Restoring the Right of Priority in U.S. Non-provisional Patent Applications

Justin R. Sauer, November 7, 2015

The U.S. Patent and Trademark Office (USPTO) has long allowed revival of non-provisional patent applications for unintentional failures to respond to office actions or pay issue fees, as well as to reinstate patents following an unintentional failure to pay maintenance fees.  At the same time, the USPTO has maintained a hard and fast rule regarding the time period for filing non-provisional applications to maintain the right of priority to an earlier-filed U.S. provisional application or foreign patent application (12 months).  If the non-provisional application was not filed by the anniversary date (or next business day where the anniversary date falls on a weekend or Federal holiday) of the earlier-filed provisional or foreign application, then the right to claim priority was irretrievably lost.

Following December 2013 rule changes made to implement to the Patent Law Treaties Implementation Act of 2012, the USPTO now allows a patent applicant to petition to restore the right of priority to an earlier-filed U.S. provisional patent application or foreign application, provided the non-provisional application was filed within 14 months of the earlier-filed application (i.e., two months after the anniversary date).  The petition to restore must include:

a) a reference to the earlier-filed application;
b) the petition fee (currently $1,700 large entity/$850 small entity – no micro-entity reduction is available); and
c) a statement that the entire delay between the filing of the non-provisional application and the 12 month deadline was unintentional.

The same provision also applies to International applications filed under the Patent Cooperation Treaty (PCT).  The USPTO will recognize restored priority rights in a PCT application where the petition requirements are met, provided the PCT application was filed within 14 months of the earlier-filed application.

Significantly, as long as the non-provisional (or PCT) application was filed within 14 months of the earlier-filed application, the petition to restore the right of priority can be filed after the 14 months has passed.  For example, a patent applicant who was unaware of this new right of restoration can still avail him- or herself of the priority date of an earlier-filed provisional or foreign patent application.

If the non-provisional (or PCT) application did not include a priority claim when it was filed, as would likely be the case in such a scenario, then it would also be necessary to make the priority claim to begin with.  There is a separate time limit on how long after the non-provisional is filed a priority claim can be made; namely, the later of four months after the non-provisional filing date or 16 months after the filing date of the earlier-filed application.  If the petition to restore priority is presented after this time period, then a separate petition to accept an unintentionally delayed priority claim will also be required.

If you think you might benefit from these rule changes, an ADDMG patent attorney or agent can assist you in determining the relevant time periods involved and making the necessary filings.