Court Opinions
State Laws
|
Patents - 35 USC Section 119
Legal Research Home >
US Lawyer > Patents > Patents - 35 USC Section 119
01/19/04
Sec. 119. Benefit of earlier filing date; right of priority
(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 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.
(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 payment of a
surcharge, 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 of this title for an invention disclosed in the manner
provided by the first paragraph of section 112 of this title in a
provisional application filed under section 111(b) of this title,
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) of this title, if the application for patent filed under
section 111(a) or section 363 of this title 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. 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 a surcharge, to accept an unintentionally
delayed submission of an amendment under this subsection during the
pendency of the application.
(2) A provisional application filed under section 111(b) of this
title 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) of this title 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.
(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) of this title; and
(2) the term "UPOV Contracting Party" means a member of the
International Convention for the Protection of New Varieties of
Plants.
AMENDMENTS
2002 - Subsec. (a). Pub. L. 107-273 made technical correction to
directory language of Pub. L. 106-113, Sec. 1000(a)(9) [title IV,
Sec. 4802(1)]. See 1999 Amendment note below.
1999 - Subsec. (a). Pub. L. 106-113, Sec. 1000(a)(9) [title IV,
Sec. 4802(1)], as amended by Pub. L. 107-273, inserted "or in a WTO
member country," after "or to citizens of the United States,".
Subsec. (b). Pub. L. 106-113, Sec. 1000(a)(9) [title IV, Sec.
4503(a)], amended subsec. (b) generally. Prior to amendment,
subsec. (b) read as follows: "No application for patent shall be
entitled to this right of priority unless a claim therefor and a
certified copy of the original foreign application, specification
and drawings upon which it is based are filed in the Patent and
Trademark Office before the patent is granted, or at such time
during the pendency of the application as required by the
Commissioner not earlier than six months after the filing of the
application in this country. Such certification shall be made by
the patent office of the foreign country in which filed and show
the date of the application and of the filing of the specification
and other papers. The Commissioner may require a translation of the
papers filed if not in the English language and such other
information as he deems necessary."
Subsec. (e)(1). Pub. L. 106-113, Sec. 1000(a)(9) [title IV, Sec.
4503(b)(2)], inserted at end: "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 a surcharge, to accept an unintentionally delayed
submission of an amendment under this subsection during the
pendency of the application."
Subsec. (e)(2). Pub. L. 106-113, Sec. 1000(a)(9) [title IV, Sec.
4801(c)], struck out before period at end "and the provisional
application was pending on the filing date of the application for
patent under section 111(a) or section 363 of this title".
Subsec. (e)(3). Pub. L. 106-113, Sec. 1000(a)(9) [title IV, Sec.
4801(b)], added par. (3).
Subsecs. (f), (g). Pub. L. 106-113, Sec. 1000(a)(9) [title IV,
Sec. 4802(2)], added subsecs. (f) and (g).
1994 - Pub. L. 103-465, in section catchline, struck out "in
foreign country" after "date", designated four undesignated
paragraphs as subsecs. (a) to (d), and added subsec. (e).
1975 - Pub. L. 93-596 substituted "Patent and Trademark Office"
for "Patent Office".
1972 - Pub. L. 92-358 inserted last paragraph providing that
under certain circumstances, applications for inventors'
certificate filed in a foreign country would be given the same
priority as applications for patents, if the applicants are
entitled to the benefits of the Stockholm Revision of the Paris
Convention at the time of filing.
1961 - Pub. L. 87-333 authorized the right provided by this
section to be based upon a subsequent application in the same
foreign country, instead of the first application, provided that
any foreign application filed prior to such subsequent one was
withdrawn, or otherwise disposed of, without having been open to
public inspection and without leaving any rights outstanding, nor
any basis for claiming priority.
EFFECTIVE DATE OF 1999 AMENDMENT
Amendment by section 1000(a)(9) [title IV, Sec. 4503(a), (b)(2)]
of Pub. L. 106-113 effective Nov. 29, 2000, and applicable only to
applications (including international applications designating the
United States) filed on or after that date, see section 1000(a)(9)
[title IV, Sec. 4508] of Pub. L. 106-113, as amended, set out as a
note under section 10 of this title.
Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Sec.
4801(d)], Nov. 29, 1999, 113 Stat. 1536, 1501A-589, provided that:
"The amendments made by this section [amending this section and
section 111 of this title] shall take effect on the date of the
enactment of this Act [Nov. 29, 1999] and shall apply to any
provisional application filed on or after June 8, 1995, except that
the amendments made by subsections (b) and (c) [amending this
section] shall have no effect with respect to any patent which is
the subject of litigation in an action commenced before such date
of enactment."
EFFECTIVE DATE OF 1994 AMENDMENT
Amendment by Pub. L. 103-465 effective 6 months after Dec. 8,
1994, and applicable to all patent applications filed in the United
States on or after that effective date, with provisions relating to
earliest filed patent application, see section 534(b)(1), (3) of
Pub. L. 103-465, set out as a note under section 154 of this title.
EFFECTIVE DATE OF 1975 AMENDMENT
Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4
of Pub. L. 93-596, set out as a note under section 1111 of Title
15, Commerce and Trade.
EFFECTIVE DATE OF 1972 AMENDMENT
Section 3(a) of Pub. L. 92-358 provided that: "Section 1 of this
Act [amending this section] shall take effect on the date when
Articles 1-12 of the Paris Convention of March 20, 1883, for the
Protection of Industrial Property, as revised at Stockholm, July
14, 1967, come into force with respect to the United States [Aug.
25, 1973] and shall apply only to applications thereafter filed in
the United States."
EFFECTIVE DATE OF 1961 AMENDMENT
Amendment by Pub. L. 87-333 effective on the date when the
Convention of Paris for the Protection of Industrial Property of
March 20, 1883, as revised at Lisbon, Oct. 31, 1958, comes into
force with respect to the United States [Jan. 4, 1962] and shall
apply only to applications thereafter filed in the United States by
persons entitled to the benefit of said convention, as revised at
the time of such filing, see section 3 of Pub. L. 87-333, set out
as a note under section 1126 of Title 15, Commerce and Trade.
JAPANESE AND CERTAIN GERMAN NATIONALS; TEMPORARY EXTENSION OF
PRIORITY RIGHTS
Act Aug. 23, 1954, ch. 823, 68 Stat. 764, provided that the
priority rights specified in section 101 of former Title 35,
Patents, which arose before Apr. 1, 1950, were extended, with
respect to inventions made subsequent to Jan. 1, 1946, in favor of
certain Japanese and German nationals, to a date nine months after
Aug. 23, 1954, subject to conditions and limitations specified in
sections 104, 110, 112, and 114 of former title 35.
Last modified: April 20, 2006
|
|
