To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or earlier-filed nonprovisional application or provisional application for which benefit is claimed); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement. See Transco Prods., Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994). Accordingly, the disclosure of the prior-filed application must provide adequate support and enablement for the claimed subject matter of the later-filed application in compliance with the requirements of 35 U.S.C. 112(a) except for the best mode requirement.

To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or earlier-filed nonprovisional application or provisional application for which benefit is claimed); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement. See Transco Prods., Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994). Accordingly, the disclosure of the prior-filed application must provide adequate support and enablement for the claimed subject matter of the later-filed application in compliance with the requirements of 35 U.S.C. 112(a) except for the best mode requirement.

To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or earlier-filed nonprovisional application or provisional application for which benefit is claimed); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement. See Transco Prods., Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994). Accordingly, the disclosure of the prior-filed application must provide adequate support and enablement for the claimed subject matter of the later-filed application in compliance with the requirements of 35 U.S.C. 112(a) except for the best mode requirement.

The disclosure of a continuation application must be the same as the disclosure of the prior-filed application; i.e., the continuation must not include anything which would constitute new matter if inserted in the original application. See MPEP § 201.07. The disclosure of a divisional application must be the same as the disclosure of the prior-filed application, or include at least that portion of the disclosure of the prior-filed application that is germane to the invention claimed in the divisional application. See MPEP § 201.06. The disclosure of a continuation or divisional application cannot include anything which would constitute new matter if inserted in the prior-filed application. A continuation-in-part application may include matter not disclosed in the prior-filed application. See MPEP § 201.08. Only the claims of the continuation-in-part application that are disclosed in the manner provided by 35 U.S.C. 112(a) in the prior-filed application are entitled to the benefit of the filing date of the prior-filed application. If there is a continuous chain of copending nonprovisional applications, each copending application must disclose the claimed invention of the later-filed application in the manner provided by 35 U.S.C. 112(a) in order for the later-filed application to be entitled to the benefit of the earliest filing date. See Regents of the University of Minnesota v. Gilead Scis., Inc., 61 F.4th 1350, 1358, 1360, 2023 USPQ2d 269 (Fed. Cir. 2023) (affirming the PTAB's decision in an inter partes review proceeding and holding that the patentee was not entitled to rely on the earlier filing dates of two nonprovisional applications and a provisional application because the prior-filed applications did not provide sufficient written description to support the invention claimed in the challenged patent).

The disclosure of a continuation application must be the same as the disclosure of the prior-filed application; i.e., the continuation must not include anything which would constitute new matter if inserted in the original application. See MPEP § 201.07. The disclosure of a divisional application must be the same as the disclosure of the prior-filed application, or include at least that portion of the disclosure of the prior-filed application that is germane to the invention claimed in the divisional application. See MPEP § 201.06. The disclosure of a continuation or divisional application cannot include anything which would constitute new matter if inserted in the prior-filed application. A continuation-in-part application may include matter not disclosed in the prior-filed application. See MPEP § 201.08. Only the claims of the continuation-in-part application that are disclosed in the manner provided by 35 U.S.C. 112(a) in the prior-filed application are entitled to the benefit of the filing date of the prior-filed application. If there is a continuous chain of copending nonprovisional applications, each copending application must disclose the claimed invention of the later-filed application in the manner provided by 35 U.S.C. 112(a) in order for the later-filed application to be entitled to the benefit of the earliest filing date. See Regents of the University of Minnesota v. Gilead Scis., Inc., 61 F.4th 1350, 1358, 1360, 2023 USPQ2d 269 (Fed. Cir. 2023) (affirming the PTAB's decision in an inter partes review proceeding and holding that the patentee was not entitled to rely on the earlier filing dates of two nonprovisional applications and a provisional application because the prior-filed applications did not provide sufficient written description to support the invention claimed in the challenged patent).

Where the prior application (a nonprovisional application) is found to be fatally defective because of insufficient disclosure to support allowable claims, a later-filed application filed as a “continuation-in-part” of the first application to supply the deficiency is not entitled to the benefit of the filing date of the first application. Hunt Co. v. Mallinckrodt Chemical Works, 177 F.2d 583, 587, 83 USPQ 277, 281 (2d Cir. 1949) and cases cited therein. Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application, such a claim is entitled only to the filing date of the continuation-in-part application. See, e.g., In re Chu, 66 F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995); Transco Products, Inc. v. Performance Contracting Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994); In re Van Lagenhoven, 458 F.2d 132, 136, 173 USPQ 426, 429 (CCPA 1972).

Where the prior application (a nonprovisional application) is found to be fatally defective because of insufficient disclosure to support allowable claims, a later-filed application filed as a “continuation-in-part” of the first application to supply the deficiency is not entitled to the benefit of the filing date of the first application. Hunt Co. v. Mallinckrodt Chemical Works, 177 F.2d 583, 587, 83 USPQ 277, 281 (2d Cir. 1949) and cases cited therein. Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application, such a claim is entitled only to the filing date of the continuation-in-part application. See, e.g., In re Chu, 66 F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995); Transco Products, Inc. v. Performance Contracting Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994); In re Van Lagenhoven, 458 F.2d 132, 136, 173 USPQ 426, 429 (CCPA 1972).

Where the prior application (a nonprovisional application) is found to be fatally defective because of insufficient disclosure to support allowable claims, a later-filed application filed as a “continuation-in-part” of the first application to supply the deficiency is not entitled to the benefit of the filing date of the first application. Hunt Co. v. Mallinckrodt Chemical Works, 177 F.2d 583, 587, 83 USPQ 277, 281 (2d Cir. 1949) and cases cited therein. Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application, such a claim is entitled only to the filing date of the continuation-in-part application. See, e.g., In re Chu, 66 F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995); Transco Products, Inc. v. Performance Contracting Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994); In re Van Lagenhoven, 458 F.2d 132, 136, 173 USPQ 426, 429 (CCPA 1972).

Where the prior application (a nonprovisional application) is found to be fatally defective because of insufficient disclosure to support allowable claims, a later-filed application filed as a “continuation-in-part” of the first application to supply the deficiency is not entitled to the benefit of the filing date of the first application. Hunt Co. v. Mallinckrodt Chemical Works, 177 F.2d 583, 587, 83 USPQ 277, 281 (2d Cir. 1949) and cases cited therein. Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application, such a claim is entitled only to the filing date of the continuation-in-part application. See, e.g., In re Chu, 66 F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995); Transco Products, Inc. v. Performance Contracting Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994); In re Van Lagenhoven, 458 F.2d 132, 136, 173 USPQ 426, 429 (CCPA 1972).

Under 35 U.S.C. 120, a claim in a U.S. application is entitled to the benefit of the filing date of an earlier filed U.S. application if the subject matter of the claim is disclosed in the manner provided by 35 U.S.C. 112(a) except for the best mode requirement, in the earlier filed application. See, e.g., Tronzo v. Biomet, Inc., 156 F.3d 1154, 47 USPQ2d 1829 (Fed. Cir. 1998); In re Scheiber, 587 F.2d 59, 199 USPQ 782 (CCPA 1978). A claim in a subsequently filed application that relies on a combination of prior applications may not be entitled to the benefit of an earlier filing date under 35 U.S.C. 120 since 35 U.S.C. 120 requires that the earlier filed application contain a disclosure which complies with 35 U.S.C. 112(a) except for the best mode requirement for each claim in the subsequently filed application. Studiengesellschaft Kohle m.b.H. v. Shell Oil Co., 112 F.3d 1561, 1564, 42 USPQ2d 1674, 1677 (Fed. Cir. 1997).

Under 35 U.S.C. 120, a claim in a U.S. application is entitled to the benefit of the filing date of an earlier filed U.S. application if the subject matter of the claim is disclosed in the manner provided by 35 U.S.C. 112(a) except for the best mode requirement, in the earlier filed application. See, e.g., Tronzo v. Biomet, Inc., 156 F.3d 1154, 47 USPQ2d 1829 (Fed. Cir. 1998); In re Scheiber, 587 F.2d 59, 199 USPQ 782 (CCPA 1978). A claim in a subsequently filed application that relies on a combination of prior applications may not be entitled to the benefit of an earlier filing date under 35 U.S.C. 120 since 35 U.S.C. 120 requires that the earlier filed application contain a disclosure which complies with 35 U.S.C. 112(a) except for the best mode requirement for each claim in the subsequently filed application. Studiengesellschaft Kohle m.b.H. v. Shell Oil Co., 112 F.3d 1561, 1564, 42 USPQ2d 1674, 1677 (Fed. Cir. 1997).

Under 35 U.S.C. 120, a claim in a U.S. application is entitled to the benefit of the filing date of an earlier filed U.S. application if the subject matter of the claim is disclosed in the manner provided by 35 U.S.C. 112(a) except for the best mode requirement, in the earlier filed application. See, e.g., Tronzo v. Biomet, Inc., 156 F.3d 1154, 47 USPQ2d 1829 (Fed. Cir. 1998); In re Scheiber, 587 F.2d 59, 199 USPQ 782 (CCPA 1978). A claim in a subsequently filed application that relies on a combination of prior applications may not be entitled to the benefit of an earlier filing date under 35 U.S.C. 120 since 35 U.S.C. 120 requires that the earlier filed application contain a disclosure which complies with 35 U.S.C. 112(a) except for the best mode requirement for each claim in the subsequently filed application. Studiengesellschaft Kohle m.b.H. v. Shell Oil Co., 112 F.3d 1561, 1564, 42 USPQ2d 1674, 1677 (Fed. Cir. 1997).

Under 35 U.S.C. 120, a claim in a U.S. application is entitled to the benefit of the filing date of an earlier filed U.S. application if the subject matter of the claim is disclosed in the manner provided by 35 U.S.C. 112(a) except for the best mode requirement, in the earlier filed application. See, e.g., Tronzo v. Biomet, Inc., 156 F.3d 1154, 47 USPQ2d 1829 (Fed. Cir. 1998); In re Scheiber, 587 F.2d 59, 199 USPQ 782 (CCPA 1978). A claim in a subsequently filed application that relies on a combination of prior applications may not be entitled to the benefit of an earlier filing date under 35 U.S.C. 120 since 35 U.S.C. 120 requires that the earlier filed application contain a disclosure which complies with 35 U.S.C. 112(a) except for the best mode requirement for each claim in the subsequently filed application. Studiengesellschaft Kohle m.b.H. v. Shell Oil Co., 112 F.3d 1561, 1564, 42 USPQ2d 1674, 1677 (Fed. Cir. 1997).

A claim in the later-filed application is not entitled to the benefit of the filing date of the prior-filed application if the disclosure of the prior-filed application does not enable one skilled in the art to “use” the claimed invention. See In re Hafner, 410 F.2d 1403, 1406, 161 USPQ 783, 786 (CCPA 1969) (“[T]o be entitled to the benefits provided by [35 U.S.C. 120], the invention disclosed in the “previously filed” application must be described therein in such a manner as to satisfy all the requirements of the first paragraph of [35 U.S.C.] 112, including that which requires the description to be sufficient to enable one skilled in the art to use the [invention].”).

A claim in the later-filed application is not entitled to the benefit of the filing date of the prior-filed application if the disclosure of the prior-filed application does not enable one skilled in the art to “use” the claimed invention. See In re Hafner, 410 F.2d 1403, 1406, 161 USPQ 783, 786 (CCPA 1969) (“[T]o be entitled to the benefits provided by [35 U.S.C. 120], the invention disclosed in the “previously filed” application must be described therein in such a manner as to satisfy all the requirements of the first paragraph of [35 U.S.C.] 112, including that which requires the description to be sufficient to enable one skilled in the art to use the [invention].”).

Under 35 U.S.C. 119(e), the written description and drawing(s) (if any) of the provisional application must adequately support and enable the subject matter claimed in the nonprovisional application that claims the benefit of the provisional application. In New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294, 63 USPQ2d 1843, 1846 (Fed. Cir. 2002), the court held that for a nonprovisional application to be afforded the benefit date of the provisional application, “the specification of the provisional must ‘contain a written description of the invention and the manner and process of making and using it, in such full, clear, concise, and exact terms,’ 35 U.S.C. 112¶1, to enable an ordinarily skilled artisan to practice the invention claimed in the nonprovisional application.”

Under 35 U.S.C. 119(e), the written description and drawing(s) (if any) of the provisional application must adequately support and enable the subject matter claimed in the nonprovisional application that claims the benefit of the provisional application. In New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294, 63 USPQ2d 1843, 1846 (Fed. Cir. 2002), the court held that for a nonprovisional application to be afforded the benefit date of the provisional application, “the specification of the provisional must ‘contain a written description of the invention and the manner and process of making and using it, in such full, clear, concise, and exact terms,’ 35 U.S.C. 112¶1, to enable an ordinarily skilled artisan to practice the invention claimed in the nonprovisional application.”

In New Railhead, the patented drill bit was the subject of a commercial offer for sale. A provisional application was filed after the sale offer, but well within the one year grace period of 35 U.S.C. 102(b). A nonprovisional application, which issued as Patent No. 5,899,283, was filed within one year of the filing of the provisional application but more than one year after the sale offer. If the ‘283 patent was not afforded the benefit date of the provisional application, the patent would be invalid under 35 U.S.C. 102(b) since it was filed more than one year after the commercial offer for sale. The court looked at claim 1 of the ‘283 patent which recites a bit body being angled with respect to the sonde housing. The court then reviewed the provisional application and concluded that nowhere in the provisional application is the bit body expressly described as “being angled with respect to the sonde housing” as recited in claim 1 of the ‘283 patent. The court held that the disclosure of the provisional application does not adequately support the invention claimed in the ‘283 patent as to the angle limitation and therefore, the ‘283 patent is not entitled to the filing date of the provisional application under 35 U.S.C. 119(e)(1) and the ‘283 patent is invalid under 35 U.S.C. 102(b).

In New Railhead, the patented drill bit was the subject of a commercial offer for sale. A provisional application was filed after the sale offer, but well within the one year grace period of 35 U.S.C. 102(b). A nonprovisional application, which issued as Patent No. 5,899,283, was filed within one year of the filing of the provisional application but more than one year after the sale offer. If the ‘283 patent was not afforded the benefit date of the provisional application, the patent would be invalid under 35 U.S.C. 102(b) since it was filed more than one year after the commercial offer for sale. The court looked at claim 1 of the ‘283 patent which recites a bit body being angled with respect to the sonde housing. The court then reviewed the provisional application and concluded that nowhere in the provisional application is the bit body expressly described as “being angled with respect to the sonde housing” as recited in claim 1 of the ‘283 patent. The court held that the disclosure of the provisional application does not adequately support the invention claimed in the ‘283 patent as to the angle limitation and therefore, the ‘283 patent is not entitled to the filing date of the provisional application under 35 U.S.C. 119(e)(1) and the ‘283 patent is invalid under 35 U.S.C. 102(b).

2. This form paragraph may be used when there is lack of support or enablement in the prior-filed application for the claims in the application that is claiming the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) or under 35 U.S.C. 119(e). The prior-filed application can be a provisional application, a nonprovisional application, an international application (PCT) that designates the United States, or an international design application that designates the United States.

The disclosure of a continuation application must be the same as the disclosure of the prior-filed application; i.e., the continuation must not include anything which would constitute new matter if inserted in the original application. See MPEP § 201.07. The disclosure of a divisional application must be the same as the disclosure of the prior-filed application, or include at least that portion of the disclosure of the prior-filed application that is germane to the invention claimed in the divisional application. See MPEP § 201.06. The disclosure of a continuation or divisional application cannot include anything which would constitute new matter if inserted in the prior-filed application. A continuation-in-part application may include matter not disclosed in the prior-filed application. See MPEP § 201.08. Only the claims of the continuation-in-part application that are disclosed in the manner provided by 35 U.S.C. 112(a) in the prior-filed application are entitled to the benefit of the filing date of the prior-filed application. If there is a continuous chain of copending nonprovisional applications, each copending application must disclose the claimed invention of the later-filed application in the manner provided by 35 U.S.C. 112(a) in order for the later-filed application to be entitled to the benefit of the earliest filing date. See Regents of the University of Minnesota v. Gilead Scis., Inc., 61 F.4th 1350, 1358, 1360, 2023 USPQ2d 269 (Fed. Cir. 2023) (affirming the PTAB's decision in an inter partes review proceeding and holding that the patentee was not entitled to rely on the earlier filing dates of two nonprovisional applications and a provisional application because the prior-filed applications did not provide sufficient written description to support the invention claimed in the challenged patent).

The disclosure of a continuation application must be the same as the disclosure of the prior-filed application; i.e., the continuation must not include anything which would constitute new matter if inserted in the original application. See MPEP § 201.07. The disclosure of a divisional application must be the same as the disclosure of the prior-filed application, or include at least that portion of the disclosure of the prior-filed application that is germane to the invention claimed in the divisional application. See MPEP § 201.06. The disclosure of a continuation or divisional application cannot include anything which would constitute new matter if inserted in the prior-filed application. A continuation-in-part application may include matter not disclosed in the prior-filed application. See MPEP § 201.08. Only the claims of the continuation-in-part application that are disclosed in the manner provided by 35 U.S.C. 112(a) in the prior-filed application are entitled to the benefit of the filing date of the prior-filed application. If there is a continuous chain of copending nonprovisional applications, each copending application must disclose the claimed invention of the later-filed application in the manner provided by 35 U.S.C. 112(a) in order for the later-filed application to be entitled to the benefit of the earliest filing date. See Regents of the University of Minnesota v. Gilead Scis., Inc., 61 F.4th 1350, 1358, 1360, 2023 USPQ2d 269 (Fed. Cir. 2023) (affirming the PTAB's decision in an inter partes review proceeding and holding that the patentee was not entitled to rely on the earlier filing dates of two nonprovisional applications and a provisional application because the prior-filed applications did not provide sufficient written description to support the invention claimed in the challenged patent).

The disclosure of a continuation application must be the same as the disclosure of the prior-filed application; i.e., the continuation must not include anything which would constitute new matter if inserted in the original application. See MPEP § 201.07. The disclosure of a divisional application must be the same as the disclosure of the prior-filed application, or include at least that portion of the disclosure of the prior-filed application that is germane to the invention claimed in the divisional application. See MPEP § 201.06. The disclosure of a continuation or divisional application cannot include anything which would constitute new matter if inserted in the prior-filed application. A continuation-in-part application may include matter not disclosed in the prior-filed application. See MPEP § 201.08. Only the claims of the continuation-in-part application that are disclosed in the manner provided by 35 U.S.C. 112(a) in the prior-filed application are entitled to the benefit of the filing date of the prior-filed application. If there is a continuous chain of copending nonprovisional applications, each copending application must disclose the claimed invention of the later-filed application in the manner provided by 35 U.S.C. 112(a) in order for the later-filed application to be entitled to the benefit of the earliest filing date. See Regents of the University of Minnesota v. Gilead Scis., Inc., 61 F.4th 1350, 1358, 1360, 2023 USPQ2d 269 (Fed. Cir. 2023) (affirming the PTAB's decision in an inter partes review proceeding and holding that the patentee was not entitled to rely on the earlier filing dates of two nonprovisional applications and a provisional application because the prior-filed applications did not provide sufficient written description to support the invention claimed in the challenged patent).

The disclosure of a continuation application must be the same as the disclosure of the prior-filed application; i.e., the continuation must not include anything which would constitute new matter if inserted in the original application. See MPEP § 201.07. The disclosure of a divisional application must be the same as the disclosure of the prior-filed application, or include at least that portion of the disclosure of the prior-filed application that is germane to the invention claimed in the divisional application. See MPEP § 201.06. The disclosure of a continuation or divisional application cannot include anything which would constitute new matter if inserted in the prior-filed application. A continuation-in-part application may include matter not disclosed in the prior-filed application. See MPEP § 201.08. Only the claims of the continuation-in-part application that are disclosed in the manner provided by 35 U.S.C. 112(a) in the prior-filed application are entitled to the benefit of the filing date of the prior-filed application. If there is a continuous chain of copending nonprovisional applications, each copending application must disclose the claimed invention of the later-filed application in the manner provided by 35 U.S.C. 112(a) in order for the later-filed application to be entitled to the benefit of the earliest filing date. See Regents of the University of Minnesota v. Gilead Scis., Inc., 61 F.4th 1350, 1358, 1360, 2023 USPQ2d 269 (Fed. Cir. 2023) (affirming the PTAB's decision in an inter partes review proceeding and holding that the patentee was not entitled to rely on the earlier filing dates of two nonprovisional applications and a provisional application because the prior-filed applications did not provide sufficient written description to support the invention claimed in the challenged patent).

The disclosure of a continuation application must be the same as the disclosure of the prior-filed application; i.e., the continuation must not include anything which would constitute new matter if inserted in the original application. See MPEP § 201.07. The disclosure of a divisional application must be the same as the disclosure of the prior-filed application, or include at least that portion of the disclosure of the prior-filed application that is germane to the invention claimed in the divisional application. See MPEP § 201.06. The disclosure of a continuation or divisional application cannot include anything which would constitute new matter if inserted in the prior-filed application. A continuation-in-part application may include matter not disclosed in the prior-filed application. See MPEP § 201.08. Only the claims of the continuation-in-part application that are disclosed in the manner provided by 35 U.S.C. 112(a) in the prior-filed application are entitled to the benefit of the filing date of the prior-filed application. If there is a continuous chain of copending nonprovisional applications, each copending application must disclose the claimed invention of the later-filed application in the manner provided by 35 U.S.C. 112(a) in order for the later-filed application to be entitled to the benefit of the earliest filing date. See Regents of the University of Minnesota v. Gilead Scis., Inc., 61 F.4th 1350, 1358, 1360, 2023 USPQ2d 269 (Fed. Cir. 2023) (affirming the PTAB's decision in an inter partes review proceeding and holding that the patentee was not entitled to rely on the earlier filing dates of two nonprovisional applications and a provisional application because the prior-filed applications did not provide sufficient written description to support the invention claimed in the challenged patent).

Form paragraph 2.10.01 should be used where applicant is claiming the benefit of a prior nonprovisional application under 35 U.S.C. 120, 121, or 365(c) and the relationship (continuation or divisional) of the applications should be changed to continuation-in-part because the disclosure of the later-filed application contains matter not disclosed in the prior-filed nonprovisional application.

1. This form paragraph should be used when an application, which claims the benefit of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) contains new matter relative to the prior-filed application, and purports to be a “continuation,” “division,” or “divisional application” of the prior-filed application. Do not use this form paragraph if the applicant is claiming the benefit of a provisional application under 35 U.S.C. 119(e).

1. This form paragraph should be used when an application, which claims the benefit of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) contains new matter relative to the prior-filed application, and purports to be a “continuation,” “division,” or “divisional application” of the prior-filed application. Do not use this form paragraph if the applicant is claiming the benefit of a provisional application under 35 U.S.C. 119(e).

In New Railhead, the patented drill bit was the subject of a commercial offer for sale. A provisional application was filed after the sale offer, but well within the one year grace period of 35 U.S.C. 102(b). A nonprovisional application, which issued as Patent No. 5,899,283, was filed within one year of the filing of the provisional application but more than one year after the sale offer. If the ‘283 patent was not afforded the benefit date of the provisional application, the patent would be invalid under 35 U.S.C. 102(b) since it was filed more than one year after the commercial offer for sale. The court looked at claim 1 of the ‘283 patent which recites a bit body being angled with respect to the sonde housing. The court then reviewed the provisional application and concluded that nowhere in the provisional application is the bit body expressly described as “being angled with respect to the sonde housing” as recited in claim 1 of the ‘283 patent. The court held that the disclosure of the provisional application does not adequately support the invention claimed in the ‘283 patent as to the angle limitation and therefore, the ‘283 patent is not entitled to the filing date of the provisional application under 35 U.S.C. 119(e)(1) and the ‘283 patent is invalid under 35 U.S.C. 102(b).

In New Railhead, the patented drill bit was the subject of a commercial offer for sale. A provisional application was filed after the sale offer, but well within the one year grace period of 35 U.S.C. 102(b). A nonprovisional application, which issued as Patent No. 5,899,283, was filed within one year of the filing of the provisional application but more than one year after the sale offer. If the ‘283 patent was not afforded the benefit date of the provisional application, the patent would be invalid under 35 U.S.C. 102(b) since it was filed more than one year after the commercial offer for sale. The court looked at claim 1 of the ‘283 patent which recites a bit body being angled with respect to the sonde housing. The court then reviewed the provisional application and concluded that nowhere in the provisional application is the bit body expressly described as “being angled with respect to the sonde housing” as recited in claim 1 of the ‘283 patent. The court held that the disclosure of the provisional application does not adequately support the invention claimed in the ‘283 patent as to the angle limitation and therefore, the ‘283 patent is not entitled to the filing date of the provisional application under 35 U.S.C. 119(e)(1) and the ‘283 patent is invalid under 35 U.S.C. 102(b).

In New Railhead, the patented drill bit was the subject of a commercial offer for sale. A provisional application was filed after the sale offer, but well within the one year grace period of 35 U.S.C. 102(b). A nonprovisional application, which issued as Patent No. 5,899,283, was filed within one year of the filing of the provisional application but more than one year after the sale offer. If the ‘283 patent was not afforded the benefit date of the provisional application, the patent would be invalid under 35 U.S.C. 102(b) since it was filed more than one year after the commercial offer for sale. The court looked at claim 1 of the ‘283 patent which recites a bit body being angled with respect to the sonde housing. The court then reviewed the provisional application and concluded that nowhere in the provisional application is the bit body expressly described as “being angled with respect to the sonde housing” as recited in claim 1 of the ‘283 patent. The court held that the disclosure of the provisional application does not adequately support the invention claimed in the ‘283 patent as to the angle limitation and therefore, the ‘283 patent is not entitled to the filing date of the provisional application under 35 U.S.C. 119(e)(1) and the ‘283 patent is invalid under 35 U.S.C. 102(b).

In New Railhead, the patented drill bit was the subject of a commercial offer for sale. A provisional application was filed after the sale offer, but well within the one year grace period of 35 U.S.C. 102(b). A nonprovisional application, which issued as Patent No. 5,899,283, was filed within one year of the filing of the provisional application but more than one year after the sale offer. If the ‘283 patent was not afforded the benefit date of the provisional application, the patent would be invalid under 35 U.S.C. 102(b) since it was filed more than one year after the commercial offer for sale. The court looked at claim 1 of the ‘283 patent which recites a bit body being angled with respect to the sonde housing. The court then reviewed the provisional application and concluded that nowhere in the provisional application is the bit body expressly described as “being angled with respect to the sonde housing” as recited in claim 1 of the ‘283 patent. The court held that the disclosure of the provisional application does not adequately support the invention claimed in the ‘283 patent as to the angle limitation and therefore, the ‘283 patent is not entitled to the filing date of the provisional application under 35 U.S.C. 119(e)(1) and the ‘283 patent is invalid under 35 U.S.C. 102(b).

By way of further illustration, if the claims of a continuation-in-part application which are only entitled to the continuation-in-part filing date “read on” published, publicly used or sold, or patented subject matter (e.g., as in a genus-species relationship) a rejection under 35 U.S.C. 102 would be proper. Cases of interest in this regard are as follows: Mendenhall v. Cedarapids Inc., 5 F.3d 1557, 28 USPQ2d 1081 (Fed. Cir. 1993); In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971); In re Hafner, 410 F.2d 1403, 161 USPQ 783 (CCPA 1969); In re Ruscetta, 255 F.2d 687, 118 USPQ 101 (CCPA 1958); In re Steenbock, 83 F.2d 912, 30 USPQ 45 (CCPA 1936); and Ex parte Hageman, 179 USPQ 747 (Bd. App. 1971).

By way of further illustration, if the claims of a continuation-in-part application which are only entitled to the continuation-in-part filing date “read on” published, publicly used or sold, or patented subject matter (e.g., as in a genus-species relationship) a rejection under 35 U.S.C. 102 would be proper. Cases of interest in this regard are as follows: Mendenhall v. Cedarapids Inc., 5 F.3d 1557, 28 USPQ2d 1081 (Fed. Cir. 1993); In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971); In re Hafner, 410 F.2d 1403, 161 USPQ 783 (CCPA 1969); In re Ruscetta, 255 F.2d 687, 118 USPQ 101 (CCPA 1958); In re Steenbock, 83 F.2d 912, 30 USPQ 45 (CCPA 1936); and Ex parte Hageman, 179 USPQ 747 (Bd. App. 1971).

In New Railhead, the patented drill bit was the subject of a commercial offer for sale. A provisional application was filed after the sale offer, but well within the one year grace period of 35 U.S.C. 102(b). A nonprovisional application, which issued as Patent No. 5,899,283, was filed within one year of the filing of the provisional application but more than one year after the sale offer. If the ‘283 patent was not afforded the benefit date of the provisional application, the patent would be invalid under 35 U.S.C. 102(b) since it was filed more than one year after the commercial offer for sale. The court looked at claim 1 of the ‘283 patent which recites a bit body being angled with respect to the sonde housing. The court then reviewed the provisional application and concluded that nowhere in the provisional application is the bit body expressly described as “being angled with respect to the sonde housing” as recited in claim 1 of the ‘283 patent. The court held that the disclosure of the provisional application does not adequately support the invention claimed in the ‘283 patent as to the angle limitation and therefore, the ‘283 patent is not entitled to the filing date of the provisional application under 35 U.S.C. 119(e)(1) and the ‘283 patent is invalid under 35 U.S.C. 102(b).

2. This form paragraph may be used when there is lack of support or enablement in the prior-filed application for the claims in the application that is claiming the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) or under 35 U.S.C. 119(e). The prior-filed application can be a provisional application, a nonprovisional application, an international application (PCT) that designates the United States, or an international design application that designates the United States.

See MPEP § 2154.01(b) and MPEP § 2136.03 for discussion of when an issued patent, patent application publication under 35 U.S.C. 122(b), or application deemed published under 35 U.S.C. 122(b) is available as a reference under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) as of a prior provisional or nonprovisional application’s filing date.