6 steps to submitting proper priority claims in your patent applications

January 8, 2015
Kenneth Horton
InsideCounsel

Building a patent portfolio often requires filing patent applications that are related to each other and become part of a “patent family.” Keeping the relationships clear among all of the applications (and the patents) in the patent family ensures that maximum protection is obtained for the inventions covered by the patent applications.

One of the relationships between related patent applications is the “priority claim.” A priority claim allows a later-filed application to obtain the benefit of the earlier filing date of an earlier-filed patent application. This earlier filing date is very important in both obtaining your patent and enforcing your patent. But if the priority claim is not submitted exactly, it can be lost.

Here is a process I use for ensuring that the priority claim(s) for my patent applications are accurate and complete.

1. Determine your desired priority claim: The first, basic step is determining what your priority claim should be. In other words, you need to determine whether your current application (the child application) is a continuation, a continuation-in-part, or divisional application of the earlier application (the patent application). For a continuation application, substantially the same specification from the parent application is filed in the child application. For a divisional application, a restriction requirement must have been made in the parent application, and you must be pursuing claims that were restricted out in the parent application. If neither of these conditions apply, you should be pursuing a continuation-in-part (CIP) application.

2. Prepare the ADS: Next, make sure that your application data sheet (ADS) correctly reflects this desired priority claim. This is important because after September 2012, the controlling document for your priority claim is the ADS. An example of how to fill out the ADS form properly is shown below where the ADS is filed in child application X (11/111,111), where X is a continuation of application Y (22/222,222), and Y is a continuation-in-part of application Z (33/333,333). Importantly, if you do not fill in the blue field correctly, the US Patent & Trademark Office will determine that application X is a CIP of Z (rather than application Y being a CIP of Z).

3. Put it in the specification: Even though the specification is no longer controlling, best practices would dictate that you still put the claim of priority in the specification. If the priority claim is complex, don’t keep it a single sentence, which might be misinterpreted by the U.S. Patent & Trademark Office docket clerk. Rather, break it into separate sentences, with each sentence only containing a single priority claim.

4. Check it: Unfortunately you are not finished. When received, check the Filing Receipt for the patent applications and compare it with the ADS. If needed, also check PAIR (Patent Application Information Retrieval system) at the U.S. Patent & Trademark Office for consistency.

5. Change it: If the information in the previous part is not correct, you only have four months from the filing date in which to correct the priority claim(s) without filing a Petition (and paying a fee). Within the four month window, simply file a Request for Corrected Filing Receipt and a Supplemental ADS with the desired changes. Outside that window, your only option is to file a Petition and pay the hefty $1600 fee.

6. List ALL priority claims: A complete priority claim must cite to ALL applications in the family: if an application is not listed, the priority claim to that application might be lost. For example, application X must specify that it claims priority of Y and that Y claims priority of Z. If ADS in X only claims priority of Y, the priority to Z will not be not be imputed into application X.

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