The priority date, under US law, is the filing date of the first Patent Application (Provisional or Nonprovisional) to which a Nonprovisional Patent Application claims benefit. Depending on the facts of each case, the claim of priority must be established prior to the expiration of the Provisional Application, abandonment of the Nonprovisional Application, or the grant of the Patent.
Why is a Patent’s Priority Date a Big Deal?
Among other things, the USPTO can only use references that were available prior to the priority date to reject the claims of the Nonprovisional Patent Application. In other words, the USPTO cannot use inventions filed after this priority date to reject the claims of a Nonprovisional Patent Application. So if a competitor invents something while you are waiting for the Patent Office’s review, the earlier the filing date or priority date, the less prior art the Examiner can use to reject your Patent Application.
This matters because it may be two, four, or more years after you file your Nonprovisional Application before the USPTO starts detailed examination of your application.
What If I Made Earlier Filings?
A Nonprovisional Patent Application can claim the benefit of an earlier Provisional Application or a previously filed Nonprovisional Application. If a Nonprovisional Patent Application doesn’t claim the benefit of a Provisional Application or priority based on a previously filed Nonprovisional Application, the priority date is the filing date on the original Nonprovisional Patent Application.
What the US Code Says
35 United States Code (U.S.C.) 120
35 U.S.C. 120, in part reads, “An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385 which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application…”
35 U.S.C. 119(e)
35 U.S.C. 120(e), in part reads, “(1) An application for patent filed under section 111(a) or section 363 for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in a provisional application filed under section 111(b), 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), if the application for patent filed under section 111(a) or section 363 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…”
Examples: How Priority Date for Patent Applications Works
- Our Provisional Application was filed July 4, 2020 and on January 15, 2021 our company files a Nonprovisional claiming the benefit of our Provisional Application. The priority date is July 4, 2020.
- Our company filed a Nonprovisional Application on March 15, 2020. We opt to file a PCT Application. The priority date is March 15, 2020.
- The Provisional Application was filed on September 15, 2019. Our company filed a Nonprovisional Application on September 12, 2020 claiming the benefit of the Provisional Application. Our engineers invented an improvement to the invention that was disclosed in the Nonprovisional Application but not in the Provisional Application. We opted to file a Continuation Nonprovisional Application. The priority dates are September 12, 2020 for the improvement and September 15, 2019 for the remainder of the invention disclosed in the Provisional Application.
- Our company filed a Provisional Application directed to a mousetrap on January 12, 2017. On January 9, 2018, we filed a PCT Application directed to the mousetrap. In March 21, 2019, our engineers invented a device for use with the mousetrap. The device is used for sampling the DNA of the mouse restrained in the mousetrap. On May 15, 2019, the company files a US Continuation-in-Part Application claiming both the mousetrap and the device for sampling DNA. The priority dates are January 12, 2017 for the mousetrap and May 15, 2019 for the device for sampling DNA.
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