Question 1

Can a design patent application claim benefit from a PCT application under 35 U.S.C. 120?

Accepted Answer

Yes, a design patent application can claim benefit from a PCT application under 35 U.S.C. 120, provided certain conditions are met:

The PCT application must have designated the United States.
The design must be fully disclosed in the PCT application in compliance with 35 U.S.C. 112(a).
All other requirements for a proper benefit claim under 35 U.S.C. 120 must be satisfied.

The MPEP explicitly states: "In addition, a design application may claim benefit from an earlier filed PCT application under 35 U.S.C. 120 if the U.S. was designated in the PCT application."

It's important to note that while a design application can claim benefit from a PCT application, it cannot claim benefit from a provisional application. The MPEP clarifies: "It should be noted that where a design patent application claims benefit under 35 U.S.C. 120 to an intermediate nonprovisional utility patent application that directly claims the benefit of a provisional application, the design patent application cannot claim the benefit of the filing date of the provisional application. This is because a design application may not claim the benefit of a provisional application. See 35 U.S.C. 172."

To learn more:

Question 2

Can a design patent application claim benefit from a PCT application under 35 U.S.C. 120?

Accepted Answer

Yes, a design patent application can claim benefit from a PCT application under 35 U.S.C. 120, provided certain conditions are met:

The PCT application must have designated the United States.
The design must be fully disclosed in the PCT application in compliance with 35 U.S.C. 112(a).
All other requirements for a proper benefit claim under 35 U.S.C. 120 must be satisfied.

The MPEP explicitly states: "In addition, a design application may claim benefit from an earlier filed PCT application under 35 U.S.C. 120 if the U.S. was designated in the PCT application."

It's important to note that while a design application can claim benefit from a PCT application, it cannot claim benefit from a provisional application. The MPEP clarifies: "It should be noted that where a design patent application claims benefit under 35 U.S.C. 120 to an intermediate nonprovisional utility patent application that directly claims the benefit of a provisional application, the design patent application cannot claim the benefit of the filing date of the provisional application. This is because a design application may not claim the benefit of a provisional application. See 35 U.S.C. 172."

To learn more:

Can a design patent application claim benefit from a PCT application under 35 U.S.C. 120?

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