How does foreign priority affect benefit claims under 35 U.S.C. 120 in continuation-in-part (CIP) design applications?
Foreign priority can significantly affect benefit claims under 35 U.S.C. 120 in continuation-in-part (CIP) design applications, especially when the conditions of 35 U.S.C. 120 are not met:
- If the CIP application doesn’t meet the conditions of 35 U.S.C. 120 (e.g., insufficient disclosure), it’s not entitled to the benefit of the parent application’s filing date.
- In such cases, the foreign application claimed in the parent application may qualify as prior art under pre-AIA 35 U.S.C. 102(d)/172.
- To qualify as prior art, the foreign application must have been filed more than six months before the CIP filing date and matured into patent protection before the CIP filing date.
The MPEP provides guidance: “Where a continuation-in-part application claims benefit under 35 U.S.C. 120 of the filing date of an earlier application, and also claims priority under 35 U.S.C. 119(a) – (d) of a foreign application through the earlier application, and the conditions of 35 U.S.C. 120 are not met, e.g., insufficient disclosure under 35 U.S.C. 112, the continuation-in-part application is not entitled to the benefit of the filing date of the parent application.“
In such cases, examiners may use form paragraphs 15.74.01 and 15.75.fti to notify applicants and potentially reject claims based on the foreign application as prior art.
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