35 U.S.C. · Part II · Chapter 11, Application for patent

35 U.S.C. 119: Benefit of earlier filing date; right of priority

In plain English

Section 119(a) to (d) gives a US application the benefit of an earlier foreign application for the same invention, the Paris Convention right of priority. The US application must be filed within 12 months of the earliest foreign filing, by the same applicant or their legal representatives or assigns, and the foreign country must give US applicants similar rights or be a WTO member.

Section 119(e) does the same for US provisional applications. A nonprovisional or PCT application filed within 12 months of a provisional, naming at least one of its inventors, is treated as filed on the provisional's date for any invention the provisional discloses in the manner required by section 112(a). If the twelfth month ends on a weekend or federal holiday, the deadline moves to the next business day (section 119(e)(3)), and the provisional filing fee must have been paid.

Both periods can be extended by 2 months if the delay in filing the later application was unintentional, by petition with a fee. The priority or benefit claim must be made during pendency, within the time the USPTO sets, and the USPTO can require a certified copy of the foreign application and a translation (section 119(b)(3)). A late claim is treated as waived unless it is accepted on petition as unintentionally delayed.

Section 119(c) allows priority to be based on a later foreign application in the same country only if the earlier one was withdrawn or abandoned without being published, without leaving rights outstanding, and without serving as a basis for priority.

Annotation by Raj Sutariya, Co-founder, PatentAssist.ai. General information, not legal advice; the statute below governs.

Text of 35 U.S.C. 119

Current text, quoted from the official United States Code.

(a) 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 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 12 months from the earliest date on which such foreign application was filed. The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7), pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application in this country within the 12-month period was unintentional.
(b) (1) No application for patent shall be entitled to this right of priority unless a claim is filed in the Patent and Trademark Office, identifying the foreign application by specifying the application number on that foreign application, the intellectual property authority or country in or for which the application was filed, and the date of filing the application, at such time during the pendency of the application as required by the Director.
(2) The Director may consider the failure of the applicant to file a timely claim for priority as a waiver of any such claim. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed claim under this section.
(3) The Director may require a certified copy of the original foreign application, specification, and drawings upon which it is based, a translation if not in the English language, and such other information as the Director considers necessary. Any such certification shall be made by the foreign intellectual property authority in which the foreign application was filed and show the date of the application and of the filing of the specification and other papers.
(c) In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country instead of the first filed foreign application, provided that any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority.
(d) Applications for inventors’ certificates filed in a foreign country in which applicants have a right to apply, at their discretion, either for a patent or for an inventor’s certificate shall be treated in this country in the same manner and have the same effect for purpose of the right of priority under this section as applications for patents, subject to the same conditions and requirements of this section as apply to applications for patents, provided such applicants are entitled to the benefits of the Stockholm Revision of the Paris Convention at the time of such filing.
(e) (1) An application for patent filed under section 111(a) or section 363 for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in a provisional application filed under section 111(b), by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b), if the application for patent filed under section 111(a) or section 363 is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application. The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7), pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application under section 111(a) or section 363 within the 12-month period was unintentional. No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this subsection.
(2) A provisional application filed under section 111(b) may not be relied upon in any proceeding in the Patent and Trademark Office unless the fee set forth in subparagraph (A) or (C) of section 41(a)(1) has been paid.
(3) If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the period of pendency of the provisional application shall be extended to the next succeeding secular or business day. For an application for patent filed under section 363 in a Receiving Office other than the Patent and Trademark Office, the 12-month and additional 2-month period set forth in this subsection shall be extended as provided under the treaty and Regulations as defined in section 351.
(f) Applications for plant breeder’s rights filed in a WTO member country (or in a foreign UPOV Contracting Party) shall have the same effect for the purpose of the right of priority under subsections (a) through (c) of this section as applications for patents, subject to the same conditions and requirements of this section as apply to applications for patents.
(g) As used in this section—
(1) the term “WTO member country” has the same meaning as the term is defined in section 104(b)(2); and
(2) the term “UPOV Contracting Party” means a member of the International Convention for the Protection of New Varieties of Plants.

Practical notes

For applications under section 111(a), the foreign priority claim and the certified copy are due by the later of 4 months from the US filing date or 16 months from the foreign filing date (37 CFR 1.55(d) and (f)). The provisional benefit reference must be in an application data sheet within the same 4- and 16-month window (37 CFR 1.78). Put both in the application data sheet at filing so the deadline never matters.

If the foreign office takes part in a priority document exchange with the USPTO, you can meet the certified copy requirement by asking the USPTO to retrieve the document electronically (37 CFR 1.55(i)). Check that the retrieval succeeded; a failed retrieval does not stop the clock.

Priority does not move the start of the patent term. Under section 154(a)(3), the 20 years run from the US filing date (or the earliest section 120 parent), so priority gains up to 12 months against prior art without costing term.

Priority is only as strong as the earlier disclosure. A claim that adds something the provisional or foreign application did not describe gets the later filing date.

Related rules and guidance

37 CFR: § 1.55, § 1.78, § 1.17
MPEP: 211, 213

35 U.S.C. 119: Benefit of earlier filing date; right of priority

In plain English

Text of 35 U.S.C. 119

Practical notes

Related rules and guidance

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