Can a provisional application be used as a prior-filed application for benefit claims?

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.

Yes, a provisional application can be used as a prior-filed application for benefit claims in certain circumstances. According to MPEP 211.01:

‘The prior application may be a provisional application under 35 U.S.C. 111(b) or a nonprovisional application under 35 U.S.C. 111(a).’

However, there are specific requirements and limitations when claiming the benefit of a provisional application:

• The nonprovisional application must be filed within 12 months of the provisional application’s filing date (or 14 months with a grantable petition under 37 CFR 1.78(b)).
• The provisional application must adequately support and enable the subject matter of the claims in the nonprovisional application.
• The specific reference to the provisional application must be included in an application data sheet (ADS) or the first sentence of the specification.

It’s important to note that while a nonprovisional application can claim the benefit of a provisional application, a provisional application cannot claim the benefit of or priority to any other application.