United States: USPTO Clarifies Rule for Claiming Priority to an Earlier Filed Application

On February 24, 2003, the U.S. Patent and Trademark Office (USPTO) issued a notice clarifying the rule for claiming priority to an earlier filed application. As set forth in 37 C.F.R. § 1.78(a)(2)(i), any non-provisional application that claims the benefit of one or more earlier-filed copending applications (including international applications designating the United States) must contain, or be amended to contain a reference to each such earlier filed application, which identifies the application serial number, and an indication of the relationship between the applications (i.e., continuation, continuation-in-part or divisional). The notice makes clear that the permissible relationships between the applications are mutually exclusive and, therefore, only one relationship should be identified (i.e., an application cannot be both a continuation and a continuation-in-part of an earlier filed application). 37 C.F.R. § 1.78(a)(2)(iv) recites that a request for a continued prosecution application (CPA) under 1.53(d) is the specific reference required under 35 U.S.C. § 120 to the earlier-filed application. Thus, no additional reference to the earlier filed application is required when filing a CPA.

The foregoing requirement under 37 C.F.R.§ 1.78(a)(2)(i) must be completed the later of four months from the filing date of the later-filed application, or sixteen months from the filing date of the earlier filed application. Failure to comply with this requirement will result in a waiver of the priority claim. However, it is possible to petition the USPTO to accept an unintentionally delayed claim under 37 C.F.R. § 1.78(a)(3).