Can design patent applications claim the benefit of a provisional application?
No, design patent applications cannot directly claim the benefit of a provisional application. The MPEP clearly states:
“Design applications may not claim the benefit of a provisional application under 35 U.S.C. 119(e).”
This restriction is based on 35 U.S.C. 172. However, there is a potential indirect way to claim some benefit:
If 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 application cannot claim the benefit of the filing date of the provisional application.
This means that while a design application can’t directly benefit from a provisional application’s filing date, it may indirectly benefit from the disclosure in a nonprovisional utility application that claims priority to a provisional application.
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