Chapter §11.08 Claiming Foreign Priority

• Jurisdiction: United States

§11.08 Claiming Foreign Priority

[A] Treaty Basis and Statutory Implementation

In much the same manner as a nonprovisional application may claim the benefit of the earlier filing date of a domestic provisional application directed to the same invention under 35 U.S.C. §119(e),²⁶⁸ a nonprovisional application (i.e., an original application filed under 35 U.S.C. §111(a)) may claim the benefit of the inventor's earlier-filed foreign patent application for the same invention under 35 U.S.C. §119(a)-(d).²⁶⁹ That is, §119 of the Patent Act currently encompasses claims to both foreign as well as domestic priority.

Although domestic priority claims under 35 U.S.C. §119(e) were not implemented in U.S. patent law until the mid-1990s with passage of the Uruguay Round Agreements Act,²⁷⁰ the concept of claiming priority back to an earlier-filed foreign application is long-established. Foreign priority claims were made part of U.S. patent law by Congressional implementation in the early twentieth century of the cornerstone international agreement, the Paris Convention for the Protection of Industrial Property.²⁷¹ Along with the principle of national treatment, the Paris Convention established the right of (foreign) priority.²⁷² Section 119 (a)-(d) of Title 35, U.S.C., is the domestic implementation of the Paris Convention right of priority.

The key Patent Act provision for foreign priority claiming is 35 U.S.C. §119(a), which provides

An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO [World Trade Organization] member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within twelve months from the earliest date on which such foreign application was filed; but no patent shall be granted on any application for patent for an invention which had been patented or described in a printed publication in any country more than one year before the date of the actual filing of the application in this country, or which had been in public use or on sale in this country more than one year prior to such filing (emphasis added). ²⁷³

This rather complex statutory provision confers an important benefit to the many U.S. patent applicants who have previously filed a patent application on the same invention in another country.²⁷⁴ If an applicant first "regularly" files a patent application in a foreign country that is a member of the WTO or a country that conveys "similar privileges" to the United States (i.e., any Paris Convention signatory country or any of the other countries with which the United States has established bilateral treaties on this point), and thereafter files a second patent application "for the same invention" in the United States within 12 months of the foreign filing date, then the applicant can claim for that U.S. application the benefit of the earlier foreign filing date. The foreign filing date is often referred to as the "foreign priority date" of the U.S. application.

[B] "Shall Have the Same Effect"

Obtaining this benefit means that, as emphasized in the statutory quotation, the U.S. application "shall have the same effect" as it would have if actually filed in the United States on the earlier foreign filing date. In practice, this means that the USPTO will treat the U.S. application as if filed on the foreign priority date for purposes of examining it against the prior art. For pre-AIA foreign priority claims, the foreign filing date will be taken as the presumptive invention date for purposes of examination under the novelty and nonobviousness provisions of 35 U.S.C. §102 (2006) and 35 U.S.C. §103 (2006).²⁷⁵ For post-AIA foreign priority claims, the foreign filing date will be used as the effective filing date of the U.S. application.²⁷⁶ In either case, events that occurred between the foreign priority date and the actual U.S. filing date, which might have otherwise destroyed novelty or rendered the invention obvious, will not "count" as prior art against the application.

[C] "Same Invention"

To obtain a foreign priority date, the statute requires that a U.S. patent application be "for the same invention" as that disclosed in the applicant's earlier foreign-filed application. This is not always the case, for example, when an inventor makes improvements over time and claims his invention more broadly in the later-filed U.S. application. Federal Circuit case law has interpreted the meaning of the phrase "same invention" as used in 35 U.S.C. §119(a).²⁷⁷ The court's precedent clarifies that claims presented in a U.S. patent application are entitled to the benefit of a foreign priority date under §119(a) to the extent that the disclosure of the corresponding foreign application supports the claims in the manner required by the disclosure requirements of 35 U.S.C. §112.²⁷⁸

For pre-AIA applications, this means that the foreign application must satisfy all three components of §112, ¶1 (2006); that is, the foreign application must provide an enabling disclosure of the invention as claimed in the U.S. application, it must include a written description of the invention, and it...