How can I establish priority to an earlier filing date to overcome a pre-AIA 35 U.S.C. 102(e) rejection?

To establish priority to an earlier filing date and overcome a pre-AIA 35 U.S.C. 102(e) rejection, you can take the following steps:

1. For foreign priority under 35 U.S.C. 119(a)-(d):
   • File a claim to priority within the time period set in 37 CFR 1.55.
   • For applications filed on or after September 16, 2012, file a corrected application data sheet under 37 CFR 1.76 identifying the prior foreign application.
   • Establish that the prior foreign application satisfies the enablement and written description requirements of 35 U.S.C. 112(a).
   • File a certified priority document and an English language translation if necessary.
2. For domestic benefit under 35 U.S.C. 119(e) or 120:
   • Submit a benefit claim within the time periods set in 37 CFR 1.78.
   • For applications filed on or after September 16, 2012, file an application data sheet under 37 CFR 1.76 containing a specific reference to the prior application.
   • Establish that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112(a).

As stated in the MPEP, “The filing date of a prior application cannot be used to antedate a reference if the application at issue is not entitled to claim the benefit of the prior application under 35 U.S.C. 119(e), 120, 121, or 365(c).” Therefore, ensure that your application meets all requirements for claiming priority or benefit.

To learn more:

• priority claim
• benefit claim
• foreign priority
• domestic benefit
• pre-AIA 35 U.S.C. 102(e) rejection