§ 119. — Benefit of earlier filing date; right of priority.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 2002]
[CITE: 35USC119]
TITLE 35--PATENTS
PART II--PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
CHAPTER 11--APPLICATION FOR PATENT
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.
(July 19, 1952, ch. 950, 66 Stat. 800; Pub. L. 87-333, Sec. 1, Oct. 3,
1961, 75 Stat. 748; Pub. L. 92-358, Sec. 1, July 28, 1972, 86 Stat. 501;
Pub. L. 93-596, Sec. 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 103-465,
title V, Sec. 532(b)(1), Dec. 8, 1994, 108 Stat. 4985; Pub. L. 106-113,
div. B, Sec. 1000(a)(9) [title IV, Secs. 4503(a), (b)(2), 4801(b), (c),
4802], Nov. 29, 1999, 113 Stat. 1536, 1501A-563, 1501A-564, 1501A-588,
1501A-589; Pub. L. 107-273, div. C, title III, Sec. 13206(b)(2), Nov. 2,
2002, 116 Stat. 1906.)
Historical and Revision Notes
Based on Title 35, U.S.C., 1946 ed., Sec. 32, second paragraph (R.S.
4887, second paragraph, amended (1) Mar. 3, 1903, ch. 1019, Sec. 1, 32
Stat. 1225, 1226, (2) June 19, 1936, ch. 594, 49 Stat. 1529, (3) Aug. 5,
1939, ch. 450, Sec. 1, 53 Stat. 1212).
The first paragraph is the same as the present law with changes in
language. The references to designs have been removed for inclusion in
another section and the opening clause has been modified to accord with
actual practice and the requirements of the International Convention for
the Protection of Industrial Property.
The second paragraph is new, making an additional procedural
requirement for obtaining the right of priority. Copies of the foreign
papers on which the right of priority is based are required so that the
record of the United States patent will be complete in this country.
References in Text
The Stockholm Revision of the Paris Convention, referred to in
subsec. (d), means the Convention revising the Convention of the Union
of Paris of Mar. 20, 1883, as revised, for the protection of industrial
property, done at Stockholm July 14, 1967, entered into force for the
United States Sept. 5, 1970, with the exception of Articles 1 through 12
which entered into force for the United States Aug. 25, 1973. See 21 UST
1583; 24 UST 2140; TIAS 6293, 7727.
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.
Section Referred to in Other Sections
This section is referred to in sections 104, 111, 154, 172, 273, 373
of this title.
