美國專利法第119條筆記

筆記

35 U.S.C. 119(a)
同人（代表或經讓渡）以相同發明在國外已申請（最早申請案），當在最早申請案申請日後12個月內提出美國申請案時，可以享有與最早申請案申請日的好處（優先權），若在非故意延遲的條件下，可以延長兩個月（至14個月）。

35 U.S.C. 119(b)
主張優先權時，應指出先前申請案的國家、國外申請號、日期等，專利局長官可要求申請人提出國外申請案有效副本（官方優先權文件）、翻譯（非英文的話）以及相關資訊。



35 U.S.C. 119(c)
美國申請案的國外優先權若為同一國另外的申請案，而非基於第一申請案，那在所主張優先權案的其他更早申請案應要撤銷、拋棄或不予公開。

35 U.S.C. 119(d)
經發明人認證的國外申請案，申請人在提出後申請案時有權主張優先權（Paris Convention）。

35 U.S.C. 119(e)

美國臨時申請案（provisional application，35 U.S.C. 111(b)）在符合揭露申請與規定時，其發明人可在臨時申請案申請日後12個月內提出正式申請案（non-provisional application），並在涵蓋相同內容的情況下主張臨時申請案優先權。同樣地，若為非故意延遲，12個月可以再延長兩個月。期間若有修正，專利局主管將判斷是否仍符合優先權較早申請案的規定。若12個月期限最後一天落於假日，將順延一天。

若較早申請案為國際申請案（35 U.S.C. 363），12的月優先權期限依照相關合約規定延長。

119(e)與120為同一規定：MPEP 211 Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e)

35 U.S.C. 120  Benefit of earlier filing date in the United States.

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. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this section.

35 U.S.C. 119(f)
關於在WTO會員國申請的植物品種申請案，也享有上述規定(a)-(c)的優先權以及要求。

35 U.S.C. 119(g)

定義WTO（世界貿易組織）會員國與「UPOV Contracting Party」（植物品種保護國際公約）。

----35 U.S.C. 119---------
（https://www.bitlaw.com/source/35usc/119.html）
以下119(a)僅適用AIA後申請案（first inventor to file application），此條刪掉的內容為："; but no patent shall be granted on any application for patent for an invention which had been patented or described in a printed publication in any country more than one year before the date of the actual filing of the application in this country, or which had been in public use or on sale in this country more than one year prior to such filing"

35 U.S.C. 119 BENEFIT OF EARLIER FILING DATE; RIGHT OF PRIORITY.

• (a) An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within 12 months from the earliest date on which such foreign application was filed. The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7), pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application in this country within the 12-month period was unintentional.
• (b)
  • (1) No application for patent shall be entitled to this right of priority unless a claim is filed in the Patent and Trademark Office, identifying the foreign application by specifying the application number on that foreign application, the intellectual property authority or country in or for which the application was filed, and the date of filing the application, at such time during the pendency of the application as required by the Director.
  • (2) The Director may consider the failure of the applicant to file a timely claim for priority as a waiver of any such claim. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed claim under this section.
  • (3) The Director may require a certified copy of the original foreign application, specification, and drawings upon which it is based, a translation if not in the English language, and such other information as the Director considers necessary. Any such certification shall be made by the foreign intellectual property authority in which the foreign application was filed and show the date of the application and of the filing of the specification and other papers.
• (c) In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country instead of the first filed foreign application, provided that any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority.
• (d) Applications for inventors’ certificates filed in a foreign country in which applicants have a right to apply, at their discretion, either for a patent or for an inventor’s certificate shall be treated in this country in the same manner and have the same effect for purpose of the right of priority under this section as applications for patents, subject to the same conditions and requirements of this section as apply to applications for patents, provided such applicants are entitled to the benefits of the Stockholm Revision of the Paris Convention at the time of such filing.
• (e)
  • (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. The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7), pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application under section 111(a) or section 363 within the 12-month period was unintentional. No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this subsection.
  • (2) A provisional application filed under section 111(b) may not be relied upon in any proceeding in the Patent and Trademark Office unless the fee set forth in subparagraph (A) or (C) of section 41(a)(1) has been paid.
  • (3) If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the period of pendency of the provisional application shall be extended to the next succeeding secular or business day. For an application for patent filed under section 363 in a Receiving Office other than the Patent and Trademark Office, the 12-month and additional 2-month period set forth in this subsection shall be extended as provided under the treaty and Regulations as defined in section 351.
• (f) Applications for plant breeder’s rights filed in a WTO member country (or in a foreign UPOV Contracting Party) shall have the same effect for the purpose of the right of priority under subsections (a) through (c) of this section as applications for patents, subject to the same conditions and requirements of this section as apply to applications for patents.
• (g) As used in this section—
  • (1) the term "WTO member country" has the same meaning as the term is defined in section 104(b)(2); and
  • (2) the term "UPOV Contracting Party" means a member of the International Convention for the Protection of New Varieties of Plants.

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Ron