Maiorana, P.C.

Claimed Priority vs. Accorded Priority

Back in law school, Professor Johnson had a clever saying that always had the same answer. The answer was - “It couldn’t be any other way”. I mention this because being accorded priority versus claiming priority seems odd at first. After a look at the policies involved, it really couldn’t be any other way.

When we file a new application, there is a section on the Application Data Sheet (ADS) where we can “claim” priority to a previously filed application, discussed here. There are a number of rules, including co-pendency that need to be met in order to have a valid claim of priority. If you make an improper claim of priority, and the claim is not fixed within certain time frames, there is little recourse in trying to get the benefit of an earlier filing date.

But this is just for the claim. Who monitors the claim? Normally nobody monitors the claim. A patent is presumed to be valid, but may be challenged in court. It may also be challenged in a number of proceedings at the Patent Office level. We have a few blogs discussing patent interferences, discussed here and here. These occur on applications filed before the 2013 change over to the American Invents Act. After the 2013 change over, a derivation proceeding (also held at the Patent Office level) has similar issues.

One of the many issues involved in an interference or derivation would be whether your claim to priority is valid. The Patent Office sometimes requires you to write a brief in support of why your claim of priority is valid. If the Patent Office agrees with you, then you are accorded the filing date. The US Patent Office confirms that all of the issues in the claim are correct. They also tend to go much further. They analyze the actual subject matter of the earlier filed application to determine whether it is compliant under 35 U.S.C. §112. This is the analysis that we analyze in another blog, discussed here.

The bottom line is an Applicant makes a claim of priority to an earlier filed application. The Patent Office confirms the claim by according a priority date. In the big picture, it couldn’t be any other way. Thanks Professor Johnson!

Book an appointment with one of our Patent Attorneys for additional information. Please call us at MI - 586-498-0670 or CA - 408-890-6549.