of the US application? No, a US application with a direct priority claim can be filed with different claims from the onset. There is no need to show track changes or any marked-up claims.

If the US conventional priority application has already been filed, then a Preliminary Amendment would be required to amend any claims thereafter.

Is disclosure of known prior art necessary?

Yes, you must file an Information Disclosure Statement (IDS) to disclose to the USPTO any known prior art references that are material to the patentability of the claimed invention. This would include prior art references cited during by the foreign patent office during the examination of the priority application.

Our firm prefers to file the IDS at, or promptly after, the initial filing. Keep in mind that this duty of disclosure is ongoing, so you may need to file supplemental Information Disclosure Statements whenever new prior art arises in foreign counterpart applications.

How much are the USPTO fees for a US conventional priority utility patent application?

The USPTO filing fees for a conventional priority utility application are substantially similar to those of a US national stage application. For a small entity (e.g., individuals, universities, businesses with less than 500 employees), the initial filing fee for a direct priority patent application is $830 as of the date of this post.

Need to file a US utility patent application based on foreign priority?

Reach out to US patent attorney Vic Lin by email or call (949) 223-9623 to see how we can help file your US utility patent applications with proper foreign priority claims and claims.

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