37 CFR § 1.78 — Claiming benefit of earlier filing date and (MPEP Coverage Index) – BlueIron IP
37 CFR § 1.78 Claiming benefit of earlier filing date and
Source: Patent Rule (37 CFR)BlueIron Update:
This page consolidates MPEP guidance interpreting 37 CFR § 1.78, including 534 rules 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.
Summary
The claiming benefit of earlier filing date involves petitioning to claim priority under the Paris Convention or domestic benefits in PCT applications, ensuring timely and accurate submission.
What this section covers
- This section covers petitions for claiming priority under the Paris Convention or domestic benefits in PCT applications, including the core topic of restoring the right of priority or domestic benefit.
Key obligations
- The primary requirement is to claim benefit of one or more prior-filed provisional applications in a nonprovisional application.
- Timely filing of the petition and proper identification of prior-filed applications are additional required elements.
- Ensuring the application contains or is amended to claim benefit of prior-filed applications is a key compliance obligation.
Practice notes
- Ensure all necessary information is included in the petition to claim benefit, such as filing dates and serial numbers of prior-filed provisional applications.
- Missing the deadline for claiming benefit of prior-filed applications is a common pitfall; ensure timely submission.
Official MPEP § 1.78 — Claiming benefit of earlier filing date and
Source: USPTOLast Modified: 10/30/2024 08:50:22
1.78 Claiming benefit of earlier filing date and cross-references to other applications.
- (a)
Claims under 35 U.S.C. 119(e) for the benefit of a
prior-filed provisional application.
An applicant in a
nonprovisional application, other than for a design patent, or an
international application designating the United States may claim
the benefit of one or more prior-filed provisional applications
under the conditions set forth in
35 U.S.C.
119(e)
and this section.
- (1) The nonprovisional application or
international application designating the United States must
be:
- (i) Filed not later than twelve months after the date on which the provisional application was filed, subject to paragraph (b) of this section (a subsequent application); or
- (ii) Entitled to claim the benefit under 35 U.S.C. 120 , 121, or 365(c) of a subsequent application that was filed within the period set forth in paragraph (a)(1)(i) of this section.
- (2) Each prior-filed provisional application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. In addition, each prior-filed provisional application must be entitled to a filing date as set forth in § 1.53(c) , and the basic filing fee set forth in § 1.16(d) must have been paid for such provisional application within the time period set forth in § 1.53(g) .
- (3) Any nonprovisional application or international application designating the United States that claims the benefit of one or more prior-filed provisional applications must contain, or be amended to contain, a reference to each such prior-filed provisional application, identifying it by the provisional application number (consisting of series code and serial number). If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5) ).
- (4) The reference required by paragraph
(a)(3) of this section must be submitted during the pendency
of the later-filed application. If the later-filed
application is an application filed under
35
U.S.C. 111(a)
, this reference must also
be submitted within the later of four months from the actual
filing date of the later-filed application or sixteen months
from the filing date of the prior-filed provisional
application. If the later-filed application is a
nonprovisional application entering the national stage from
an international application under 35 U.S.C. 371, this
reference must also be submitted within the later of four
months from the date on which the national stage commenced
under
35 U.S.C. 371(b) or
(f)
(§
1.491(a)
), four months from the date
of the initial submission under
35 U.S.C.
371
to enter the national stage, or
sixteen months from the filing date of the prior-filed
provisional application. Except as provided in paragraph (c)
of this section, failure to timely submit the reference is
considered a waiver of any benefit under
35 U.S.C.
119(e)
of the prior-filed provisional
application. The time periods in this paragraph do not apply
if the later-filed application is:
- (i) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or
- (ii) An international application filed under 35 U.S.C. 363 before November 29, 2000.
- (5) If the prior-filed provisional application was filed in a language other than English and both an English-language translation of the prior-filed provisional application and a statement that the translation is accurate were not previously filed in the prior-filed provisional application, the applicant will be notified and given a period of time within which to file, in the prior-filed provisional application, the translation and the statement. If the notice is mailed in a pending nonprovisional application, a timely reply to such a notice must include the filing in the nonprovisional application of either a confirmation that the translation and statement were filed in the provisional application, or an application data sheet (§ 1.76(b)(5) ) eliminating the reference under paragraph (a)(3) of this section to the prior-filed provisional application, or the nonprovisional application will be abandoned. The translation and statement may be filed in the provisional application, even if the provisional application has become abandoned.
- (6) If a nonprovisional application filed on or after March 16, 2013, claims the benefit of the filing date of a provisional 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 as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the nonprovisional application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior-filed provisional application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the nonprovisional application. An applicant is not required to provide such a statement if the applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
- (1) The nonprovisional application or
international application designating the United States must
be:
- (b)
Delayed filing of the subsequent nonprovisional
application or international application designating the United
States.
If the subsequent nonprovisional application
or international application designating the United States has a
filing date which is after the expiration of the twelve-month
period set forth in paragraph (a)(1)(i) of this section but within
two months from the expiration of the period set forth in paragraph
(a)(1)(i) of this section, the benefit of the provisional
application may be restored under PCT Rule
26
bis.3 for an international application, or
upon petition pursuant to this paragraph, if the delay in filing
the subsequent nonprovisional application or international
application designating the United States within the period set
forth in paragraph (a)(1)(i) of this section was unintentional.
- (1) A petition to restore the benefit
of a provisional application under this paragraph filed on or
after May 13, 2015, must be filed in the subsequent
application, and any petition to restore the benefit of a
provisional application under this paragraph must
include:
- (i) The reference required by 35 U.S.C. 119(e) to the prior-filed provisional application in an application data sheet (§ 1.76(b)(5) ) identifying it by provisional application number (consisting of series code and serial number), unless previously submitted;
- (ii) The petition fee as set forth in § 1.17(m) ; and
- (iii) A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period set forth in paragraph (a)(1)(i) of this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
- (2) The restoration of the right of priority under PCT Rule 26bis.3 to a provisional application does not affect the requirement to include the reference required by paragraph (a)(3) of this section to the provisional application in a national stage application under 35 U.S.C. 371 within the time period provided by paragraph (a)(4) of this section to avoid the benefit claim being considered waived.
- (1) A petition to restore the benefit
of a provisional application under this paragraph filed on or
after May 13, 2015, must be filed in the subsequent
application, and any petition to restore the benefit of a
provisional application under this paragraph must
include:
- (c)
Delayed claims under 35 U.S.C. 119(e) for the benefit of a
prior-filed provisional application.
If the reference
required by
35 U.S.C.
119(e)
and paragraph (a)(3) of this section
is presented in an application after the time period provided by
paragraph (a)(4) of this section, the claim under
35 U.S.C.
119(e)
for the benefit of a prior-filed
provisional application may be accepted if the reference
identifying the prior-filed application by provisional application
number was unintentionally delayed. A petition to accept an
unintentionally delayed claim under
35 U.S.C.
119(e)
for the benefit of a prior-filed
provisional application must be accompanied by:
- (1) The reference required by 35 U.S.C. 119(e) and paragraph (a)(3) of this section to the prior-filed provisional application, unless previously submitted;
- (2) The petition fee as set forth in § 1.17(m) ; and
- (3) A statement that the entire delay between the date the benefit claim was due under paragraph (a)(4) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
- (d)
Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the
benefit of a prior-filed nonprovisional application,
international application, or international design
application.
An applicant in a nonprovisional
application (including a nonprovisional application resulting from
an international application or international design application),
an international application designating the United States, or an
international design application designating the United States may
claim the benefit of one or more prior-filed copending
nonprovisional applications, international applications designating
the United States, or international design applications designating
the United States under the conditions set forth in
35 U.S.C. 120
,
121
,
365(c)
, or
386(c)
and this
section.
- (1) Each prior-filed application must
name the inventor or a joint inventor named in the
later-filed application as the inventor or a joint inventor.
In addition, each prior-filed application must either be:
- (i) An international application entitled to a filing date in accordance with PCT Article 11 and designating the United States;
- (ii) An international design application entitled to a filing date in accordance with § 1.1023 and designating the United States; or
- (iii) A nonprovisional application under 35 U.S.C. 111(a) that is entitled to a filing date as set forth in § 1.53(b) or (d) for which the basic filing fee set forth in § 1.16 has been paid within the pendency of the application.
- (2) Except for a continued prosecution application filed under § 1.53(d) , any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under § 1.1023 . If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5) ). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.
- (3)
- (i) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section must be submitted during the pendency of the later-filed application.
- (ii) If the later-filed
application is an application filed under
35 U.S.C.
111(a)
, this reference must also
be submitted within the later of four months from the
actual filing date of the later-filed application or
sixteen months from the filing date of the prior-filed
application. If the later-filed application is a
nonprovisional application entering the national stage
from an international application under
35 U.S.C.
371
, this reference must also be
submitted within the later of four months from the date
on which the national stage commenced under
35 U.S.C. 371(b) or
(f)
(§
1.491(a)
), four months from the
date of the initial submission under
35
U.S.C. 371
to enter the national
stage, or sixteen months from the filing date of the
prior-filed application. The time periods in this
paragraph do not apply if the later-filed application
is:
- (A) An application for a design patent;
- (B) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or
- (C) An international application filed under 35 U.S.C. 363 before November 29, 2000.
- (iii) Except as provided in paragraph (e) of this section, failure to timely submit the reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section is considered a waiver of any benefit under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) to the prior-filed application.
- (4) The request for a continued prosecution application under § 1.53(d) is the specific reference required by 35 U.S.C. 120 to the prior-filed application. The identification of an application by application number under this section is the identification of every application assigned that application number necessary for a specific reference required by 35 U.S.C. 120 to every such application assigned that application number.
- (5) Cross-references to other related applications may be made when appropriate (see § 1.14 ), but cross-references to applications for which a benefit is not claimed under title 35, United States Code, must not be included in an application data sheet (§ 1.76(b)(5) ).
- (6) If a nonprovisional application
filed on or after March 16, 2013, other than a nonprovisional
international design application, claims the benefit of the
filing date of a nonprovisional application or an
international application designating the United States 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 as defined in §
1.109
that is on or after March 16,
2013, the applicant must provide a statement to that effect
within the later of four months from the actual filing date
of the later-filed application, four months from the date of
entry into the national stage as set forth in §
1.491
in
an international application, sixteen months from the filing
date of the prior-filed application, or the date that a first
claim to a claimed invention that has an effective filing
date on or after March 16, 2013, is presented in the
later-filed application. An applicant is not required to
provide such a statement if either:
- (i) The application claims the benefit of a nonprovisional application in which a statement under § 1.55(k) , paragraph (a)(6) of this section, or this paragraph that the application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013 has been filed; or
- (ii) The applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the later filed application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
- (7) Where benefit is claimed under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) to an international application or an international design application which designates but did not originate in the United States, the Office may require a certified copy of such application together with an English translation thereof if filed in another language.
- (1) Each prior-filed application must
name the inventor or a joint inventor named in the
later-filed application as the inventor or a joint inventor.
In addition, each prior-filed application must either be:
- (e)
Delayed claims under 35 U.S.C. 120, 121, 365(c), or 386(c)
for the benefit of a prior-filed nonprovisional application,
international application, or international design
application.
If the reference required by
35 U.S.C. 120
and paragraph (d)(2) of this section is presented after the time
period provided by paragraph (d)(3) of this section, the claim
under
35 U.S.C. 120
,
121
,
365(c)
, or
386(c)
for the
benefit of a prior-filed copending nonprovisional application,
international application designating the United States, or
international design application designating the United States may
be accepted if the reference required by paragraph (d)(2) of this
section was unintentionally delayed. A petition to accept an
unintentionally delayed claim under
35 U.S.C.
120
,
121
,
365(c)
, or
386(c)
for the
benefit of a prior-filed application must be accompanied by:
- (1) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section to the prior-filed application, unless previously submitted;
- (2) The petition fee as set forth in § 1.17(m) ; and
- (3) A statement that the entire delay between the date the benefit claim was due under paragraph (d)(3) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
- (f) Applications containing patentably indistinct claims. Where two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application.
- (g) Applications or patents under reexamination naming different inventors and containing patentably indistinct claims. If an application or a patent under reexamination and at least one other application naming different inventors are owned by the same person and contain patentably indistinct claims, and there is no statement of record indicating that the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109 ), or on the date of the invention, as applicable, of the later claimed invention, the Office may require the applicant or assignee to state whether the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on such date, and if not, indicate which named inventor is the prior inventor, as applicable. Even if the claimed inventions were commonly owned, or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109 ), or on the date of the invention, as applicable, of the later claimed invention, the patentably indistinct claims may be rejected under the doctrine of double patenting in view of such commonly owned or assigned applications or patents under reexamination.
- (h) Applications filed before September 16, 2012. Notwithstanding the requirement in paragraphs (a)(3) and (d)(2) of this section that any specific reference to a prior-filed application be presented in an application data sheet (§ 1.76 ), this requirement in paragraph (a)(3) and (d)(2) of this section will be satisfied by the presentation of such specific reference in the first sentence(s) of the specification following the title in a nonprovisional application filed under 35 U.S.C. 111(a) before September 16, 2012, or resulting from an international application filed under 35 U.S.C. 363 before September 16, 2012. The provisions of this paragraph do not apply to any specific reference submitted for a petition under paragraph (b) of this section to restore the benefit of a provisional application.
- (i) Petitions required in international applications. If a petition under paragraph (b), (c), or (e) of this section is required in an international application that was not filed with the United States Receiving Office and is not a nonprovisional application, then such petition may be filed in the earliest nonprovisional application that claims benefit under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) to the international application and will be treated as having been filed in the international application.
- (j) Benefit under 35 U.S.C. 386(c). Benefit under 35 U.S.C. 386(c) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.
- (k) Time periods in this section. The time periods set forth in this section are not extendable, but are subject to 35 U.S.C. 21(b) (and § 1.7(a) ), PCT Rule 80.5 , and Hague Agreement Rule 4(4).
[36 FR 7312, Apr. 17, 1971; 49 FR 555, Jan. 4, 1984; paras. (a), (c) & (d), 50 FR 9380, Mar. 7, 1985, effective May 8, 1985; 50 FR 11366, Mar. 21, 1985; para. (a) revised 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; paras. (a)(1) and (a)(2) revised and paras. (a)(3) and (a)(4) added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (c) revised and para. (d) deleted, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (a) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)(3) revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); paras. (a)(2), (a)(4), and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; paras. (a)(2), (a)(3), and (a)(4) revised and paras. (a)(5) and (a)(6) added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (a) revised, 66 FR 67087, Dec. 28, 2001, effective Dec. 28, 2001; paras. (a)(3)(iii) & (a)(6)(iii) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para (a)(3) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; paras. (a)(1), (a)(2)(iii), (a)(5)(iii) and (c) revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004; para. (a)(4) revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para.(a)(1)(iii) removed and para. (a)(1)(ii) revised, 70 FR 30360, May 26, 2005, effective July 1, 2005; para. (a)(5)(iv) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR); paras. (a)(1) introductory text and (a)(4) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; paras. (a)(2)(iii), (a)(5)(iii), (a)(5)(iv), and (c) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013; revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013; revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
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- Aia Overview
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- Applicability
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- Application Types
- App Types Provisional
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- Cip Applications
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- Copendency Requirements
- Assignment Ownership
- Recording Assignments
- Recording Requirements
- Correspondence Address
- Design Patents
- Design Application
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- Design Priority Benefit
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- Common Petition Types
- Ex Parte Reexamination
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- Examination Procedure
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- Amendment Compliance
- Examiner Action
- Action Types
- Rejection Of Claims
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- Fees
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- Hague Principles
- Ida Examination
- Ida Filing
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- Ida Contents
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- Ida Title Description
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- Application Data Sheet
- Application Identification
- Drawings
- Specification
- Patent Data Systems
- Patent Issuance
- Certificate Of Correction
- Patent Term
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- Pct Amendments Article 19
- Pct Description Claims
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- Pct Request
- Plant Patents
- Plant Application
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- Benefit Delayed
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- Benefit Reference Requirement
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- Reissue
- Restriction
- Section 112
- Section 112A
- New Matter
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- Signature Requirements
- Signature Assignee