MPEP § 211.01 — Requirements Related to the Prior-Filed Application (Annotated Rules)
§211.01 Requirements Related to the Prior-Filed Application
This page consolidates and annotates all enforceable requirements under MPEP § 211.01, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Requirements Related to the Prior-Filed Application
This section addresses Requirements Related to the Prior-Filed Application. Primary authority: 35 U.S.C. 111(a), 35 U.S.C. 119(e), and 35 U.S.C. 120. Contains: 4 requirements, 1 guidance statement, 1 permission, and 1 other statement.
Key Rules
Claiming Benefit of Provisional
If the prior-filed application is a provisional application, the provisional application must be entitled to a filing date as set forth in 37 CFR 1.53(c) and the basic filing fee of the provisional application must have been paid within the time period set in 37 CFR 1.53(g). See 37 CFR 1.78(a)(2).
If a provisional application is abandoned due to, at least, a failure to pay the basic filing fee, applicant may still claim benefit to the prior-filed application by filing a petition to revive under 37 CFR 1.137 in the provisional application to pay the basic filing fee. If such a petition to revive is grantable, the decision granting the petition should indicate that the basic filing fee is being accepted as having been paid within the time period set forth in 37 CFR 1.53(g) for purposes of compliance with 37 CFR 1.78(a)(2) in any subsequent nonprovisional application.
If a provisional application is abandoned due to, at least, a failure to pay the basic filing fee, applicant may still claim benefit to the prior-filed application by filing a petition to revive under 37 CFR 1.137 in the provisional application to pay the basic filing fee. If such a petition to revive is grantable, the decision granting the petition should indicate that the basic filing fee is being accepted as having been paid within the time period set forth in 37 CFR 1.53(g) for purposes of compliance with 37 CFR 1.78(a)(2) in any subsequent nonprovisional application.
Designation of United States
If the prior-filed application is a nonprovisional application filed under 35 U.S.C. 111(a), the application must be entitled to a filing date as set forth in 37 CFR 1.53(b) or (d), and the basic filing fee as set forth in 37 CFR 1.16 must have been paid within the pendency of the application. See 37 CFR 1.78(d)(1)(iii). If the prior-filed application is an international application designating the United States, the prior-filed application must be entitled to a filing date in accordance with PCT Article 11. See 37 CFR 1.78(d)(1)(i). If the prior-filed application is an international design application designating the United States, the prior-filed application must be entitled to a filing date in accordance with 37 CFR 1.1023. See 37 CFR 1.78(d)(1)(ii).
If the prior-filed application is a nonprovisional application filed under 35 U.S.C. 111(a), the application must be entitled to a filing date as set forth in 37 CFR 1.53(b) or (d), and the basic filing fee as set forth in 37 CFR 1.16 must have been paid within the pendency of the application. See 37 CFR 1.78(d)(1)(iii). If the prior-filed application is an international application designating the United States, the prior-filed application must be entitled to a filing date in accordance with PCT Article 11. See 37 CFR 1.78(d)(1)(i). If the prior-filed application is an international design application designating the United States, the prior-filed application must be entitled to a filing date in accordance with 37 CFR 1.1023. See 37 CFR 1.78(d)(1)(ii).
Provisional Application Benefit
The statute requires that applications claiming benefit of the earlier filing date under 35 U.S.C. 119(e) or 120 name the inventor or at least one joint inventor named in the previously filed application or provisional application. See MPEP §§ 201.06, 602.01(c) et seq. and 1412.04 for correction of inventorship. If upon filing of the application and the filing of a relied upon prior-filed application there is an overlap in appropriately named inventorship, an application otherwise properly identified as a continuation, continuation-in-part or divisional application (and meeting all other requirements) can claim benefit of the prior-filed application's filing date pursuant to 35 U.S.C. 120 and 121. Note that to be entitled to the benefit of any prior-filed application(s), in addition to naming the inventor or at least one common joint inventor, the invention claimed in the later-filed application must be supported in the manner provided by the 35 U.S.C. 112(a), except for the best mode requirement. See MPEP § 211.05.
See MPEP § 211.01(a) for additional information and requirements specific to claiming the benefit of a provisional application.
Priority and Benefit Claims
The statute requires that applications claiming benefit of the earlier filing date under 35 U.S.C. 119(e) or 120 name the inventor or at least one joint inventor named in the previously filed application or provisional application. See MPEP §§ 201.06, 602.01(c) et seq. and 1412.04 for correction of inventorship. If upon filing of the application and the filing of a relied upon prior-filed application there is an overlap in appropriately named inventorship, an application otherwise properly identified as a continuation, continuation-in-part or divisional application (and meeting all other requirements) can claim benefit of the prior-filed application's filing date pursuant to 35 U.S.C. 120 and 121. Note that to be entitled to the benefit of any prior-filed application(s), in addition to naming the inventor or at least one common joint inventor, the invention claimed in the later-filed application must be supported in the manner provided by the 35 U.S.C. 112(a), except for the best mode requirement. See MPEP § 211.05.
See MPEP § 211.01(b) for additional information and requirements specific to claiming the benefit of an earlier-filed nonprovisional application.
International Design Application Fees
If the prior-filed application is a nonprovisional application filed under 35 U.S.C. 111(a), the application must be entitled to a filing date as set forth in 37 CFR 1.53(b) or (d), and the basic filing fee as set forth in 37 CFR 1.16 must have been paid within the pendency of the application. See 37 CFR 1.78(d)(1)(iii). If the prior-filed application is an international application designating the United States, the prior-filed application must be entitled to a filing date in accordance with PCT Article 11. See 37 CFR 1.78(d)(1)(i). If the prior-filed application is an international design application designating the United States, the prior-filed application must be entitled to a filing date in accordance with 37 CFR 1.1023. See 37 CFR 1.78(d)(1)(ii).
Petition to Suspend/Waive Rules (37 CFR 1.183)
A petition under 37 CFR 1.183 in order to claim benefit of such a provisional application is not necessary.
35 U.S.C. 112 – Disclosure Requirements
The statute requires that applications claiming benefit of the earlier filing date under 35 U.S.C. 119(e) or 120 name the inventor or at least one joint inventor named in the previously filed application or provisional application. See MPEP §§ 201.06, 602.01(c) et seq. and 1412.04 for correction of inventorship. If upon filing of the application and the filing of a relied upon prior-filed application there is an overlap in appropriately named inventorship, an application otherwise properly identified as a continuation, continuation-in-part or divisional application (and meeting all other requirements) can claim benefit of the prior-filed application's filing date pursuant to 35 U.S.C. 120 and 121. Note that to be entitled to the benefit of any prior-filed application(s), in addition to naming the inventor or at least one common joint inventor, the invention claimed in the later-filed application must be supported in the manner provided by the 35 U.S.C. 112(a), except for the best mode requirement. See MPEP § 211.05.
AIA Effective Dates
If a nonprovisional application filed on or after March 16, 2013, claims the benefit of the filing date of a provisional or nonprovisional application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect within a specified time period. See 37 CFR 1.78(a)(6) and (d)(6) and MPEP § 210, subsection III. Nonprovisional international design applications are excluded from the transition provisions of 37 CFR 1.78(a)(6) and (d)(6).
Filing, Search & Examination Fees
Form paragraph 2.40 may be used to notify applicant that the application is not entitled to the benefit of the prior-filed application because the prior-filed application was not entitled to a filing date and/or did not include the basic filing fee.
Examiner Form Paragraphs
Examiner form paragraphs are standard language that you might see in an Office Action or communication from the USPTO. Examiners have latitude to change the form paragraphs, but you will often see this exact language.
This application claims the benefit of prior-filed application No. [1] under 120 , 121 , 365(c) , or 386(c) or under 35 U.S.C. 119(e) . If the prior-filed application is an international application designating the United States, it must be entitled to a filing date in accordance with PCT Article 11 ; if the prior-filed application is an international design application designating the United States, it must be entitled to a filing date in accordance with 37 CFR 1.1023 ; and if the prior-filed application is a nonprovisional application under 35 U.S.C. 111(a) , the prior-filed application must be entitled to a filing date as set forth in 37 CFR 1.53(b) or 1.53(d) and include the basic filing fee set forth in 37 CFR 1.16 . See 37 CFR 1.78(d)(1) . If the prior-filed application is a provisional application, the prior-filed application must be entitled to a filing date as set forth in 37 CFR 1.53(c) and the basic filing fee must be paid within the time period set forth in 37 CFR 1.53(g) . See 37 CFR 1.78(a)(2) .
This application is not entitled to the benefit of the prior-filed application because the prior-filed application [2] . Applicant is required to delete the benefit claim to the prior-filed application from the Application Data Sheet (ADS) or, for applications filed before September 16, 2012, from the ADS or the first sentence(s) of the specification as appropriate.
- Filing Date Required for Nonprovisional Application
- Filing Date Must Be Entitled for International Application Designating US
- Filing Date Required for International Design Application Designating US
- Provisional Application Must Have Valid Filing Date and Paid Fee
- Petition to Revive Provisional Application After Abandonment Due to Missing Fee
- Petition to Revive Must Accept Basic Filing Fee Payment
- Inventors Must Be Named in Continuation Applications
- Inventorship Overlap Allows Benefit Claim
Citations
| Primary topic | Citation |
|---|---|
| Designation of United States International Design Application Fees | 35 U.S.C. § 111(a) |
| 35 U.S.C. 112 – Disclosure Requirements Priority and Benefit Claims Provisional Application Benefit | 35 U.S.C. § 112(a) |
| 35 U.S.C. 112 – Disclosure Requirements Priority and Benefit Claims Provisional Application Benefit | 35 U.S.C. § 119(e) |
| 35 U.S.C. 112 – Disclosure Requirements Priority and Benefit Claims Provisional Application Benefit | 35 U.S.C. § 120 |
| Designation of United States International Design Application Fees | 37 CFR § 1.1023 |
| Claiming Benefit of Provisional | 37 CFR § 1.137 |
| Designation of United States International Design Application Fees | 37 CFR § 1.16 |
| Petition to Suspend/Waive Rules (37 CFR 1.183) | 37 CFR § 1.183 |
| Designation of United States International Design Application Fees | 37 CFR § 1.53(b) |
| Claiming Benefit of Provisional | 37 CFR § 1.53(c) |
| Claiming Benefit of Provisional | 37 CFR § 1.53(g) |
| Claiming Benefit of Provisional | 37 CFR § 1.78(a)(2) |
| AIA Effective Dates | 37 CFR § 1.78(a)(6) |
| Designation of United States International Design Application Fees | 37 CFR § 1.78(d)(1)(i) |
| Designation of United States International Design Application Fees | 37 CFR § 1.78(d)(1)(ii) |
| Designation of United States International Design Application Fees | 37 CFR § 1.78(d)(1)(iii) |
| 35 U.S.C. 112 – Disclosure Requirements Priority and Benefit Claims Provisional Application Benefit | MPEP § 201.06 |
| AIA Effective Dates | MPEP § 210 |
| Provisional Application Benefit | MPEP § 211.01(a) |
| Priority and Benefit Claims | MPEP § 211.01(b) |
| 35 U.S.C. 112 – Disclosure Requirements Priority and Benefit Claims Provisional Application Benefit | MPEP § 211.05 |
| Filing, Search & Examination Fees | Form Paragraph § 2.40 |
| Designation of United States International Design Application Fees | PCT Article 11 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 211.01 — Requirements Related to the Prior-Filed Application
Source: USPTO211.01 Requirements Related to the Prior-Filed Application [R-07.2022]
I. THE PRIOR-FILED APPLICATION MUST BE ENTITLED TO A FILING DATEIf the prior-filed application is a nonprovisional application filed under 35 U.S.C. 111(a), the application must be entitled to a filing date as set forth in 37 CFR 1.53(b) or (d), and the basic filing fee as set forth in 37 CFR 1.16 must have been paid within the pendency of the application. See 37 CFR 1.78(d)(1)(iii). If the prior-filed application is an international application designating the United States, the prior-filed application must be entitled to a filing date in accordance with PCT Article 11. See 37 CFR 1.78(d)(1)(i). If the prior-filed application is an international design application designating the United States, the prior-filed application must be entitled to a filing date in accordance with 37 CFR 1.1023. See 37 CFR 1.78(d)(1)(ii).
If the prior-filed application is a provisional application, the provisional application must be entitled to a filing date as set forth in 37 CFR 1.53(c) and the basic filing fee of the provisional application must have been paid within the time period set in 37 CFR 1.53(g). See 37 CFR 1.78(a)(2).
Form paragraph 2.40 may be used to notify applicant that the application is not entitled to the benefit of the prior-filed application because the prior-filed application was not entitled to a filing date and/or did not include the basic filing fee.
¶ 2.40 Prior-Filed Application Not Entitled to a Filing Date or Basic Filing Fee Was Not Paid
This application claims the benefit of prior-filed application No. [1] under 120, 121, 365(c), or 386(c) or under 35 U.S.C. 119(e). If the prior-filed application is an international application designating the United States, it must be entitled to a filing date in accordance with PCT Article 11; if the prior-filed application is an international design application designating the United States, it must be entitled to a filing date in accordance with 37 CFR 1.1023; and if the prior-filed application is a nonprovisional application under 35 U.S.C. 111(a), the prior-filed application must be entitled to a filing date as set forth in 37 CFR 1.53(b) or 1.53(d) and include the basic filing fee set forth in 37 CFR 1.16. See 37 CFR 1.78(d)(1). If the prior-filed application is a provisional application, the prior-filed application must be entitled to a filing date as set forth in 37 CFR 1.53(c) and the basic filing fee must be paid within the time period set forth in 37 CFR 1.53(g). See 37 CFR 1.78(a)(2).
This application is not entitled to the benefit of the prior-filed application because the prior-filed application [2]. Applicant is required to delete the benefit claim to the prior-filed application from the Application Data Sheet (ADS) or, for applications filed before September 16, 2012, from the ADS or the first sentence(s) of the specification as appropriate.
Examiner Note:
- 1. Use this form paragraph to notify applicant that the application is not entitled to the benefit of the prior-filed application because the prior-filed application was not entitled to a filing date and/or did not include the basic filing fee.
- 2. In bracket 1, insert the application number of the prior-filed application.
- 3. In bracket 2, insert “was not entitled to a filing date”; “did not include the basic filing fee”; or “was not entitled to a filing date and did not include the basic filing fee”.
If a provisional application is abandoned due to, at least, a failure to pay the basic filing fee, applicant may still claim benefit to the prior-filed application by filing a petition to revive under 37 CFR 1.137 in the provisional application to pay the basic filing fee. If such a petition to revive is grantable, the decision granting the petition should indicate that the basic filing fee is being accepted as having been paid within the time period set forth in 37 CFR 1.53(g) for purposes of compliance with 37 CFR 1.78(a)(2) in any subsequent nonprovisional application.
A petition under 37 CFR 1.183 in order to claim benefit of such a provisional application is not necessary.
II. SAME INVENTOR OR A COMMON JOINT INVENTORThe statute requires that applications claiming benefit of the earlier filing date under 35 U.S.C. 119(e) or 120 name the inventor or at least one joint inventor named in the previously filed application or provisional application. SeeMPEP §§ 201.06, 602.01(c)et seq. and 1412.04 for correction of inventorship. If upon filing of the application and the filing of a relied upon prior-filed application there is an overlap in appropriately named inventorship, an application otherwise properly identified as a continuation, continuation-in-part or divisional application (and meeting all other requirements) can claim benefit of the prior-filed application’s filing date pursuant to 35 U.S.C. 120 and 121. Note that to be entitled to the benefit of any prior-filed application(s), in addition to naming the inventor or at least one common joint inventor, the invention claimed in the later-filed application must be supported in the manner provided by the 35 U.S.C. 112(a), except for the best mode requirement. See MPEP § 211.05.
III. TRANSITION APPLICATION STATEMENTIf a nonprovisional application filed on or after March 16, 2013, claims the benefit of the filing date of a provisional or nonprovisional application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect within a specified time period. See 37 CFR 1.78(a)(6) and (d)(6) and MPEP § 210, subsection III. Nonprovisional international design applications are excluded from the transition provisions of 37 CFR 1.78(a)(6) and (d)(6).
IV. ADDITIONAL REQUIREMENTSSee MPEP § 211.01(a) for additional information and requirements specific to claiming the benefit of a provisional application.
See MPEP § 211.01(b) for additional information and requirements specific to claiming the benefit of an earlier-filed nonprovisional application.