Why do priority claims matter for patents?
Patenting is about winning the race to the Patent Office by applying for a protectable invention before others do. In order to be first to the Patent Office, you need an earlier filing date that precedes the filing dates of others attempting to patent similar inventions. A priority claim is a helpful, and often critical, way to link a later-filed patent application to an earlier-filed patent application. Known as a priority application, the earlier-filed application must generally have common subject matter and common inventorship in order for a priority claim to be made. The common subject matter in the later-filed application will be backdated to the earlier filing date (priority date) of the earlier-filed application.
The earlier-filed application may be a US priority application or foreign priority application, or a PCT application. Strict deadlines apply as discussed further below, so you do not have the flexibility to postpone filing decisions indefinitely.
Priority deadlines: starting from provisional
Many entrepreneurs and startups find provisional patent applications appealing for the generally lower cost and immediate patent-pending status. If you start with a provisional patent application, then you must keep in mind the following deadlines:
- 12-month deadline to file US nonprovisional application;
- 12-month deadline to file nonprovisional applications in non-PCT foreign countries; and
- 12-month deadline to file either: a) PCT application, or b) nonprovisional applications directly in foreign countries with conventional priority claim (Paris Convention).
Priority deadlines: starting from nonprovisional
If your first patent filing for a particular invention was a US nonprovisional application, then the following priority deadlines apply:
- 12-month deadline to file nonprovisional applications in non-PCT foreign countries; and
- 12-month deadline to file either: a) PCT application, or b) nonprovisional applications directly in foreign countries with conventional priority claim (Paris Convention).
Priority deadlines: starting from PCT application
If your first patent filing for a particular patent application was a PCT application, then you have 30 months from the PCT filing date to nationalize the application in each desired PCT member country. Some PCT member countries have a 31-month national stage deadline. Certain non-PCT countries might allow you to file within 12 months of the PCT filing date.
Design patent priority deadline
The deadline to file foreign design patent applications with a priority claim to the first design patent application is 6 months.
What if you missed a priority deadline?
In certain situations, you may be able to file a late application and still maintain a priority claim. Additional declarations and government fees may be required.
Priority claim between a parent and child application
There may be several reasons to file a continuing application. Perhaps you wish to add new subject matter or pursue claims different from the allowed claims in the parent application. In order to include a priority claim in a continuing application, the child application must be filed while the parent application is still pending (i.e., before grant or abandonment).
Can a priority claim be added after initial filing?
In certain circumstances, it may be possible to add a priority claim in the later-filed application. Certain time periods will apply, so the priority claim must be timely added. For utility applications, the deadline for adding a priority is generally the later of four months from the filing date of the later-filed application or 16 months from the filing date of the prior-filed application.
Need help coordinating your international patent filings?
Contact US patent attorney Vic Lin by email at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you file your foreign patent applications and manage them cost-effectively.
