Understanding Priority Claims For U.S. Patent Applications: Part 2

This article is second in a two-part series focusing on various issues related to priority claims in U.S. patent applications. While Part 1 is a general overview of how to make a proper priority claim, this article addresses how to make a timely post-filing priority claim in an application and how to correct an improper priority claim. Timeliness is crucial to avoid high fees and ensure that an earlier priority date is not lost. The procedures discussed below are post-America Invents Act (AIA) procedures applicable to applications and issued patents filed on or after March 16, 2013.

Making A Timely Post-Filing Priority Claim

A priority claim must be made within 4 months of the filing of the application or 16 months from the filing date of the prior application, whichever is later. 37 C.F.R. § 1.78 (domestic priority claim); 37 C.F.R. § 1.55 (foreign priority claim). For foreign priority claims, it is good practice for the applicant to confirm that a certified