§ 119. Benefit of earlier filing date; right of priority

Legislative history

Reconstructed from this section’s Code source credit and amendment notes, resolved against the local Statutes at Large. Editorial notes are evidence, not the law that made the change.

1. 1952

   July 19, 1952, ch. 950, 66 Stat. 800 · 66 Stat. 800

   Enacted · 35 U.S.C. § 119

   July 19, 1952, ch. 950, 66 Stat. 800

   Source evidence

   Code source credit
   July 19, 1952, ch. 950, 66 Stat. 800

2. 1961

   Pub. L. 87–333 § 1 · 75 Stat. 748

   Changed · 35 U.S.C. § 119

   Pub. L. 87–333 authorized the right provided by this section to be based upon a subsequent application in the same foreign country, instead of the first application, provided that any foreign application filed prior to such subsequent one was withdrawn, or otherwise disposed of, without having been open to public inspection and without leaving any rights outstanding, nor any basis for claiming priority

   Source evidence

   Code amendment note
   Pub. L. 87–333 authorized the right provided by this section to be based upon a subsequent application in the same foreign country, instead of the first application, provided that any foreign application filed prior to such subsequent one was withdrawn, or otherwise disposed of, without having been open to public inspection and without leaving any rights outstanding, nor any basis for claiming priority.

3. 1972

   Pub. L. 92–358 § 1 · 86 Stat. 501

   Inserted · 35 U.S.C. § 119

   Pub. L. 92–358 inserted last paragraph providing that under certain circumstances, applications for inventors’ certificate filed in a foreign country would be given the same priority as applications for patents, if the applicants are entitled to the benefits of the Stockholm Revision of the Paris Convention at the time of filing

   Source evidence

   Code amendment note
   Pub. L. 92–358 inserted last paragraph providing that under certain circumstances, applications for inventors’ certificate filed in a foreign country would be given the same priority as applications for patents, if the applicants are entitled to the benefits of the Stockholm Revision of the Paris Convention at the time of filing.

4. 1975

   Pub. L. 93–596 § 1 · 88 Stat. 1949

   Substituted · 35 U.S.C. § 119

   Pub. L. 93–596 substituted “Patent and Trademark Office” for “Patent Office”

   Source evidence

   Code amendment note
   Pub. L. 93–596 substituted “Patent and Trademark Office” for “Patent Office”.

   Enacted provision · exact public law section
   Section 1. The Trademark Act of 1946, 60 Stat. 427, as amended (15 U.S.C. sec. 1051 et seq. (1970)), and title 35 of the United States Code, entitled “Patents”, are amended by striking out each time they 35 USC 1 et seq. appear “Patent Office” and “Commissioner of Patents” and inserting in lieu thereof “Patent and Trademark Office” and “Commissioner of Patents and Trademarks”, respectively.

5. 1994

   Pub. L. 103–465 title V § 532(b)(1) · 108 Stat. 4809

   1. Struck · 35 U.S.C. § 119

      Pub. L. 103–465, in section catchline, struck out “in foreign country” after “date”

   2. Amended · 35 U.S.C. § 119

      Pub. L. 103–465, in section catchline, designated four undesignated paragraphs as subsecs. (a) to (d)

   3. Added · 35 U.S.C. § 119

      Pub. L. 103–465, in section catchline, added subsec. (e)

   Source evidence

   Code amendment note
   Pub. L. 103–465, in section catchline, struck out “in foreign country” after “date”, designated four undesignated paragraphs as subsecs. (a) to (d), and added subsec. (e).

   Enacted provision · exact public law section
   (1) In general.— Section 119 of title 35, United States Code, is amended— (A) by amending the section caption to read as follows: “§119. Benefit of earlier filing date; right of priority”; (B) by designating the undesignated paragraphs as subsections (a), (b), (c), and (d), respectively; and (C) by adding at the end the following: “(e) (1) An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a provisional application filed under section 111(b) of this title, 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) of this title, if the application for patent filed under section 111(a) or section 363 of this title 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. “(2) A provisional application filed under section 111(b) of this title 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) of this title has been paid and the provisional application was pending on the filing date of the application for patent under section 111(a) or section 363 of this title.”.

6. 1999

   District of Columbia Appropriations Act, 2000

   Pub. L. 106–113 § 1000(a)(9)(tIV)(s4802)(1) · 113 Stat. 1501

   1. Amended · 35 U.S.C. § 119(a)

      Pub. L. 106–113, § 1000(a)(9) [title IV, § 4802(1)], as amended by Pub. L. 107–273

   2. Inserted · 35 U.S.C. § 119(a)

      Pub. L. 106–113, § 1000(a)(9) [title IV, § 4802(1)], as inserted “or in a WTO member country,” after “or to citizens of the United States,”

   Source evidence

   Code amendment note
   Subsec. (a). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4802(1)], as amended by Pub. L. 107–273, inserted “or in a WTO member country,” after “or to citizens of the United States,”.

7. 1999

   District of Columbia Appropriations Act, 2000

   Pub. L. 106–113 § 1000(a)(9)(tIV)(s4503)(a) · 113 Stat. 1501

   Amended · 35 U.S.C. § 119(b)

   Pub. L. 106–113, § 1000(a)(9) [title IV, § 4503(a)], amended subsec. (b) generally. Prior to amendment, subsec. (b) read as follows: “No application for patent shall be entitled to this right of priority unless a claim therefor and a certified copy of the original foreign application, specification and drawings upon which it is based are filed in the Patent and Trademark Office before the patent is granted, or at such time during the pendency of the application as required by the Commissioner not earlier than six months after the filing of the application in this country. Such certification shall be made by the patent office of the foreign country in which filed and show the date of the application and of the filing of the specification and other papers. The Commissioner may require a translation of the papers filed if not in the English language and such other information as he deems necessary.”

   Source evidence

   Code amendment note
   Subsec. (b). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4503(a)], amended subsec. (b) generally. Prior to amendment, subsec. (b) read as follows: “No application for patent shall be entitled to this right of priority unless a claim therefor and a certified copy of the original foreign application, specification and drawings upon which it is based are filed in the Patent and Trademark Office before the patent is granted, or at such time during the pendency of the application as required by the Commissioner not earlier than six months after the filing of the application in this country. Such certification shall be made by the patent office of the foreign country in which filed and show the date of the application and of the filing of the specification and other papers. The Commissioner may require a translation of the papers filed if not in the English language and such other information as he deems necessary.”

8. 1999

   District of Columbia Appropriations Act, 2000

   Pub. L. 106–113 § 1000(a)(9)(tIV)(s4503)(b)(2) · 113 Stat. 1501

   Inserted · 35 U.S.C. § 119(e)(1)

   Pub. L. 106–113, § 1000(a)(9) [title IV, § 4503(b)(2)], inserted at end: “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 a surcharge, to accept an unintentionally delayed submission of an amendment under this subsection during the pendency of the application.”

   Source evidence

   Code amendment note
   Subsec. (e)(1). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4503(b)(2)], inserted at end: “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 a surcharge, to accept an unintentionally delayed submission of an amendment under this subsection during the pendency of the application.”

9. 1999

   District of Columbia Appropriations Act, 2000

   Pub. L. 106–113 § 1000(a)(9)(tIV)(s4801)(c) · 113 Stat. 1501

   Struck · 35 U.S.C. § 119(e)(2)

   Pub. L. 106–113, § 1000(a)(9) [title IV, § 4801(c)], struck out before period at end “and the provisional application was pending on the filing date of the application for patent under section 111(a) or section 363 of this title”

   Source evidence

   Code amendment note
   Subsec. (e)(2). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4801(c)], struck out before period at end “and the provisional application was pending on the filing date of the application for patent under section 111(a) or section 363 of this title”.

10. 1999

    District of Columbia Appropriations Act, 2000

    Pub. L. 106–113 § 1000(a)(9)(tIV)(s4801)(b) · 113 Stat. 1501

    Added · 35 U.S.C. § 119(e)(3)

    Pub. L. 106–113, § 1000(a)(9) [title IV, § 4801(b)], added par. (3)

    Source evidence

    Code amendment note
    Subsec. (e)(3). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4801(b)], added par. (3).

11. 1999

    District of Columbia Appropriations Act, 2000

    Pub. L. 106–113 § 1000(a)(9)(tIV)(s4802)(2) · 113 Stat. 1501

    Added · 35 U.S.C. § 119(f); 35 U.S.C. § 119(g)

    Pub. L. 106–113, § 1000(a)(9) [title IV, § 4802(2)], added subsecs. (f) and (g)

    Source evidence

    Code amendment note
    Subsecs. (f), (g). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4802(2)], added subsecs. (f) and (g).

12. 2002

    Intellectual Property and High Technology Technical Amendments Act of 2002

    Pub. L. 107–273 div. C title III § 13206(b)(2) · 116 Stat. 1758

    Changed · 35 U.S.C. § 119(a)

    Pub. L. 107–273 made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4802(1)]. See 1999 Amendment note below

    Source evidence

    Code amendment note
    Subsec. (a). Pub. L. 107–273 made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4802(1)]. See 1999 Amendment note below.

    Enacted provision · exact public law section
    (2) Section 4802(1) of that Act is amended by inserting “to” before “citizens”.

13. 2011

    Pub. L. 112–29 § 3(g)(6) · 125 Stat. 288

    Struck · 35 U.S.C. § 119(a)

    Pub. L. 112–29, § 3(g)(6), struck out “; 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” before the period at the end

    Source evidence

    Code amendment note
    Subsec. (a). Pub. L. 112–29, § 3(g)(6), struck out “; 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” before the period at the end.

    Enacted provision · exact public law section
    (6) Limit on right of priority.— Section 119(a) of title 35, United States Code, is amended by striking “; but no patent shall be granted” and all that follows through “one year prior to such filing”.

14. 2011

    Pub. L. 112–29 § 20(j) · 125 Stat. 288

    Struck · 35 U.S.C. § 119(e)(1)

    Pub. L. 112–29, § 20(j), struck out “of this title” after “363” in two places and after “111(b)” in two places

    Source evidence

    Code amendment note
    Subsec. (e)(1). Pub. L. 112–29, § 20(j), struck out “of this title” after “363” in two places and after “111(b)” in two places.

    Enacted provision · exact public law section
    (j) Unnecessary References.— (1) In general.— Title 35, 35 USC 2, 12, 32, 41, 103, 104, 111, 119–123, 132, 135, 143, 145, 146, 154, 157, 162, 172, 182–186, 207, 210, 257, 267. United States Code, is amended by striking “of this title” each place that term appears. (2) Exception.— The amendment made by paragraph (1) shall not apply to the use of such term in the following sections of title 35, United States Code: (A) Section 1(c). (B) Section 101. (C) Subsections (a) and (b) of section 105. (D) The first instance of the use of such term in section 111(b)(8). (E) Section 161. (F) Section 164. (G) Section 171. (H) Section 251(c), as so designated by this section. (I) Section 261. (J) Subsections (g) and (h) of section 271. (K) Section 287(b)(1). (L) Section 289. (M) The first instance of the use of such term in section 375(a).

15. 2011

    Pub. L. 112–29 § 15(b) · 125 Stat. 288

    Substituted · 35 U.S.C. § 119(e)(1)

    Pub. L. 112–29, § 15(b), substituted “section 112(a) (other than the requirement to disclose the best mode)” for “the first paragraph of section 112 of this title”

    Target inherited from the preceding amendment note.

    Source evidence

    Code amendment note
    Pub. L. 112–29, § 15(b), substituted “section 112(a) (other than the requirement to disclose the best mode)” for “the first paragraph of section 112 of this title”.

    Enacted provision · exact public law section
    (b) Conforming Amendment.— Sections 119(e)(1) and 120 of title 35, United States Code, are each amended by striking “the first paragraph of section 112 of this title” and inserting “section 112(a) (other than the requirement to disclose the best mode)”.

16. 2011

    Pub. L. 112–29 § 20(j) · 125 Stat. 288

    Struck · 35 U.S.C. § 119(e)(2)

    Pub. L. 112–29, § 20(j), struck out “of this title” after “111(b)” and after “41(a)(1)”

    Source evidence

    Code amendment note
    Subsec. (e)(2). Pub. L. 112–29, § 20(j), struck out “of this title” after “111(b)” and after “41(a)(1)”.

    Enacted provision · exact public law section
    (j) Unnecessary References.— (1) In general.— Title 35, 35 USC 2, 12, 32, 41, 103, 104, 111, 119–123, 132, 135, 143, 145, 146, 154, 157, 162, 172, 182–186, 207, 210, 257, 267. United States Code, is amended by striking “of this title” each place that term appears. (2) Exception.— The amendment made by paragraph (1) shall not apply to the use of such term in the following sections of title 35, United States Code: (A) Section 1(c). (B) Section 101. (C) Subsections (a) and (b) of section 105. (D) The first instance of the use of such term in section 111(b)(8). (E) Section 161. (F) Section 164. (G) Section 171. (H) Section 251(c), as so designated by this section. (I) Section 261. (J) Subsections (g) and (h) of section 271. (K) Section 287(b)(1). (L) Section 289. (M) The first instance of the use of such term in section 375(a).

17. 2011

    Pub. L. 112–29 § 20(j) · 125 Stat. 288

    Struck · 35 U.S.C. § 119(g)(1)

    Pub. L. 112–29, § 20(j), struck out “of this title” after “104(b)(2)”

    Source evidence

    Code amendment note
    Subsec. (g)(1). Pub. L. 112–29, § 20(j), struck out “of this title” after “104(b)(2)”.

    Enacted provision · exact public law section
    (j) Unnecessary References.— (1) In general.— Title 35, 35 USC 2, 12, 32, 41, 103, 104, 111, 119–123, 132, 135, 143, 145, 146, 154, 157, 162, 172, 182–186, 207, 210, 257, 267. United States Code, is amended by striking “of this title” each place that term appears. (2) Exception.— The amendment made by paragraph (1) shall not apply to the use of such term in the following sections of title 35, United States Code: (A) Section 1(c). (B) Section 101. (C) Subsections (a) and (b) of section 105. (D) The first instance of the use of such term in section 111(b)(8). (E) Section 161. (F) Section 164. (G) Section 171. (H) Section 251(c), as so designated by this section. (I) Section 261. (J) Subsections (g) and (h) of section 271. (K) Section 287(b)(1). (L) Section 289. (M) The first instance of the use of such term in section 375(a).

18. 2012

    Patent Law Treaties Implementation Act of 2012

    Pub. L. 112–211 § 201(c)(1)(A) · 126 Stat. 1527

    1. Substituted · 35 U.S.C. § 119(a)

       Pub. L. 112–211, § 201(c)(1)(A), substituted “12” for “twelve”

    2. Inserted · 35 U.S.C. § 119(a)

       Pub. L. 112–211, § 201(c)(1)(A), inserted at end “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.”

    Source evidence

    Code amendment note
    Subsec. (a). Pub. L. 112–211, § 201(c)(1)(A), substituted “12” for “twelve” and inserted at end “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.”

    Enacted provision · exact public law section
    (A) in subsection (a)— (i) by striking “twelve” and inserting “12”; and (ii) by adding at the end the following: “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.”; and

    Effective date note
    Amendment by Pub. L. 112–211 effective on the date that is 1 year after Dec. 18, 2012, applicable to patents issued before, on, or after that effective date and patent applications pending on or filed after that effective date, and not effective with respect to patents in litigation commenced before that effective date, see section 203 of Pub. L. 112–211, set out as an Effective Date note under section 27 of this title.

19. 2012

    Patent Law Treaties Implementation Act of 2012

    Pub. L. 112–211 § 202(b)(2) · 126 Stat. 1527

    Substituted · 35 U.S.C. § 119(b)(2)

    Pub. L. 112–211, § 202(b)(2), substituted “including the requirement for payment of the fee specified in section 41(a)(7)” for “including the payment of a surcharge”

    Source evidence

    Code amendment note
    Subsec. (b)(2). Pub. L. 112–211, § 202(b)(2), substituted “including the requirement for payment of the fee specified in section 41(a)(7)” for “including the payment of a surcharge”.

    Enacted provision · exact public law section
    (2) in section 119(b)(2), in the second sentence, by striking “including the payment of a surcharge” and inserting “including the requirement for payment of the fee specified in section 41(a)(7)”;

    Effective date note
    Amendment by Pub. L. 112–211 effective on the date that is 1 year after Dec. 18, 2012, applicable to patents issued before, on, or after that effective date and patent applications pending on or filed after that effective date, and not effective with respect to patents in litigation commenced before that effective date, see section 203 of Pub. L. 112–211, set out as an Effective Date note under section 27 of this title.

20. 2012

    Patent Law Treaties Implementation Act of 2012

    Pub. L. 112–211 § 201(c)(1)(B)(i) · 126 Stat. 1527

    1. Inserted · 35 U.S.C. § 119(e)(1)

       Pub. L. 112–211, § 201(c)(1)(B)(i), inserted “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.” after “reference to the provisional application.” and, in last sentence

    2. Substituted · 35 U.S.C. § 119(e)(1)

       Pub. L. 112–211, § 201(c)(1)(B)(i), substituted “including the payment of the fee specified in section 41(a)(7)” for “including the payment of a surcharge”

    3. Struck · 35 U.S.C. § 119(e)(1)

       Pub. L. 112–211, § 201(c)(1)(B)(i), struck out “during the pendency of the application” before period at end

    Source evidence

    Code amendment note
    Subsec. (e)(1). Pub. L. 112–211, § 201(c)(1)(B)(i), inserted “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.” after “reference to the provisional application.” and, in last sentence, substituted “including the payment of the fee specified in section 41(a)(7)” for “including the payment of a surcharge” and struck out “during the pendency of the application” before period at end.

    Enacted provision · exact public law section
    (i) in paragraph (1)— (I) by inserting after the first sentence the following: “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.”; and (II) in the last sentence— (aa) by striking “including the payment of a surcharge” and inserting “including the payment of the fee specified in section 41(a)(7)”; and (bb) by striking “during the pendency of the application”; and

    Effective date note
    Amendment by Pub. L. 112–211 effective on the date that is 1 year after Dec. 18, 2012, applicable to patents issued before, on, or after that effective date and patent applications pending on or filed after that effective date, and not effective with respect to patents in litigation commenced before that effective date, see section 203 of Pub. L. 112–211, set out as an Effective Date note under section 27 of this title.

21. 2012

    Patent Law Treaties Implementation Act of 2012

    Pub. L. 112–211 § 201(c)(1)(B)(ii) · 126 Stat. 1527

    Inserted · 35 U.S.C. § 119(e)(3)

    Pub. L. 112–211, § 201(c)(1)(B)(ii), inserted at end “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.”

    Source evidence

    Code amendment note
    Subsec. (e)(3). Pub. L. 112–211, § 201(c)(1)(B)(ii), inserted at end “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.”

    Enacted provision · exact public law section
    (ii) in paragraph (3), by adding at the end the following: “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.”; and

    Effective date note
    Amendment by Pub. L. 112–211 effective on the date that is 1 year after Dec. 18, 2012, applicable to patents issued before, on, or after that effective date and patent applications pending on or filed after that effective date, and not effective with respect to patents in litigation commenced before that effective date, see section 203 of Pub. L. 112–211, set out as an Effective Date note under section 27 of this title.

17 of 27 references resolved to an enrolled provision · 10 partial