Claiming The Benefit Of Foreign Priority And Examples Of How To Do It

December 15, 2009

in Practice Suggestions,Useful Information

This post discusses a less common but nonetheless important point that my earlier post on this subject did not – the mechanics of how to claim priority to a foreign patent document, along with a few examples.

Generally, the approach for claiming the benefit of foreign priority is similar to claiming domestic priority. There are a few more requirements to keep in mind, however.


The controlling rule here is 37 CFR § 1.55, entitled Claim for Foreign Priority, which states:

An applicant in a nonprovisional application may claim the benefit of the filing date of one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) and (b).

Section 1.55(a) goes on to impose a non-extendable time limit to make the claim, stating that:

the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. This time period is not extendable.

Pursuant to § 1.55, the claim for the benefit of foreign priority must satisfy a few more requirements than a claim for domestic priority. In particular, the claim must identify the foreign application for which priority is claimed by specifying:

1. the application number of the priority document;

2.  the country (or intellectual property authority) with which the priority document was filed

3. the day, month, and year the priority document was filed.

Also, of course, the foreign patent authority must have reciprocity with the USPTO, there must be an identity of inventorship, and the U.S. application must almost always have been filed within 12 months from the filing date of the priority document.


This application claims priority under 35 U.S.C. § 119 to German patent application DE 100 21 175.7, filed January 4, 2005, the disclosure of which is incorporated herein by reference.

This application is based on and claims the benefit of priority from Japanese Patent Application No. 5-234567, filed on October 15, 2007, the contents of which are incorporated by reference.

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© 2009, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney

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