Form PTO/SB/459 Petition to Restore the Right of Priority under 37 CFR 1

Doc Code: PET.OP
Document Description: Petition for Review by the Office of Petitions
PTO/SB/459 (09-22)
Approved for use through XX/XX/XXXX. OMB 0651-0073
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.

PETITION TO RESTORE THE BENEFIT OF A PROVISIONAL APPLICATION (37 CFR 1.78(b)) OR
TO RESTORE THE PRIORITY TO A FOREIGN APPLICATION (37 CFR 1.55(c))
Page 1 of 3
First named inventor: ________________________________________________________________________________________________
Application No.: _______________________________________

Art Unit: ______________________________________________

Filed: _________________________________________________

Examiner: _____________________________________________

Title:

Attention: Office of Petitions
Mail Stop Petition
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
FAX 571-273-8300

NOTE:

If information or assistance is needed in completing this form,
please contact the Office of Petitions at 571-272-3282.

APPLICANT HEREBY PETITIONS TO RESTORE THE RIGHT TO CLAIM BENEFIT TO A PRIOR PROVISIONAL APPLICATION UNDER 37 CFR 1.78(b)
OR TO RESTORE THE RIGHT OF PRIORITY TO A PRIOR FOREIGN APPLICATION UNDER 37 CFR 1.55(c).
NOTE: For a petition under 37 CFR 1.78(b), the subsequent application must have been filed within two months from the
expiration of the twelve-month period set forth in 37 CFR 1.78(a)(1)(i). For a petition under 37 CFR 1.55(c), the subsequent
application must have been filed within two months from the expiration of the twelve-month period (six-month period in the
case of a design application) set forth in 37 CFR 1.55(b)(1).
NOTE: A grantable petition requires the following items:
(1) the reference required by 35 U.S.C. 119(e) to the prior-filed provisional application in an application data sheet (ADS) or the
priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) in an ADS identifying the foreign
application to which priority is claimed by the application number, country (or intellectual property authority), and the
filing date, unless previously submitted;
(2) the petition fee set forth in 37 CFR 1.17(m); and
(3) a statement that the delay in filing the subsequent application within the period set forth in 37 CFR 1.78(a)(1)(i) or 37 CFR
1.55(b)(1) was unintentional. The Director may require additional information where there is a question whether the delay
was unintentional.
1. The required reference or priority claim:
is provided in an ADS included herewith.
has been previously submitted.
Reminders:
•
•
•

Any ADS which corrects or updates the information of record must comply with 37 CFR 1.76(c)(2).
Restoration of benefit to a provisional application does not affect the requirement to include the reference required under
37 CFR 1.78(a)(3) within the time period provided by 37 CFR 1.78(a)(4). A separate petition under 37 CFR 1.78(c) and petition
fee will be required if the reference is made after the expiration of the time period provided by 37 CFR 1.78(a)(4).
Restoration of priority to a foreign application does not affect the requirement to include the claim within the time period
provided by 37 CFR 1.55(d). A separate petition under 37 CFR 1.55(e) and petition fee will be required if the priority claim is
made after the expiration of the time period provided by 37 CFR 1.55(d).

A Federal agency may not conduct or sponsor, and a person is not required to respond to, nor shall a person be subject to a penalty for failure to comply with an
information collection subject to the requirements of the Paperwork Reduction Act of 1995, unless the information collection has a currently valid OMB Control
Number. The OMB Control Number for this information collection is 0651-0073. Public burden for this form is estimated to average 1 hour per response, including
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collection. Send comments regarding this burden estimate or any other aspect of this information collection, including suggestions for reducing this burden to the
Chief Administrative Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450 or email [email protected]. DO
NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.

PTO/SB/459 (09-22)
Approved for use through XX/XX/XXXX. OMB 0651-0073
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.

PETITION TO RESTORE THE BENEFIT OF A PROVISIONAL APPLICATION (37 CFR 1.78(b)) OR
TO RESTORE THE PRIORITY TO A FOREIGN APPLICATION (37 CFR 1.55(c))
Page 2 of 3

2. Petition fee (37 CFR 1.17(m)):
Other than a small or micro entity (undiscounted) fee $ __________ (Fee Code 1454).
Small entity fee $ __________ (Fee Code 2454). Applicant asserts small entity status. See 37 CFR 1.27.
Micro entity fee $ __________ (Fee Code 3454). Applicant has established or is establishing micro entity status. See 37 CFR 1.29.
Form PTO/SB/15A or B or equivalent must either be enclosed or have been submitted previously.
3. Statement: The delay in filing the subsequent nonprovisional application or international application designating the United States
within the twelve-month period set forth in 37 CFR 1.78(a)(1)(i) was unintentional or the delay in filing the subsequent application within
the period set forth in 37 CFR 1.55(b)(1) was unintentional.
WARNING:
Petitioner/applicant is cautioned to avoid submitting personal information in documents filed in a patent application that may contribute to
identity theft. Personal information such as social security numbers, bank account numbers, or credit card numbers (other than a check or
credit card authorization form PTO-2038 submitted for payment purposes) is never required by the USPTO to support a petition or an
application. If this type of personal information is included in documents submitted to the USPTO, petitioners/applicants should consider
redacting such personal information from the documents before submitting them to the USPTO. Petitioner/applicant is advised that the
record of a patent application is available to the public after publication of the application (unless a non-publication request in compliance
with 37 CFR 1.213(a) is made in the application) or issuance of a patent. Furthermore, the record from an abandoned application may also
be available to the public if the application is referenced in a published application or an issued patent (see 37 CFR 1.14). Checks and credit
card authorization forms PTO-2038 submitted for payment purposes are not retained in the application file and therefore are not publicly
available.
__________________________________________________
Signature*

_______________________________________
Date

__________________________________________________
Typed or Printed Name

_______________________________________
Registration Number, if applicable

__________________________________________________
Address

_______________________________________
Telephone Number

__________________________________________________
Address
* This petition must be signed in accordance with 37 CFR 1.33. Please see 37 CFR 1.4(d) for the signature requirements. Submit multiple
forms if more than one signature is required.
Enclosures:
Application Data Sheet (see instructions starting on page 3)
Fee (along with supporting documentation, if required)
Other: _______________________________________________________________________________________________________
CERTIFICATE OF MAILING OR TRANSMISSION [37 CFR 1.8(a)]
I hereby certify that this correspondence is being:
Deposited with the United States Postal Service on the date shown below with sufficient postage as first class mail in an envelope
addressed to: Mail Stop Petition, Commissioner for Patents, P. O. Box 1450, Alexandria, VA 22313-1450.
Transmitted by USPTO’s patent electronic filing systems or by facsimile on the date shown below to the United States Patent and
Trademark Office at 571-273-8300.
____________________________
Date

____________________________________________________________
Signature
_____________________________________________________________
Typed or printed name of person signing certificate

Instructions for Petition to Restore the Benefit of a Provisional Application (37 CFR 1.78(b))
or to Restore the Priority to a Foreign Application
(Not to be Submitted to the USPTO)
Note: This form is for use in restoring the right to claim benefit to a prior provisional application or in
restoring the right of priority to a prior foreign application only.
1. The reference or priority claim to the prior-filed application in an application data sheet (ADS): Any
ADS filed after the filing of the application is considered a corrected (or updated) ADS even if an ADS was
not previously submitted. A corrected ADS must identify the information that is being changed with
underlining for insertions and strike-through or brackets for text removed. In general, the identification of
the information being changed should be made relative to the most recent filing receipt. For example,
where the most recent filing receipt for the application shows no benefit claim, the entire benefit claim
must be shown with underlining in the corrected ADS. In addition, if the ADS identified an incorrect
provisional application number and the most recent filing receipt included the incorrect provisional
application number, the corrected ADS should identify the incorrect provisional application number being
deleted with strike-through or brackets, and should identify the correct provisional application number
being added with underlining. For more information regarding a corrected ADS in an application filed on or
after September 16, 2012, see MPEP 601.05(a), subsection II.
A corrected ADS may include all of the section headings listed in 37 CFR 1.76(b) with all appropriate data
for each heading or only those sections (including the section headings) containing changed or updated
information. See 37 CFR 1.76(c)(2). A corrected ADS must identify the application by application number
and be properly signed.
Use of the corrected Web-based ADS is recommended for registered users of EFS-Web or Patent Center
because it will pre-populate with information of record; applicants can then type in the desired changes,
and the system will create a PDF version with the appropriate strike-through and underlining. For more
information, see the “Quick Start Guide for Corrected Web-based Application Data Sheet (Corrected Web
ADS)” available at https://www.uspto.gov/patents-application-process/applying-online/efs-web-guidanceand-resources.
Applicants may also use Form PTO/AIA/14 which may be printed and marked up to comply with 37 CFR
1.76(c).
Note: For applications filed prior to September 16, 2012, the reference to the prior provisional application
must be in an ADS (37 CFR 1.76(a)) and/or in the first sentence(s) of the specification following the title,
although the Office prefers the use of an ADS. For applications filed prior to September 16, 2012, the
foreign priority claim must be in the ADS (37 CFR 1.76(a)) or the oath or declaration under 37 CFR 1.63,
although the Office prefers the use of an ADS. For more information regarding a supplemental ADS in an
application filed before September 16, 2012, see MPEP 601.05(b), subsection II.
2. Petition fee: The petition fee is set forth in 37 CFR 1.17(m) and must be included with the petition.
Petitioner is advised to refer to the current fee schedule at https://www.uspto.gov/learning-andresources/fees-and-payment/uspto-fee-schedule.
3. Statement: 37 CFR 1.78(b) requires a statement that the delay in filing the subsequent nonprovisional
application or international application designating the United States within the twelve-month period set
forth in 37 CFR 1.78(a)(1)(i) was unintentional. 37 CFR 1.55(c) requires a statement that the delay in filing
the subsequent application within the period set forth in 37 CFR 1.55(b)(1) was unintentional. Both
statements have been included in this form.
Note: the Director may require additional information where there is a question whether the delay was
unintentional.
[Page 3 of 3]

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