What is a claim of priority in a patent?

A claim of priority grants you the right to assert the advantage of an earlier filing date for your patent application. Consequently, your patent application will have the earliest possible priority date, and any prior art that predates the filing date of your application will not be considered prior art.

What are the advantages of a claim of priority?

As mentioned earlier, a claim of priority allows you to disregard prior art that predates your patent application. A common scenario is when you file a nonprovisional application that claims priority back to an earlier filed provisional application. In this case, any prior art existing between the filing dates of the provisional and nonprovisional applications is not regarded as prior art to your nonprovisional application. Essentially, your nonprovisional application is treated as if it was filed on the same date as the provisional application.

This is precisely why you can confidently market your product after filing a provisional application. Others cannot glimpse your marketing efforts and file their own application to steal your idea. With the claim of priority back to the provisional application, you have priority (i.e., the first position) over others who file their patent applications later.

Moreover, any marketing carried out by others will not be considered prior art against your nonprovisional application. Once again, your claim of priority grants you an earlier priority date.

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How can you expand your patent portfolio by claiming priority to an earlier filed application?

The ability to lay claim to an earlier filed patent application empowers you to develop a comprehensive patent portfolio centered around your product. After filing your initial application and obtaining your first patent, you can file a continuation or divisional application that asserts priority back to your first application. These subsequent applications can pursue broader patent claims compared to those in your initial patent.

You may assume that the claims of your first patent are the most extensive that an examiner would allow. However, this is not always the case. In my experience, the broadest claims for an invention often materialize after filing one or more continuation applications.

By consecutively filing multiple continuation and divisional applications, you can further explore the depths of your original patent application. These subsequent applications aim to safeguard various aspects of your invention. You are not confined to seeking a patent for your invention in just a single dimension. For more information on developing a patent portfolio through the filing of a continuation application, click here.

How do you assert priority to an earlier filed patent application?

To assert priority to an earlier filed patent application, the earlier application must still be pending when you file the later patent application. This requirement is known as the co-pendency requirement. If the earlier filed application is abandoned, you can no longer claim priority to it.

Additionally, when you receive a notice of allowance and are prepared to pay the issue fee, you must decide whether to file a continuation or divisional application before submitting the fee. Once the patent is granted, the application is no longer considered pending, and filing a continuation application becomes impossible.

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Furthermore, in an Application Data Sheet (ADS) filed with the later patent application, you must make a specific reference to the earlier filed patent application to claim priority. Ideally, the claim of priority should be made upon filing the later application. However, it can be made up to four months later or even after that by paying a substantial surcharge.