How can priority claims be used to overcome a pre-AIA 35 U.S.C. 102(e) rejection?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Priority claims can be an effective way to overcome a pre-AIA 35 U.S.C. 102(e) rejection. This can be done through either foreign priority claims or domestic benefit claims.

For foreign priority claims, the MPEP states: “Submitting a claim to priority under 35 U.S.C. 119(a) – (d) within the time period set in 37 CFR 1.55” can overcome the rejection. This involves filing a corrected application data sheet and establishing that the prior foreign application satisfies the enablement and written description requirements.

For domestic benefit claims, the MPEP notes: “Submitting a benefit claim under 35 U.S.C. 119(e) or 120, within the time periods set in 37 CFR 1.78” can be used. This requires filing an application data sheet with a specific reference to a prior application and establishing that the prior application satisfies the enablement and written description requirements.

It’s crucial to note that “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).“