| Certificates of Correction |
Referenced Items (224, 225, 226, 227) |
(226) Using Certificate of Correction to Perfect
Claim for Priority Under 35 USC 119
Under 35 USC 119, an applicant may assert a right of priority and claim
the benefit of an earlier filing date in a foreign country. In this
regard, 35 USC 119 states:
No application for patent shall be entitled to this right or 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. . . .
The failure to perfect a claim to foreign priority benefits prior to
issuance of the patent may be cured by filing a reissue application;
Brenner v. State of Israel,158 USPQ 584 (CA DC 1968).
However, under certain conditions, this failure may also be cured by
filing a Certificate of Correction request under 35 USC 255 and 37 CFR
1.323. For example, in the case of In re Van Esdonk, 187 USPQ 671 (Comr.
1975), the Commissioner granted a request to issue a Certificate of
Correction in order to perfect a claim to foreign priority benefits. In
that case, a claim to foreign priority benefits had not been filed in
the application prior to issuance of the patent. However, the
application was a continuation of an earlier application in which the
requirements of 35 USC 119 had been satisfied. Accordingly, the
Commissioner held that the "applicants' perfection of a priority claim
under 35 USC 119 in the parent application will satisfy the statute with
respect to their continuation application."
Although In re Van Esdonk involved the patent of a continuation
application filed under 37 CFR 1.60, it is proper to apply the holding
of that case in similar factual circumstances to any patented
application having benefits under 35 USC 120. This is primarily because
a claim to foreign priority benefits in a continuing application, where
the claim has been perfected in the parent application, constitutes in
essence a mere affirmation of the applicant's previously expressed
desire to receive benefits under 35 USC 119 for subject matter common to
the foreign, parent, and continuing applications.
In summary, a Certificate of Correction under 35 USC 255 and 37 CFR
1.323 may be requested and issued in order to perfect a claim to foreign
priority benefits in a patented continuing application if the
requirements of 35 USC 119 had been satisfied in the parent application
prior to issuance of the patent and the requirements of 37 CFR 1.55(a)
are met.
However, a claim to foreign priority benefits cannot be perfected via
a Certificate of Correction if the requirements of 35 USC 119 had not
been satisfied in the patented application, or its parent, prior to
issuance and the requirements 37 CFR 155(a) are not met. In this latter
circumstance, the claim to foreign priority benefits can be perfected
only by way of a reissue application in accordance with the rationale
set forth in Brenner v. State of Israel, supra.
July 25, 1986 RENE D. TEGTMEYER
Assistant Commissioner
for Patents
[1169 OG 38]
Top of Notices (226) December 29, 2009