Patent Law FAQ

The MPEP ¶ 2.11 mentions several U.S. Code sections relevant to claiming the benefit of an earlier filing date:

This application is claiming the benefit of prior-filed application No.[1] under 35 U.S.C. 120, 121, 365(c), or 386(c).

These sections cover different scenarios:

• 35 U.S.C. 120: Benefit of earlier filing date in the United States
• 35 U.S.C. 121: Divisional applications
• 35 U.S.C. 365(c): Benefit of earlier filing date; national application
• 35 U.S.C. 386(c): Benefit of earlier filing date; international design application

Each of these sections provides specific conditions under which an application can claim the benefit of an earlier filing date.

For more information on earlier filing date, visit: earlier filing date.

For more information on patent law, visit: patent law.

For a non-English provisional application, the English translation and accuracy statement must be filed in the provisional application itself, not in the non-provisional application claiming its benefit. MPEP ¶ 2.38 clearly states:

“An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No.[…]”

Additionally, in the non-provisional application claiming benefit, you must provide confirmation that these documents were filed in the provisional application. This two-step process ensures proper documentation and compliance with 37 CFR 1.78.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

The location of the benefit claim reference depends on the filing date of the application:

• For applications filed before September 16, 2012: The reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS).
• For applications filed on or after September 16, 2012: The specific reference must be included in an application data sheet (ADS).

The MPEP states: “If the application was filed before September 16, 2012, the reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.”

It’s important to note that for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must also include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

For more information on application data sheet, visit: application data sheet.

For more information on divisional, visit: divisional.

According to the MPEP, a petition to restore the benefit of a provisional application should be addressed to:

“Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.”

It’s important to note that this petition must be filed in the subsequent nonprovisional application or international application designating the United States, not in the provisional application itself. Always ensure you’re following the most current USPTO guidelines for petition submissions, as procedures may be updated over time.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

The English translation of a non-English provisional application must be filed in the provisional application itself, not in the non-provisional application claiming benefit. According to MPEP ¶ 2.38:

“An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No.[3].”

Additionally, you must confirm in your current application that the translation and statement were filed in the provisional application.

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

For those seeking more detailed information on benefit claims under 35 U.S.C. 386(c), the Manual of Patent Examining Procedure (MPEP) provides a specific reference. According to MPEP § 211.01(d):

See MPEP § 2920.05(e) for additional information pertaining to benefit claims under 35 U.S.C. 386(c).

This section of the MPEP offers comprehensive guidance on the intricacies of claiming benefit to international design applications, including procedural requirements and practical considerations for patent applicants and examiners.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For more information on benefit claims, visit: benefit claims.

The timing for submitting a specific reference to a prior-filed application depends on the type of application:

• For utility or plant applications filed under 35 U.S.C. 111(a): The specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
• For national stage applications under 35 U.S.C. 371: The specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), 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 application.

It’s important to note that This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s).

For more information on filing deadline, visit: filing deadline.

For more information on specific reference, visit: specific reference.

The ability to claim benefit under 35 U.S.C. 386(c) for international design applications is subject to specific timing requirements. According to MPEP § 211.01(d):

37 CFR 1.78(j) provides that benefit under 35 U.S.C. 386(c) with respect to an international design application can only be claimed in nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.

This means that to claim the benefit of an international design application, the claiming application must have been filed on or after May 13, 2015. This date is significant as it marks the implementation of certain provisions of the Patent Law Treaties Implementation Act of 2012.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For more information on filing date requirements, visit: filing date requirements.

According to 37 CFR 1.78(j), benefit claims under 35 U.S.C. 386(c) can only be made in specific types of applications filed on or after May 13, 2015. The MPEP states:

“37 CFR 1.78(j) provides that benefit under 35 U.S.C. 386(c) with respect to an international design application can only be claimed in nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.”

This means that applications filed before May 13, 2015, cannot claim the benefit of an international design application under 35 U.S.C. 386(c). It’s important for applicants to be aware of this date restriction when considering their benefit claims.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

If you missed the deadline for filing a benefit claim, you may still be able to claim the benefit by filing a petition for an unintentionally delayed benefit claim. The process differs based on the type of benefit claim:

• For benefit claims under 35 U.S.C. 119(e): File a petition under 37 CFR 1.78(c)
• For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c): File a petition under 37 CFR 1.78(e)

The MPEP states: “If applicant desires the benefit under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c) based upon a previously filed application, applicant must file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) for benefit claims under 35 U.S.C. 119(e) or under 37 CFR 1.78(e) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c).”

The petition must include:

1. The reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior application (unless previously submitted)
2. A petition fee under 37 CFR 1.17(m)
3. A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional

The Director may require additional information if there’s a question about whether the delay was unintentional.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on petition fee, visit: petition fee.

For more information on unintentional delay, visit: unintentional delay.

If you miss the 12-month deadline for claiming the benefit of a provisional application, you have two main options:

1. Delete the claim to the benefit of the prior-filed provisional application.
2. File a petition to restore the benefit of the provisional application.

The MPEP states:

“Alternatively, applicant may wish to file a petition to restore the benefit of the provisional application under 37 CFR 1.78 in the subsequent nonprovisional application or international application designating the United States if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional.”

This petition must be filed in the subsequent application and include specific requirements, such as a reference to the provisional application, a petition fee, and a statement that the delay was unintentional.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

The time limit for submitting a benefit claim depends on the type of application:

• For utility or plant applications filed under 35 U.S.C. 111(a), the specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
• For national stage applications under 35 U.S.C. 371, the specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced, 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 application.

As stated in MPEP 211.02: This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c).

For more information on national stage application, visit: national stage application.

For more information on time limit, visit: time limit.

The time limit for filing a benefit claim depends on the type of application:

• For applications filed under 35 U.S.C. 111(a), the reference must be submitted within the later of:
  • Four months from the actual filing date of the application, or
  • Sixteen months from the filing date of the prior application
• For nonprovisional applications entering the national stage from an international application under 35 U.S.C. 371, the reference must be made within the later of:
  • Four months from the date on which the national stage commenced
  • Four months from the date of the initial submission to enter the national stage
  • Sixteen months from the filing date of the prior application

As stated in the MPEP: “If the application is an application filed under 35 U.S.C. 111(a), the reference to the prior application must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.”

For more information on 35 U.S.C. 111(a), visit: 35 U.S.C. 111(a).

For more information on 35 U.S.C. 371, visit: 35 U.S.C. 371.

For more information on time limit, visit: time limit.

The time limit for claiming benefit of a prior application depends on the type of application:

• For utility or plant applications filed under 35 U.S.C. 111(a), the benefit claim must be made 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
• For nonprovisional applications entering the national stage from an international application under 35 U.S.C. 371, the benefit claim must be made within the later of:
  • Four months from the date on which the national stage commenced
  • Four months from the date of the initial submission to enter the national stage
  • Sixteen months from the filing date of the prior application

As stated in the MPEP: “This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c) unless a petition to accept an unintentionally delayed benefit claim is granted.”

For more information on 35 U.S.C. 111(a), visit: 35 U.S.C. 111(a).

For more information on 35 U.S.C. 371, visit: 35 U.S.C. 371.

For more information on time limit, visit: time limit.

MPEP ¶ 2.15 provides guidance on how to properly claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c). It outlines the requirements for including a specific reference to the prior-filed application and the timeframes within which this reference must be submitted.

The paragraph states: If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78. This means that applicants must explicitly reference the prior application to claim its benefits.

For more information on specific reference, visit: specific reference.

Form Paragraph 2.38 in the MPEP serves several important purposes regarding non-English provisional applications:

1. It notifies the applicant that an English translation and/or a statement of translation accuracy is required for a non-English language provisional application.
2. It informs the applicant about the specific documents that are missing from their application.
3. It provides clear instructions on what the applicant needs to do to rectify the situation.
4. It warns the applicant about the potential consequences of not providing the required documents.

The MPEP states: Use this form paragraph to notify applicant that an English translation of the non-English language provisional application and/or a statement that the translation is accurate is required.

This form paragraph is a crucial tool for patent examiners to communicate requirements and potential issues to applicants, ensuring that all necessary documents are properly filed for claiming benefit to a non-English provisional application.

For more information on patent examination, visit: patent examination.

For more information on USPTO communication, visit: USPTO communication.

If a benefit claim is not filed within the required time period, it may still be accepted through a petition process. According to MPEP ¶ 2.15:

A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

The petition must include:

1. The reference to the prior application (unless previously submitted)
2. The petition fee under 37 CFR 1.17(m)
3. A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

The Director may request additional information if there’s a question about whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

For more information on unintentional delay, visit: unintentional delay.

The MPEP does not specify a fixed deadline for submitting the English translation of a non-English provisional application. However, it indicates that the translation must be provided within a time period set by the USPTO. According to MPEP ¶ 2.38:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This suggests that the USPTO will set a specific deadline in an Office action, and you must comply with this deadline to avoid abandonment of your application.

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

The deadline for submitting a benefit claim depends on the type of application:

• For utility or plant applications filed under 35 U.S.C. 111(a): Submit within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
• For national stage applications under 35 U.S.C. 371: Submit within the later of four months from the date on which the national stage commenced, 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 application.

The MPEP emphasizes: This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c). (MPEP § 211)

For more information on national stage application, visit: national stage application.

The deadline for filing a benefit claim depends on the type of application:

• For applications filed under 35 U.S.C. 111(a), the reference must be submitted within the later of:
  • Four months from the actual filing date of the application, or
  • Sixteen months from the filing date of the prior application
• For nonprovisional applications entering the national stage from an international application under 35 U.S.C. 371, the reference must be made within the later of:
  • Four months from the date on which the national stage commenced
  • Four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage
  • Sixteen months from the filing date of the prior application

As stated in the MPEP: “If the application is an application filed under 35 U.S.C. 111(a), the reference to the prior application must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.”

For more information on 35 U.S.C. 111(a), visit: 35 U.S.C. 111(a).

For more information on 35 U.S.C. 371, visit: 35 U.S.C. 371.

For more information on filing deadline, visit: filing deadline.

For more information on national stage application, visit: national stage application.

Copendency is a crucial requirement when claiming the benefit of a prior-filed nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c). The MPEP defines copendency as follows:

“Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”

Key points about copendency:

• The later-filed application must be filed before the prior application patents, is abandoned, or proceedings are terminated
• If the prior application issues as a patent, the later-filed application can be filed on the same date the patent issues
• If the prior application is abandoned, the later-filed application must be filed before the abandonment
• Without copendency, the later-filed application cannot claim the benefit of the prior application’s filing date

Applicants should be aware of the copendency requirement to ensure their benefit claims are valid.

Claiming priority to an international design application can provide significant benefits for nonprovisional applications. According to MPEP § 211.01(d):

Pursuant to 35 U.S.C. 386(c), in accordance with the conditions and requirements of 35 U.S.C. 120, a nonprovisional application is entitled to the benefit of a prior international design application designating the United States.

This means that a nonprovisional application can claim the earlier filing date of an international design application, potentially providing an earlier priority date for the claimed invention.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For more information on nonprovisional application, visit: nonprovisional application.

Under 35 U.S.C. 386(c), a nonprovisional application can claim the benefit of a prior international design application designating the United States, subject to the conditions and requirements of 35 U.S.C. 120. This provision allows applicants to establish an earlier effective filing date for their nonprovisional applications based on their international design applications.

As stated in the MPEP:

“Pursuant to 35 U.S.C. 386(c), in accordance with the conditions and requirements of 35 U.S.C. 120, a nonprovisional application is entitled to the benefit of a prior international design application designating the United States.”

This benefit claim can be crucial for establishing priority and overcoming prior art references.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For more information on nonprovisional application, visit: nonprovisional application.

What is the ‘specific reference’ requirement for claiming benefit of a prior-filed application?

The ‘specific reference’ requirement is a crucial aspect of claiming the benefit of a prior-filed application. According to MPEP 211.01, To claim the benefit of a prior-filed application, the later-filed application must contain a specific reference to the prior-filed application. This means that:

• The specific reference must be made in the first sentence(s) of the specification or in an application data sheet (ADS).
• It should include the relationship between the applications (e.g., continuation, divisional, or continuation-in-part).
• The prior application’s serial number and filing date must be provided.

For example: ‘This application is a continuation of Application No. 12/345,678, filed January 1, 2020.’

Failure to provide this specific reference can result in the loss of the benefit claim. For more details, refer to MPEP 211 and 37 CFR 1.78.

What is the ‘same invention’ requirement for claiming benefit under 35 U.S.C. 120?

The ‘same invention’ requirement is a crucial aspect of claiming benefit under 35 U.S.C. 120. MPEP 211.01(b) explains: The second application must be an application for a patent for an invention which is also disclosed in the first application.

This means:

• The later application must disclose at least some part of the invention claimed in the prior application.
• The disclosure in the prior application must provide adequate support for the claims in the later application.
• New matter introduced in the later application cannot claim the benefit of the earlier filing date.

The ‘same invention’ does not require identical claims, but there must be a common disclosure that supports the claims in both applications. For more information, see MPEP 211.01(b) and 35 U.S.C. 120.

A petition to restore the benefit of a provisional application under 37 CFR 1.78(b) must include several elements. According to MPEP 211.01(a):

‘A petition under 37 CFR 1.78(b) requires: (A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application, which must be included in application data sheet (unless previously submitted in an application data sheet); (B) the petition fee as set forth in 37 CFR 1.17(m); and (C) a statement that the delay in filing the nonprovisional application or international application designating the United States within the twelve-month period set forth in 37 CFR 1.78(a)(1)(i) was unintentional.’

The petition must be filed in the subsequent application (nonprovisional or international application designating the US) within 14 months of the provisional application’s filing date. The USPTO may require additional information to verify that the delay was unintentional.

For more information on benefit restoration, visit: benefit restoration.

For more information on petition requirements, visit: petition requirements.

For more information on provisional application, visit: provisional application.

For more information on unintentional delay, visit: unintentional delay.

When claiming the benefit of a provisional application filed in a language other than English, additional requirements must be met. The MPEP states:

“If benefit is being claimed to a provisional application which was filed in a language other than English, (A) an English language translation of the provisional application, and (B) a statement that the translation is accurate, are required to be filed in the provisional application.”

If these documents were not filed in the provisional application, the applicant will be notified and given a period to:

1. File the translation and statement in the provisional application
2. Submit a confirmation in the nonprovisional application that the translation and statement were filed in the provisional application

Failure to respond to this notice in a pending nonprovisional application will result in abandonment. For more details, see MPEP § 211.01(a).

For more information on patent filing, visit: patent filing.

For more information on provisional application, visit: provisional application.

For more information on translation requirements, visit: translation requirements.

For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), which include continuations, divisionals, and continuation-in-part applications, the benefit claim must include specific information about the relationship between the applications. The MPEP states:

“For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.”

This means that when making a benefit claim, you must explicitly state whether the current application is a:

• Continuation
• Divisional
• Continuation-in-part

of the prior application. This information helps the USPTO and others understand the relationship between related applications and ensures proper examination and treatment of the claims.

Remember, this requirement is in addition to other necessary information for the benefit claim, such as the application number and filing date of the prior application.

For more information on divisional, visit: divisional.

If the specific reference to a prior-filed application is not submitted within the required time period, it is considered a waiver of any benefit claim to that prior application. The MPEP states:

This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c).

However, there is a possibility to accept a late benefit claim. The MPEP provides that: A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

Such a petition must include:

1. The reference to the prior application
2. The petition fee
3. A statement that the delay was unintentional

The Director may require additional information to verify that the delay was indeed unintentional.

For more information on unintentional delay, visit: unintentional delay.

For more information on waiver, visit: waiver.

If the required translation or statement is missing for a non-English provisional application, the following consequences apply:

1. The USPTO will issue a notice stating that the required documents are missing.
2. The applicant must supply the missing translation and/or statement in the provisional application.
3. The applicant must provide confirmation in the present application that the translation and statement were filed in the provisional application.
4. If these requirements are not met within the time period set by the USPTO, the present application will be abandoned.

As stated in the MPEP, If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned. See 37 CFR 1.78.

For more information on application abandonment, visit: application abandonment.

For more information on missing documents, visit: missing documents.

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

If the required translation and statement are not filed for a non-English provisional application, serious consequences can occur. According to MPEP ¶ 2.38:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This means that if you fail to provide the English translation and accuracy statement in the provisional application, and fail to confirm their filing in the present application, your current application may be abandoned. It’s crucial to comply with these requirements within the specified time frame to maintain your application’s active status.

For more information on application abandonment, visit: application abandonment.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

For more information on translation requirements, visit: translation requirements.

If you miss the deadline for submitting a benefit claim, you may still be able to claim the benefit by filing a petition. According to MPEP 211.02:

A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

The petition must include:

• The reference to the prior application (unless previously submitted)
• The petition fee under 37 CFR 1.17(m)
• A statement that the entire delay was unintentional

The Director may require additional information if there’s a question about whether the delay was unintentional. It’s important to note that accepting a late benefit claim is at the discretion of the USPTO and is not guaranteed.

For more information on unintentional delay, visit: unintentional delay.

For more information on USPTO, visit: USPTO.

If you fail to provide the required English translation and statement of accuracy for a non-English provisional application, your current application may be abandoned. The MPEP states:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned. See 37 CFR 1.78.”

This means you must either provide the required documents or withdraw the benefit claim to avoid abandonment of your application.

For more information on application abandonment, visit: application abandonment.

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

If you don’t file a petition to restore the benefit of a provisional application after missing the 12-month deadline, you will lose the right to claim the earlier filing date of the provisional application. The MPEP states:

“Applicant is required to delete the claim to the benefit of the prior-filed provisional application, unless applicant can establish that this application, or an intermediate nonprovisional application or international application designating the United States, was filed within 12 months of the filing date of the provisional application.”

This means your application will be treated as if it was filed on the date of the nonprovisional application, potentially affecting your ability to secure patent rights if intervening prior art exists. It’s crucial to either meet the original 12-month deadline or file a timely petition to restore the benefit to maintain your earlier filing date.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

If copendency is not established between patent applications, the benefit claim to the prior-filed application becomes improper. The MPEP clearly states:

Since the applications are not copending, the benefit claim to the prior-filed application is improper. Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications.

In such cases, the applicant must either prove that copendency exists or remove the benefit claim. Failure to do so may result in the loss of the earlier priority date, potentially affecting the patentability of the invention.

For more information on copendency, visit: copendency.

For more information on patent procedure, visit: patent procedure.

If a continuation or divisional application contains new matter not disclosed in the prior-filed application, the applicant will be required to either delete the benefit claim or change the relationship to a continuation-in-part application. This is because continuation and divisional applications cannot include new matter.

As stated in MPEP ¶ 2.10.01:

“Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:”

This form paragraph is used by examiners when they identify new matter in an application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c).

For more information on continuation application, visit: continuation application.

For more information on Divisional application, visit: Divisional application.

For more information on new matter, visit: new matter.

For more information on patent examination, visit: patent examination.

If a benefit claim is included elsewhere in the application (e.g., in an oath or declaration) and is recognized by the USPTO as shown by its inclusion on the first filing receipt, but not properly submitted in the manner specified by 37 CFR 1.78, the following applies:

• The USPTO will not require a petition and petition fee to correct the benefit claim.
• This is because the application will have been scheduled for publication based on the information concerning the benefit claim.
• However, the applicant must still submit the benefit claim in the proper manner (i.e., in an ADS or by amendment to the specification, depending on the filing date) to have a proper claim under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78.

The MPEP states: “If an applicant includes a claim to the benefit of a prior application elsewhere in the application but not in the manner specified in 37 CFR 1.78 (e.g., if the benefit claim is not present in the proper place but is included in an oath or declaration, or the application transmittal letter, or in the first sentence(s) of the specification for an application filed on or after September 16, 2012) within the time period set forth in 37 CFR 1.78, the Office will not require a petition and the petition fee under 37 CFR 1.17(m) to correct the benefit claim if the information concerning the benefit claim contained elsewhere in the application was recognized by the Office as shown by its inclusion on the first filing receipt.”

If a benefit claim is not properly made within the required time period, it is considered untimely and will not be entered. The MPEP states:

“The benefit claim filed on [1] was not entered because the required reference was not timely filed within the time period set forth in 37 CFR 1.78.”

Consequences of an untimely benefit claim include:

• Loss of the earlier priority date, which could affect the patentability of the application if intervening prior art exists.
• Inability to rely on the earlier filing date to overcome prior art references.
• Potential issues with statutory bars under 35 U.S.C. 102.

However, all is not lost if the benefit claim is untimely. The applicant may file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) or 37 CFR 1.78(e), depending on the type of benefit claim. This petition must include:

1. The required reference to the prior application
2. A petition fee
3. A statement that the entire delay was unintentional

The USPTO may require additional information to determine if the delay was truly unintentional.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on unintentional delay, visit: unintentional delay.

If an applicant includes a benefit claim in the wrong part of the application but within the required time period, the USPTO’s response depends on whether the claim is recognized:

1. If the benefit claim is recognized by the Office (shown by its inclusion on the first filing receipt), no petition or petition fee is required to correct the benefit claim. The MPEP states: If an applicant includes a claim to the benefit of a prior application elsewhere in the application but not in the manner specified in 37 CFR 1.78 (e.g., if the benefit claim is not present in the proper place but is included in an oath or declaration, or the application transmittal letter, or in the first sentence(s) of the specification for an application filed on or after September 16, 2012) within the time period set forth in 37 CFR 1.78, the Office will not require a petition and the petition fee under 37 CFR 1.17(m) to correct the benefit claim if the information concerning the benefit claim contained elsewhere in the application was recognized by the Office as shown by its inclusion on the first filing receipt.
2. If the benefit claim is not recognized by the Office (shown by its absence on the first filing receipt), a petition and petition fee under 37 CFR 1.17(m) will be required to correct the benefit claim if the correction is sought after the time period set in 37 CFR 1.78.

In both cases, the applicant must still submit the benefit claim in the proper format (i.e., in an ADS or by amendment to the specification, depending on the application’s filing date) to have a proper claim under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on filing receipt, visit: filing receipt.

If a benefit claim is filed after the required time period specified in 37 CFR 1.78, the applicant must file a petition for an unintentionally delayed benefit claim. The MPEP states:

“If a benefit claim is filed after the required time period and without a petition as required by 37 CFR 1.78, the applicant should be informed that the benefit claim was not entered and that a petition needs to be filed using form paragraph 2.39.”

The petition must include:

• The reference to the prior application (unless previously submitted)
• A petition fee under 37 CFR 1.17(m)
• A statement that the entire delay was unintentional

The Director may require additional information to determine if the delay was unintentional.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on unintentional delay, visit: unintentional delay.

Copendency refers to the requirement that two related patent applications must be pending at the same time for one to claim the benefit of the earlier filing date of the other. The MPEP states:

Copendency between the current application and the prior application is required.

This means that the later application must be filed before the earlier application is either abandoned or issued as a patent. Copendency is crucial for maintaining a continuous chain of priority between related applications.

For more information on copendency, visit: copendency.

For more information on patent applications, visit: patent applications.

‘Unintentional delay’ is a crucial concept when seeking to restore the benefit of a provisional application. The MPEP requires:

“A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional.”

While the MPEP doesn’t provide a specific definition of ‘unintentional delay’, it generally means that the failure to meet the 12-month deadline was not deliberate. The USPTO may require additional information to determine if the delay was truly unintentional:

“The Director may require additional information where there is a question whether the delay was unintentional.”

It’s important to be prepared to explain the circumstances that led to the delay if requested.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

For more information on unintentional delay, visit: unintentional delay.

According to MPEP 211, a petition to restore the benefit of a provisional application under 37 CFR 1.78(b) must include:

1. The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application (unless previously submitted)
2. The petition fee set forth in 37 CFR 1.17(m)
3. A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional

The MPEP further states:

“The Director may require additional information where there is a question whether the delay was unintentional.”

It’s important to note that this petition must be filed in the subsequent application, not the provisional application itself.

For more information on patent procedure, visit: patent procedure.

For more information on petition requirements, visit: petition requirements.

For more information on provisional application, visit: provisional application.

Filing a delayed benefit claim for a provisional application requires specific components. MPEP 211.04 outlines the requirements:

The petition must be accompanied by: (A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior provisional application (unless previously submitted); (B) a petition fee under 37 CFR 1.17(m); and (C) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional.

For petitions filed more than two years after the due date, additional explanation of the delay circumstances is required to establish that the entire delay was unintentional.

For more information on petition requirements, visit: petition requirements.

For more information on provisional application, visit: provisional application.

For more information on unintentional delay, visit: unintentional delay.

Claiming the benefit of an international application (PCT application) in a U.S. national application has specific requirements. The MPEP states:

“Pursuant to 35 U.S.C. 365(c), a regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b) may claim the benefit of the filing date of an international application which designates the United States without completing the requirements for entering the national stage under 35 U.S.C. 371.”

Requirements for claiming benefit of an international application:

• The international application must designate the United States
• The international application must be entitled to a filing date in accordance with PCT Article 11
• The later-filed U.S. application must be filed during the pendency of the international application
• The U.S. application can be filed as a continuation, divisional, or continuation-in-part of the international application (often called a “bypass” application)

This allows applicants to claim the benefit of an international application’s filing date without completing the national stage entry process under 35 U.S.C. 371.

To claim the benefit of a prior-filed provisional application under 35 U.S.C. 119(e), the following requirements must be met:

• The nonprovisional application must be filed within 12 months of the provisional application’s filing date (unless the benefit has been restored)
• The provisional application must have at least one common inventor with the nonprovisional application
• The provisional application must be entitled to a filing date and have paid the basic filing fee
• If the provisional application was filed in a language other than English, an English translation and a statement that the translation is accurate must be filed

As stated in the MPEP: “When a later-filed application is claiming the benefit of a prior-filed provisional application under 35 U.S.C. 119(e), the nonprovisional application must be filed not later than 12 months after the date on which the provisional application was filed, unless the benefit of the provisional application has been restored.”

To claim benefit to a non-English language provisional application, you must provide:

• An English translation of the non-English language provisional application
• A statement that the translation is accurate

These documents must be filed in the provisional application itself. As stated in MPEP ¶ 2.38: “An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No.[…]”

Additionally, in the present (non-provisional) application, you must confirm that the translation and statement were filed in the provisional application.

For more information on non-English language, visit: non-English language.

For more information on patent filing, visit: patent filing.

For more information on provisional application, visit: provisional application.

For more information on translation requirements, visit: translation requirements.

Benefit claims can be made under various sections of the U.S. Code, each with specific requirements:

• 35 U.S.C. 119(e): For provisional application benefits, refer to 37 CFR 1.78(a).
• 35 U.S.C. 120: For benefit claims to earlier nonprovisional applications, including the relationship (continuation, divisional, or continuation-in-part).
• 35 U.S.C. 121: For divisional applications.
• 35 U.S.C. 365(c): For national stage applications claiming benefit to PCT applications.
• 35 U.S.C. 386(c): For national stage applications claiming benefit to international design applications.

The MPEP states: “For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.”

It’s important to note that the specific requirements and time limits may vary depending on the type of benefit claim. Always refer to the latest version of the MPEP and the relevant U.S. Code sections for the most up-to-date information.

For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For an international design application to be used as a basis for claiming benefit, it must meet specific filing date requirements. MPEP § 211.01(d) states:

To obtain benefit of the filing date of a prior international design application designating the United States, the international design application must be entitled to a filing date in accordance with 37 CFR 1.1023. See 37 CFR 1.78(d)(1)(ii).

This means that the international design application must comply with the requirements set forth in 37 CFR 1.1023 to establish a valid filing date. These requirements typically include proper designation of the United States and adherence to other formal application standards.

For more information on filing date requirements, visit: filing date requirements.

Claiming benefit under these statutes allows an application to receive the earlier filing date of a prior-filed application, which can be crucial for establishing priority and overcoming prior art. However, this claim also requires that the application does not contain new matter.

The MPEP ¶ 2.10.01 states:

“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.”

If new matter is found, the applicant may need to change the application type or remove the benefit claim to maintain the new subject matter.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For more information on new matter, visit: new matter.

The abandonment of an international application in the United States is governed by specific legal provisions. According to MPEP 211.01(c), which cites 35 U.S.C. 371(d):

35 U.S.C. 371(d) indicates that failure to timely comply with the requirements of 35 U.S.C. 371(c) ‘shall be regarded as abandonment of the application by the parties thereof.’

This means that an international application designating the United States will be considered abandoned if the applicant fails to meet the requirements for entering the national stage under 35 U.S.C. 371(c) within the specified time limits. These requirements typically include submitting necessary documents, paying required fees, and providing an English translation of the application if it was not originally filed in English.

For more information on national stage entry, visit: national stage entry.

If a benefit claim is improper due to lack of copendency, the MPEP ¶ 2.11 outlines the required action:

Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications.

This means the applicant has two options:

1. Delete the benefit claim to the prior-filed application, or
2. Provide evidence to establish that copendency actually exists between the applications.

If the applicant cannot prove copendency, they must remove the benefit claim to avoid potential issues with the application’s validity or examination process.

For more information on copendency, visit: copendency.

For more information on patent procedure, visit: patent procedure.

When the required documents for a non-English provisional application are missing, the USPTO takes specific actions to notify the applicant. According to MPEP ¶ 2.38:

“Use this form paragraph to notify applicant that an English translation of the non-English language provisional application and/or a statement that the translation is accurate is required.”

The USPTO will issue an Office action informing the applicant of the missing documents and setting a time period for their submission. The applicant must then provide the missing translation and/or accuracy statement in the provisional application and confirm their filing in the present application. Failure to do so within the specified time period may result in the abandonment of the present application.

For more information on missing documents, visit: missing documents.

For more information on patent procedure, visit: patent procedure.

Yes, there is an exception for certain applications filed before November 25, 2005. According to the Examiner Note in MPEP ¶ 2.38:

“Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.”

This means that for non-provisional applications filed before November 25, 2005, it was acceptable to file the English translation and accuracy statement in the non-provisional application itself, rather than in the provisional application. For applications filed after this date, the current rules requiring filing in the provisional application apply.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

For more information on translation requirements, visit: translation requirements.

Yes, there is a time limit for filing a petition to restore the benefit of a provisional application. According to MPEP 211:

“Applicant may wish to file a petition to restore the benefit of the provisional application under 37 CFR 1.78 in the subsequent nonprovisional application or international application designating the United States if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional.”

This means you have a two-month grace period after the expiration of the initial 12-month period to file the petition. It’s crucial to act quickly if you miss the original deadline and wish to restore the benefit of your provisional application.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

Yes, there is a deadline for filing the English translation and accuracy statement for a non-English provisional application. While MPEP ¶ 2.38 doesn’t specify an exact timeframe, it indicates that the USPTO will set a time period in an Office action:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This means that when the USPTO notices that the required documents are missing, they will issue an Office action with a specific deadline. It’s crucial to comply with this deadline to avoid abandonment of your application. As a best practice, it’s advisable to file these documents as soon as possible after filing the non-English provisional application to avoid any potential issues.

For more information on patent procedure, visit: patent procedure.

The method for making a specific reference to a prior-filed application depends on when the application was filed:

• For applications filed before September 16, 2012: The specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS) in compliance with pre-AIA 37 CFR 1.76.
• For applications filed on or after September 16, 2012: The specific reference must be included in an ADS in compliance with 37 CFR 1.76.

Additionally, for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

It’s important to note that for continued prosecution applications (CPAs) filed under 37 CFR 1.53(d) (design applications under 35 U.S.C. chapter 16 only), a specific reference in the specification or ADS is not required and may not be made. For these applications, The specific reference requirement of 35 U.S.C. 120 is met by the transmittal request for the CPA which is considered to be part of the CPA.

For more information on application data sheet, visit: application data sheet.

For more information on continuation application, visit: continuation application.

For more information on Divisional application, visit: Divisional application.

For more information on specific reference, visit: specific reference.

The method for including a benefit claim in a patent application depends on the filing date:

• For applications filed before September 16, 2012: The reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS).
• For applications filed on or after September 16, 2012: The specific reference must be included in an application data sheet (ADS).

The MPEP states: “If the application was filed before September 16, 2012, the reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.”

Additionally, for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on application data sheet, visit: application data sheet.

The presence of new matter in a continuation or divisional application can significantly affect its filing date. If new matter is found, the application may lose the benefit of the earlier filing date for the new subject matter.

According to MPEP ¶ 2.10.01:

“Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:”

If the application is changed to a continuation-in-part, the new matter will have the filing date of the current application, while the previously disclosed matter retains the earlier filing date. This can have important implications for determining prior art and patent term.

For more information on continuation application, visit: continuation application.

For more information on continuation-in-part application, visit: continuation-in-part application.

For more information on Divisional application, visit: Divisional application.

For more information on new matter, visit: new matter.

How does the copendency requirement affect claiming benefit of a prior application?

The copendency requirement is a critical factor in claiming the benefit of a prior application. MPEP 211.01(b) states: To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be copending with the earlier application.

Copendency means:

• The later application must be filed before the patenting or abandonment of the prior application.
• There must be no gap in pendency between the applications in the chain.

If copendency is not maintained, the benefit claim to the earlier application will be lost. This can significantly impact the effective filing date of the later application, potentially affecting its patentability.

For detailed information on copendency, refer to MPEP 211.01(b) and 35 U.S.C. 120.

The benefit claim process for national stage applications entering from an international application under 35 U.S.C. 371 has some specific timing requirements that differ from regular applications filed under 35 U.S.C. 111(a). The MPEP states:

“If the application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, the reference to the prior application must be made during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), 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 application.”

Key differences for national stage applications include:

• The time period for submitting the benefit claim starts from the date the national stage commenced or the date of initial submission to enter the national stage.
• There are three possible deadlines, and the applicant can use the latest of these:
  1. Four months from the date the national stage commenced
  2. Four months from the date of the initial submission to enter the national stage
  3. Sixteen months from the filing date of the prior application

It’s important to carefully track these dates for national stage applications to ensure timely submission of benefit claims.

For more information on 35 U.S.C. 371, visit: 35 U.S.C. 371.

For more information on national stage application, visit: national stage application.

The ‘unintentional’ delay standard is crucial in evaluating petitions for delayed benefit claims. According to MPEP 211.04:

While the Director may require additional information whenever there is a question of whether the delay was unintentional, a person filing a petition to accept a delayed benefit claim more than two years after the date the benefit claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional.

This requirement is in addition to the standard statement of unintentional delay. For further discussion on the ‘unintentional’ delay standard, refer to MPEP § 711.03(c).

For more information on unintentional delay, visit: unintentional delay.

Claiming the benefit of an international design application under 35 U.S.C. 386(c) can potentially establish an earlier effective filing date for a nonprovisional application. This is significant because the effective filing date is used to determine which prior art is applicable during examination.

As stated in the MPEP:

“Pursuant to 35 U.S.C. 386(c), in accordance with the conditions and requirements of 35 U.S.C. 120, a nonprovisional application is entitled to the benefit of a prior international design application designating the United States.”

By claiming this benefit, the nonprovisional application can potentially use the filing date of the international design application as its effective filing date, provided all requirements are met. This earlier date can be crucial for overcoming prior art references and establishing priority in the field.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For more information on effective filing date, visit: effective filing date.

For more information on prior art, visit: prior art.

Patent examiners carefully compare the content of the continuation or divisional application with the prior-filed application to identify any new matter. If they find information not disclosed in the prior application, they will issue a notice to the applicant.

The MPEP ¶ 2.10.01 instructs examiners:

“In bracket 1, provide an example of the matter not disclosed in the prior-filed application.”

This means the examiner must specifically point out the new matter found in the application, allowing the applicant to understand and address the issue.

For more information on continuation application, visit: continuation application.

For more information on Divisional application, visit: Divisional application.

For more information on new matter, visit: new matter.

For more information on patent examination, visit: patent examination.

35 U.S.C. 365(c) is a crucial provision for claiming the benefit of an international application’s filing date in a subsequent national application. As explained in MPEP 211.01(c):

The first sentence of 35 U.S.C. 365(c) specifically provides that ‘[i]n accordance with the conditions and requirements of section 120,… a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States.’

This provision allows applicants to claim the priority of an international application in a later-filed U.S. national application, provided they meet the conditions set forth in 35 U.S.C. 120. One key condition is timing, as the MPEP notes:

The condition of 35 U.S.C. 120 relating to the time of filing requires the later application to be ‘filed before the patenting or abandonment of or termination of proceedings on the first application….’

This means that the national application must be filed while the international application is still pending to claim its benefit.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).

To properly claim the benefit of a prior application, you must include a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be included in an application data sheet (ADS). For applications filed before September 16, 2012, the reference must be in an ADS and/or in the first sentence(s) of the specification following the title.

The MPEP 211.02 states: Both 35 U.S.C. 119(e) and 120 include the requirement that the later-filed application must contain a specific reference to the prior application.

For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

For more information on ADS, visit: ADS.

For more information on divisional, visit: divisional.

For more information on specific reference, visit: specific reference.

To correct or add a benefit claim after filing your application, you need to follow specific procedures depending on the timing and circumstances:

1. If you received a filing receipt with missing or incorrect benefit claim information, you can request a corrected filing receipt. However, the Office will only grant this request if the proper reference to the prior application was included in the original filing or within the time period required by 37 CFR 1.78.
2. If you’re adding a benefit claim after the time period required by 37 CFR 1.78, you must file a petition and pay the petition fee. The petition must be accompanied by a corrected Application Data Sheet (ADS) for applications filed on or after September 16, 2012, or an amendment to the specification or a supplemental ADS for applications filed before that date.

As stated in MPEP 211.02(a): If a benefit claim is added after the time period required by 37 CFR 1.78, a petition and the petition fee are required.

Depending on the status of your application, you may also need to file:

• A Request for Continued Examination (RCE) if the application is under final rejection or has been allowed.
• A reissue application or a request for a certificate of correction if the application has already issued as a patent.

It’s important to note that you cannot add an incorporation by reference statement to a benefit claim after the filing date, as this would be considered new matter.

For more information on ADS, visit: ADS.

For more information on RCE, visit: RCE.

To claim the benefit of a prior-filed application, you must include a specific reference to the prior-filed application in your current application. The method of including this reference depends on when your application was filed:

• For applications filed before September 16, 2012: Include the reference in the first sentence(s) of the specification following the title or in an application data sheet (ADS) compliant with pre-AIA 37 CFR 1.76.
• For applications filed on or after September 16, 2012: Include the reference in an ADS compliant with 37 CFR 1.76.

The MPEP states: If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78. (MPEP § 211)

For more information on ADS, visit: ADS.

For more information on prior-filed application, visit: prior-filed application.

For more information on specific reference, visit: specific reference.

To claim benefit to a non-English language provisional application, you must:

• File an English translation of the non-English language provisional application
• Provide a statement that the translation is accurate
• File both the translation and the statement in the provisional application
• Confirm in the present application that the translation and statement were filed in the provisional application

According to MPEP ¶ 2.38, “An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No.[3]. See 37 CFR 1.78.”

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

If an applicant misses the 12-month deadline for claiming the benefit of a provisional application, they may be able to restore the benefit under certain conditions:

1. The nonprovisional application must be filed within 14 months of the provisional application’s filing date
2. A petition under 37 CFR 1.78(b) must be filed in the nonprovisional application
3. The delay in filing must be unintentional

The MPEP states: “If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

The petition must include:

• The reference to the provisional application
• The petition fee
• A statement that the delay was unintentional

Delayed benefit claims in international applications have specific procedures. According to MPEP 211.04:

A petition under 37 CFR 1.78 for accepting an unintentionally delayed benefit claim and the petition fee under 37 CFR 1.17(m) are required to add a benefit claim under 35 U.S.C. 120 and 365(c) in an abandoned international application designating the United States, even when the international application did not enter the national stage under 35 U.S.C. 371.

For international applications not filed with the U.S. Receiving Office and not a nonprovisional application, the petition may be filed in the earliest nonprovisional application claiming benefit to the international application. This petition will be treated as if filed in the international application itself.

For more information on international applications, visit: international applications.

For more information on patent procedure, visit: patent procedure.

No, MPEP ¶ 2.11 does not apply to benefit claims for provisional applications. The MPEP explicitly states:

Do not use this form paragraph for benefit claims under 35 U.S.C. 119(e) to provisional applications.

This means that the copendency requirements and procedures outlined in MPEP ¶ 2.11 are specifically for non-provisional applications claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c). Provisional applications have different rules and procedures for claiming benefit, which are covered under 35 U.S.C. 119(e) and other sections of the MPEP.

For more information on benefit claims, visit: benefit claims.

For more information on patent procedure, visit: patent procedure.

If you filed a translation of the non-English provisional application and a statement of accuracy in the nonprovisional application before November 25, 2005, you do not need to provide them again. The MPEP ¶ 2.38 states in the Examiner Note:

“Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.”

This exception only applies to translations filed in the nonprovisional application before the specified date. For all other cases, the translation and statement must be filed in the provisional application itself.

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

If you submitted the reference to the prior application within the required time period but in the wrong location, you may not need to file a petition. The MPEP provides guidance on this situation:

If the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78 but was not included in the location in the application required by the rule (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt, the petition under 37 CFR 1.78 and the petition fee under 37 CFR 1.17(m) are not required. (MPEP § 211)

However, you are still required to submit the reference in compliance with 37 CFR 1.78. This means:

• For applications filed on or after September 16, 2012: File an ADS in compliance with 37 CFR 1.76 with the reference.
• For applications filed before September 16, 2012: File either an amendment to the first sentence(s) of the specification or an ADS in compliance with pre-AIA 37 CFR 1.76.

For more information on petition requirements, visit: petition requirements.

No, the English translation and accuracy statement for a non-English provisional application cannot be filed in the non-provisional application. They must be filed in the provisional application itself. MPEP ¶ 2.38 is explicit about this requirement:

“An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No.[3].”

However, there is an exception to this rule. The MPEP states:

“Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.”

This means that for applications filed before November 25, 2005, it was acceptable to file these documents in the non-provisional application. For all applications after this date, the translation and statement must be filed in the provisional application, with a confirmation in the non-provisional application that this has been done.

For more information on patent procedure, visit: patent procedure.

Generally, the English translation and accuracy statement for a non-English provisional application must be filed in the provisional application itself, not in the nonprovisional application. However, there is an exception:

As noted in the MPEP, Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.

This means:

• For applications filed on or after November 25, 2005, the translation and statement must be filed in the provisional application.
• For applications filed before November 25, 2005, it was acceptable to file these documents in the nonprovisional application.

It’s important to follow the current requirement of filing these documents in the provisional application to ensure proper benefit claim.

For more information on filing requirements, visit: filing requirements.

For more information on nonprovisional application, visit: nonprovisional application.

For more information on provisional application, visit: provisional application.

No, you cannot file a petition to restore the benefit of a provisional application in the provisional application itself. According to the MPEP:

“A petition to restore the benefit of a provisional application must be filed in the subsequent application.”

This means you must file the petition in the nonprovisional application or the international application designating the United States that is seeking to claim the benefit of the provisional application. This is because the provisional application itself is not examined and automatically expires after 12 months. The petition is a request to restore the right to claim the benefit in a subsequent application, not to extend the life of the provisional application.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

Yes, you can delete a benefit claim, but it’s important to understand the process and potential implications:

1. For applications filed on or after September 16, 2012, you can delete a benefit claim by filing a corrected Application Data Sheet (ADS) that removes the reference to the prior-filed application.
2. For applications filed before September 16, 2012, you can delete a benefit claim by amending the specification (if the claim is in the specification) or by submitting a supplemental ADS to delete references to prior applications.

According to MPEP 211.02(a): The examiner should consider whether any new prior art may now be available if a benefit claim is deleted.

Important considerations:

• Deleting a benefit claim may expose your application to additional prior art, potentially affecting its patentability.
• If you delete a benefit claim after final rejection or allowance, the amendment will be treated under special rules (37 CFR 1.116 or 1.312, respectively).
• Deleting a benefit claim may be seen as intentionally waiving the benefit claim. If you later try to reinstate it, the USPTO may not accept it as unintentionally delayed.
• In a Continued Prosecution Application (CPA), you cannot delete the reference to the prior application with the same application number.

Always carefully consider the implications before deleting a benefit claim, and consult with a patent attorney if you’re unsure about the consequences.

For more information on ADS, visit: ADS.

For more information on CPA, visit: CPA.

For more information on prior art, visit: prior art.

Yes, there are certain situations where a petition and petition fee are not required to correct a timely submitted benefit claim. According to the MPEP, these situations include:

• Changing the relationship of the applications (e.g., from “continuation” to “continuation-in-part” or vice versa)
• Changing the filing date of a prior-filed nonprovisional or provisional application
• Changing a benefit claim of a prior-filed provisional application from 35 U.S.C. 120 to 35 U.S.C. 119(e) during the pendency of the later-filed application

Additionally, if the benefit claim was included elsewhere in the application (e.g., in an oath, declaration, or transmittal letter) within the required time period and was recognized by the Office as shown on the first filing receipt, a petition is not required. However, the applicant must still submit the benefit claim in the proper format (i.e., in an Application Data Sheet or by amending the specification for applications filed before September 16, 2012).

Note: If the application has already issued as a patent, corrections to benefit claims that would affect the patent term cannot be made by a certificate of correction or in a reissue application.

Yes, there are exceptions to the benefit claim requirements for design applications. The MPEP specifically notes:

“Examiner Note: 1. Use this form paragraph only for original applications filed under 35 U.S.C. 111(a) on or after November 29, 2000 and for national stage applications under 35 U.S.C. 371. DO NOT use for design applications.”

This note indicates that the standard benefit claim requirements and procedures outlined in this section of the MPEP do not apply to design applications. Design applications have different rules and requirements for claiming benefit of earlier filing dates.

Key points about benefit claims in design applications:

• Design applications can claim the benefit of an earlier filed design application or an earlier filed provisional application.
• The rules for claiming benefit in design applications are generally less stringent than those for utility applications.
• Specific requirements for design application benefit claims can be found in MPEP 1504.20.

It’s important to consult the specific rules and guidelines for design applications when dealing with benefit claims in this context, as they differ from the requirements for utility applications.

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

To claim the benefit of an earlier filing date under 35 U.S.C. 120, the following requirements must be met:

• The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application
• 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
• The later-filed application must contain a specific reference to the prior application
• The later-filed application must be filed before the patenting or abandonment of or termination of proceedings on the first application

As stated in the MPEP: “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.”

Copendency refers to the requirement that a later-filed application claiming benefit of a prior application must be filed before the prior application is patented, abandoned, or proceedings are terminated. Copendency is crucial because:

• It establishes a continuous chain of pending applications
• It allows the later application to claim the earlier filing date
• Without copendency, the benefit claim is improper

As stated in MPEP 211.01(b): “Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”

A ‘bypass’ application is:

• A regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b)
• It claims benefit of an international application’s filing date without entering the national stage under 35 U.S.C. 371
• It can be filed as a continuation, divisional, or continuation-in-part of the international application

MPEP 211.01(c) explains: “Rather than submitting a national stage application under 35 U.S.C. 371, applicant may file a continuation, divisional, or continuation-in-part of an international (PCT) application under 35 U.S.C. 111(a). Such applications are often referred to as ‘bypass’ applications.”

If a benefit claim to a provisional application lacks proper indication of an intermediate application:

• The Office may not recognize the benefit claim
• The benefit claim may not appear on the filing receipt
• A petition under 37 CFR 1.78(c) and petition fee may be required to correct the benefit claim

MPEP 211.01(b) states: “If a benefit claim to a provisional application is submitted without an indication that an intermediate application directly claims the benefit of the provisional application and the instant nonprovisional application is not filed within the 12 month period (or 14 month period if the benefit of the provisional application has been restored pursuant to 37 CFR 1.78(b)) or the relationship between each nonprovisional application is not indicated, the Office will not recognize such benefit claim and will not include the benefit claim on the filing receipt.”

To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:

• The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
• The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
• The later-filed application must contain a specific reference to the prior-filed application
• The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78

Failure to timely submit the reference to the prior-filed application within the time periods specified in 37 CFR 1.78 is considered a waiver of any benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application. See 37 CFR 1.78(d)(3)(iii). The time periods are not extendable.

If the reference to the prior-filed application is submitted after the time period provided by 37 CFR 1.78, a petition and the petition fee under 37 CFR 1.17(m) would be required to accept the delayed claim. The petition must be accompanied by:

• The reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior-filed application
• The petition fee
• A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

The benefit of a provisional application can be restored if the nonprovisional application is filed within 14 months of the provisional application filing date. To restore the benefit:

1. File a petition under 37 CFR 1.78(b) in the nonprovisional application
2. Include the reference to the provisional application in an application data sheet
3. Pay the petition fee set in 37 CFR 1.17(m)
4. Provide a statement that the delay in filing was unintentional

As stated in MPEP 211.01(a): “If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

The MPEP ¶ 2.11 mentions several U.S. Code sections relevant to claiming the benefit of an earlier filing date:

This application is claiming the benefit of prior-filed application No.[1] under 35 U.S.C. 120, 121, 365(c), or 386(c).

These sections cover different scenarios:

• 35 U.S.C. 120: Benefit of earlier filing date in the United States
• 35 U.S.C. 121: Divisional applications
• 35 U.S.C. 365(c): Benefit of earlier filing date; national application
• 35 U.S.C. 386(c): Benefit of earlier filing date; international design application

Each of these sections provides specific conditions under which an application can claim the benefit of an earlier filing date.

For more information on earlier filing date, visit: earlier filing date.

For more information on patent law, visit: patent law.

For a non-English provisional application, the English translation and accuracy statement must be filed in the provisional application itself, not in the non-provisional application claiming its benefit. MPEP ¶ 2.38 clearly states:

“An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No.[…]”

Additionally, in the non-provisional application claiming benefit, you must provide confirmation that these documents were filed in the provisional application. This two-step process ensures proper documentation and compliance with 37 CFR 1.78.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

The location of the benefit claim reference depends on the filing date of the application:

• For applications filed before September 16, 2012: The reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS).
• For applications filed on or after September 16, 2012: The specific reference must be included in an application data sheet (ADS).

The MPEP states: “If the application was filed before September 16, 2012, the reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.”

It’s important to note that for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must also include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

For more information on application data sheet, visit: application data sheet.

For more information on divisional, visit: divisional.

According to the MPEP, a petition to restore the benefit of a provisional application should be addressed to:

“Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.”

It’s important to note that this petition must be filed in the subsequent nonprovisional application or international application designating the United States, not in the provisional application itself. Always ensure you’re following the most current USPTO guidelines for petition submissions, as procedures may be updated over time.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

The English translation of a non-English provisional application must be filed in the provisional application itself, not in the non-provisional application claiming benefit. According to MPEP ¶ 2.38:

“An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No.[3].”

Additionally, you must confirm in your current application that the translation and statement were filed in the provisional application.

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

For those seeking more detailed information on benefit claims under 35 U.S.C. 386(c), the Manual of Patent Examining Procedure (MPEP) provides a specific reference. According to MPEP § 211.01(d):

See MPEP § 2920.05(e) for additional information pertaining to benefit claims under 35 U.S.C. 386(c).

This section of the MPEP offers comprehensive guidance on the intricacies of claiming benefit to international design applications, including procedural requirements and practical considerations for patent applicants and examiners.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For more information on benefit claims, visit: benefit claims.

The timing for submitting a specific reference to a prior-filed application depends on the type of application:

• For utility or plant applications filed under 35 U.S.C. 111(a): The specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
• For national stage applications under 35 U.S.C. 371: The specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), 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 application.

It’s important to note that This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s).

For more information on filing deadline, visit: filing deadline.

For more information on specific reference, visit: specific reference.

The ability to claim benefit under 35 U.S.C. 386(c) for international design applications is subject to specific timing requirements. According to MPEP § 211.01(d):

37 CFR 1.78(j) provides that benefit under 35 U.S.C. 386(c) with respect to an international design application can only be claimed in nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.

This means that to claim the benefit of an international design application, the claiming application must have been filed on or after May 13, 2015. This date is significant as it marks the implementation of certain provisions of the Patent Law Treaties Implementation Act of 2012.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For more information on filing date requirements, visit: filing date requirements.

According to 37 CFR 1.78(j), benefit claims under 35 U.S.C. 386(c) can only be made in specific types of applications filed on or after May 13, 2015. The MPEP states:

“37 CFR 1.78(j) provides that benefit under 35 U.S.C. 386(c) with respect to an international design application can only be claimed in nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.”

This means that applications filed before May 13, 2015, cannot claim the benefit of an international design application under 35 U.S.C. 386(c). It’s important for applicants to be aware of this date restriction when considering their benefit claims.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

If you missed the deadline for filing a benefit claim, you may still be able to claim the benefit by filing a petition for an unintentionally delayed benefit claim. The process differs based on the type of benefit claim:

• For benefit claims under 35 U.S.C. 119(e): File a petition under 37 CFR 1.78(c)
• For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c): File a petition under 37 CFR 1.78(e)

The MPEP states: “If applicant desires the benefit under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c) based upon a previously filed application, applicant must file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) for benefit claims under 35 U.S.C. 119(e) or under 37 CFR 1.78(e) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c).”

The petition must include:

1. The reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior application (unless previously submitted)
2. A petition fee under 37 CFR 1.17(m)
3. A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional

The Director may require additional information if there’s a question about whether the delay was unintentional.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on petition fee, visit: petition fee.

For more information on unintentional delay, visit: unintentional delay.

If you miss the 12-month deadline for claiming the benefit of a provisional application, you have two main options:

1. Delete the claim to the benefit of the prior-filed provisional application.
2. File a petition to restore the benefit of the provisional application.

The MPEP states:

“Alternatively, applicant may wish to file a petition to restore the benefit of the provisional application under 37 CFR 1.78 in the subsequent nonprovisional application or international application designating the United States if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional.”

This petition must be filed in the subsequent application and include specific requirements, such as a reference to the provisional application, a petition fee, and a statement that the delay was unintentional.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

The time limit for submitting a benefit claim depends on the type of application:

• For utility or plant applications filed under 35 U.S.C. 111(a), the specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
• For national stage applications under 35 U.S.C. 371, the specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced, 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 application.

As stated in MPEP 211.02: This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c).

For more information on national stage application, visit: national stage application.

For more information on time limit, visit: time limit.

The time limit for filing a benefit claim depends on the type of application:

• For applications filed under 35 U.S.C. 111(a), the reference must be submitted within the later of:
  • Four months from the actual filing date of the application, or
  • Sixteen months from the filing date of the prior application
• For nonprovisional applications entering the national stage from an international application under 35 U.S.C. 371, the reference must be made within the later of:
  • Four months from the date on which the national stage commenced
  • Four months from the date of the initial submission to enter the national stage
  • Sixteen months from the filing date of the prior application

As stated in the MPEP: “If the application is an application filed under 35 U.S.C. 111(a), the reference to the prior application must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.”

For more information on 35 U.S.C. 111(a), visit: 35 U.S.C. 111(a).

For more information on 35 U.S.C. 371, visit: 35 U.S.C. 371.

For more information on time limit, visit: time limit.

The time limit for claiming benefit of a prior application depends on the type of application:

• For utility or plant applications filed under 35 U.S.C. 111(a), the benefit claim must be made 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
• For nonprovisional applications entering the national stage from an international application under 35 U.S.C. 371, the benefit claim must be made within the later of:
  • Four months from the date on which the national stage commenced
  • Four months from the date of the initial submission to enter the national stage
  • Sixteen months from the filing date of the prior application

As stated in the MPEP: “This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c) unless a petition to accept an unintentionally delayed benefit claim is granted.”

For more information on 35 U.S.C. 111(a), visit: 35 U.S.C. 111(a).

For more information on 35 U.S.C. 371, visit: 35 U.S.C. 371.

For more information on time limit, visit: time limit.

MPEP ¶ 2.15 provides guidance on how to properly claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c). It outlines the requirements for including a specific reference to the prior-filed application and the timeframes within which this reference must be submitted.

The paragraph states: If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78. This means that applicants must explicitly reference the prior application to claim its benefits.

For more information on specific reference, visit: specific reference.

Form Paragraph 2.38 in the MPEP serves several important purposes regarding non-English provisional applications:

1. It notifies the applicant that an English translation and/or a statement of translation accuracy is required for a non-English language provisional application.
2. It informs the applicant about the specific documents that are missing from their application.
3. It provides clear instructions on what the applicant needs to do to rectify the situation.
4. It warns the applicant about the potential consequences of not providing the required documents.

The MPEP states: Use this form paragraph to notify applicant that an English translation of the non-English language provisional application and/or a statement that the translation is accurate is required.

This form paragraph is a crucial tool for patent examiners to communicate requirements and potential issues to applicants, ensuring that all necessary documents are properly filed for claiming benefit to a non-English provisional application.

For more information on patent examination, visit: patent examination.

For more information on USPTO communication, visit: USPTO communication.

If a benefit claim is not filed within the required time period, it may still be accepted through a petition process. According to MPEP ¶ 2.15:

A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

The petition must include:

1. The reference to the prior application (unless previously submitted)
2. The petition fee under 37 CFR 1.17(m)
3. A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

The Director may request additional information if there’s a question about whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

For more information on unintentional delay, visit: unintentional delay.

The MPEP does not specify a fixed deadline for submitting the English translation of a non-English provisional application. However, it indicates that the translation must be provided within a time period set by the USPTO. According to MPEP ¶ 2.38:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This suggests that the USPTO will set a specific deadline in an Office action, and you must comply with this deadline to avoid abandonment of your application.

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

The deadline for submitting a benefit claim depends on the type of application:

• For utility or plant applications filed under 35 U.S.C. 111(a): Submit within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
• For national stage applications under 35 U.S.C. 371: Submit within the later of four months from the date on which the national stage commenced, 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 application.

The MPEP emphasizes: This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c). (MPEP § 211)

For more information on national stage application, visit: national stage application.

The deadline for filing a benefit claim depends on the type of application:

• For applications filed under 35 U.S.C. 111(a), the reference must be submitted within the later of:
  • Four months from the actual filing date of the application, or
  • Sixteen months from the filing date of the prior application
• For nonprovisional applications entering the national stage from an international application under 35 U.S.C. 371, the reference must be made within the later of:
  • Four months from the date on which the national stage commenced
  • Four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage
  • Sixteen months from the filing date of the prior application

As stated in the MPEP: “If the application is an application filed under 35 U.S.C. 111(a), the reference to the prior application must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.”

For more information on 35 U.S.C. 111(a), visit: 35 U.S.C. 111(a).

For more information on 35 U.S.C. 371, visit: 35 U.S.C. 371.

For more information on filing deadline, visit: filing deadline.

For more information on national stage application, visit: national stage application.

Copendency is a crucial requirement when claiming the benefit of a prior-filed nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c). The MPEP defines copendency as follows:

“Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”

Key points about copendency:

• The later-filed application must be filed before the prior application patents, is abandoned, or proceedings are terminated
• If the prior application issues as a patent, the later-filed application can be filed on the same date the patent issues
• If the prior application is abandoned, the later-filed application must be filed before the abandonment
• Without copendency, the later-filed application cannot claim the benefit of the prior application’s filing date

Applicants should be aware of the copendency requirement to ensure their benefit claims are valid.

Claiming priority to an international design application can provide significant benefits for nonprovisional applications. According to MPEP § 211.01(d):

Pursuant to 35 U.S.C. 386(c), in accordance with the conditions and requirements of 35 U.S.C. 120, a nonprovisional application is entitled to the benefit of a prior international design application designating the United States.

This means that a nonprovisional application can claim the earlier filing date of an international design application, potentially providing an earlier priority date for the claimed invention.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For more information on nonprovisional application, visit: nonprovisional application.

Under 35 U.S.C. 386(c), a nonprovisional application can claim the benefit of a prior international design application designating the United States, subject to the conditions and requirements of 35 U.S.C. 120. This provision allows applicants to establish an earlier effective filing date for their nonprovisional applications based on their international design applications.

As stated in the MPEP:

“Pursuant to 35 U.S.C. 386(c), in accordance with the conditions and requirements of 35 U.S.C. 120, a nonprovisional application is entitled to the benefit of a prior international design application designating the United States.”

This benefit claim can be crucial for establishing priority and overcoming prior art references.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For more information on nonprovisional application, visit: nonprovisional application.

What is the ‘specific reference’ requirement for claiming benefit of a prior-filed application?

The ‘specific reference’ requirement is a crucial aspect of claiming the benefit of a prior-filed application. According to MPEP 211.01, To claim the benefit of a prior-filed application, the later-filed application must contain a specific reference to the prior-filed application. This means that:

• The specific reference must be made in the first sentence(s) of the specification or in an application data sheet (ADS).
• It should include the relationship between the applications (e.g., continuation, divisional, or continuation-in-part).
• The prior application’s serial number and filing date must be provided.

For example: ‘This application is a continuation of Application No. 12/345,678, filed January 1, 2020.’

Failure to provide this specific reference can result in the loss of the benefit claim. For more details, refer to MPEP 211 and 37 CFR 1.78.

What is the ‘same invention’ requirement for claiming benefit under 35 U.S.C. 120?

The ‘same invention’ requirement is a crucial aspect of claiming benefit under 35 U.S.C. 120. MPEP 211.01(b) explains: The second application must be an application for a patent for an invention which is also disclosed in the first application.

This means:

• The later application must disclose at least some part of the invention claimed in the prior application.
• The disclosure in the prior application must provide adequate support for the claims in the later application.
• New matter introduced in the later application cannot claim the benefit of the earlier filing date.

The ‘same invention’ does not require identical claims, but there must be a common disclosure that supports the claims in both applications. For more information, see MPEP 211.01(b) and 35 U.S.C. 120.

To claim the benefit of an earlier filing date under 35 U.S.C. 120, the following requirements must be met:

• The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application
• 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
• The later-filed application must contain a specific reference to the prior application
• The later-filed application must be filed before the patenting or abandonment of or termination of proceedings on the first application

As stated in the MPEP: “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.”

A petition to restore the benefit of a provisional application under 37 CFR 1.78(b) must include several elements. According to MPEP 211.01(a):

‘A petition under 37 CFR 1.78(b) requires: (A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application, which must be included in application data sheet (unless previously submitted in an application data sheet); (B) the petition fee as set forth in 37 CFR 1.17(m); and (C) a statement that the delay in filing the nonprovisional application or international application designating the United States within the twelve-month period set forth in 37 CFR 1.78(a)(1)(i) was unintentional.’

The petition must be filed in the subsequent application (nonprovisional or international application designating the US) within 14 months of the provisional application’s filing date. The USPTO may require additional information to verify that the delay was unintentional.

For more information on benefit restoration, visit: benefit restoration.

For more information on petition requirements, visit: petition requirements.

For more information on provisional application, visit: provisional application.

For more information on unintentional delay, visit: unintentional delay.

When claiming the benefit of a provisional application filed in a language other than English, additional requirements must be met. The MPEP states:

“If benefit is being claimed to a provisional application which was filed in a language other than English, (A) an English language translation of the provisional application, and (B) a statement that the translation is accurate, are required to be filed in the provisional application.”

If these documents were not filed in the provisional application, the applicant will be notified and given a period to:

1. File the translation and statement in the provisional application
2. Submit a confirmation in the nonprovisional application that the translation and statement were filed in the provisional application

Failure to respond to this notice in a pending nonprovisional application will result in abandonment. For more details, see MPEP § 211.01(a).

For more information on patent filing, visit: patent filing.

For more information on provisional application, visit: provisional application.

For more information on translation requirements, visit: translation requirements.

Copendency refers to the requirement that a later-filed application claiming benefit of a prior application must be filed before the prior application is patented, abandoned, or proceedings are terminated. Copendency is crucial because:

• It establishes a continuous chain of pending applications
• It allows the later application to claim the earlier filing date
• Without copendency, the benefit claim is improper

As stated in MPEP 211.01(b): “Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”

A ‘bypass’ application is:

• A regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b)
• It claims benefit of an international application’s filing date without entering the national stage under 35 U.S.C. 371
• It can be filed as a continuation, divisional, or continuation-in-part of the international application

MPEP 211.01(c) explains: “Rather than submitting a national stage application under 35 U.S.C. 371, applicant may file a continuation, divisional, or continuation-in-part of an international (PCT) application under 35 U.S.C. 111(a). Such applications are often referred to as ‘bypass’ applications.”

For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), which include continuations, divisionals, and continuation-in-part applications, the benefit claim must include specific information about the relationship between the applications. The MPEP states:

“For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.”

This means that when making a benefit claim, you must explicitly state whether the current application is a:

• Continuation
• Divisional
• Continuation-in-part

of the prior application. This information helps the USPTO and others understand the relationship between related applications and ensures proper examination and treatment of the claims.

Remember, this requirement is in addition to other necessary information for the benefit claim, such as the application number and filing date of the prior application.

For more information on divisional, visit: divisional.

If the specific reference to a prior-filed application is not submitted within the required time period, it is considered a waiver of any benefit claim to that prior application. The MPEP states:

This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c).

However, there is a possibility to accept a late benefit claim. The MPEP provides that: A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

Such a petition must include:

1. The reference to the prior application
2. The petition fee
3. A statement that the delay was unintentional

The Director may require additional information to verify that the delay was indeed unintentional.

For more information on unintentional delay, visit: unintentional delay.

For more information on waiver, visit: waiver.

If the required translation or statement is missing for a non-English provisional application, the following consequences apply:

1. The USPTO will issue a notice stating that the required documents are missing.
2. The applicant must supply the missing translation and/or statement in the provisional application.
3. The applicant must provide confirmation in the present application that the translation and statement were filed in the provisional application.
4. If these requirements are not met within the time period set by the USPTO, the present application will be abandoned.

As stated in the MPEP, If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned. See 37 CFR 1.78.

For more information on application abandonment, visit: application abandonment.

For more information on missing documents, visit: missing documents.

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

If the required translation and statement are not filed for a non-English provisional application, serious consequences can occur. According to MPEP ¶ 2.38:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This means that if you fail to provide the English translation and accuracy statement in the provisional application, and fail to confirm their filing in the present application, your current application may be abandoned. It’s crucial to comply with these requirements within the specified time frame to maintain your application’s active status.

For more information on application abandonment, visit: application abandonment.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

For more information on translation requirements, visit: translation requirements.

If you miss the deadline for submitting a benefit claim, you may still be able to claim the benefit by filing a petition. According to MPEP 211.02:

A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

The petition must include:

• The reference to the prior application (unless previously submitted)
• The petition fee under 37 CFR 1.17(m)
• A statement that the entire delay was unintentional

The Director may require additional information if there’s a question about whether the delay was unintentional. It’s important to note that accepting a late benefit claim is at the discretion of the USPTO and is not guaranteed.

For more information on unintentional delay, visit: unintentional delay.

For more information on USPTO, visit: USPTO.

If you fail to provide the required English translation and statement of accuracy for a non-English provisional application, your current application may be abandoned. The MPEP states:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned. See 37 CFR 1.78.”

This means you must either provide the required documents or withdraw the benefit claim to avoid abandonment of your application.

For more information on application abandonment, visit: application abandonment.

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

If you don’t file a petition to restore the benefit of a provisional application after missing the 12-month deadline, you will lose the right to claim the earlier filing date of the provisional application. The MPEP states:

“Applicant is required to delete the claim to the benefit of the prior-filed provisional application, unless applicant can establish that this application, or an intermediate nonprovisional application or international application designating the United States, was filed within 12 months of the filing date of the provisional application.”

This means your application will be treated as if it was filed on the date of the nonprovisional application, potentially affecting your ability to secure patent rights if intervening prior art exists. It’s crucial to either meet the original 12-month deadline or file a timely petition to restore the benefit to maintain your earlier filing date.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

If copendency is not established between patent applications, the benefit claim to the prior-filed application becomes improper. The MPEP clearly states:

Since the applications are not copending, the benefit claim to the prior-filed application is improper. Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications.

In such cases, the applicant must either prove that copendency exists or remove the benefit claim. Failure to do so may result in the loss of the earlier priority date, potentially affecting the patentability of the invention.

For more information on copendency, visit: copendency.

For more information on patent procedure, visit: patent procedure.

If a continuation or divisional application contains new matter not disclosed in the prior-filed application, the applicant will be required to either delete the benefit claim or change the relationship to a continuation-in-part application. This is because continuation and divisional applications cannot include new matter.

As stated in MPEP ¶ 2.10.01:

“Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:”

This form paragraph is used by examiners when they identify new matter in an application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c).

For more information on continuation application, visit: continuation application.

For more information on Divisional application, visit: Divisional application.

For more information on new matter, visit: new matter.

For more information on patent examination, visit: patent examination.

If a benefit claim to a provisional application lacks proper indication of an intermediate application:

• The Office may not recognize the benefit claim
• The benefit claim may not appear on the filing receipt
• A petition under 37 CFR 1.78(c) and petition fee may be required to correct the benefit claim

MPEP 211.01(b) states: “If a benefit claim to a provisional application is submitted without an indication that an intermediate application directly claims the benefit of the provisional application and the instant nonprovisional application is not filed within the 12 month period (or 14 month period if the benefit of the provisional application has been restored pursuant to 37 CFR 1.78(b)) or the relationship between each nonprovisional application is not indicated, the Office will not recognize such benefit claim and will not include the benefit claim on the filing receipt.”

If a benefit claim is included elsewhere in the application (e.g., in an oath or declaration) and is recognized by the USPTO as shown by its inclusion on the first filing receipt, but not properly submitted in the manner specified by 37 CFR 1.78, the following applies:

• The USPTO will not require a petition and petition fee to correct the benefit claim.
• This is because the application will have been scheduled for publication based on the information concerning the benefit claim.
• However, the applicant must still submit the benefit claim in the proper manner (i.e., in an ADS or by amendment to the specification, depending on the filing date) to have a proper claim under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78.

The MPEP states: “If an applicant includes a claim to the benefit of a prior application elsewhere in the application but not in the manner specified in 37 CFR 1.78 (e.g., if the benefit claim is not present in the proper place but is included in an oath or declaration, or the application transmittal letter, or in the first sentence(s) of the specification for an application filed on or after September 16, 2012) within the time period set forth in 37 CFR 1.78, the Office will not require a petition and the petition fee under 37 CFR 1.17(m) to correct the benefit claim if the information concerning the benefit claim contained elsewhere in the application was recognized by the Office as shown by its inclusion on the first filing receipt.”

If a benefit claim is not properly made within the required time period, it is considered untimely and will not be entered. The MPEP states:

“The benefit claim filed on [1] was not entered because the required reference was not timely filed within the time period set forth in 37 CFR 1.78.”

Consequences of an untimely benefit claim include:

• Loss of the earlier priority date, which could affect the patentability of the application if intervening prior art exists.
• Inability to rely on the earlier filing date to overcome prior art references.
• Potential issues with statutory bars under 35 U.S.C. 102.

However, all is not lost if the benefit claim is untimely. The applicant may file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) or 37 CFR 1.78(e), depending on the type of benefit claim. This petition must include:

1. The required reference to the prior application
2. A petition fee
3. A statement that the entire delay was unintentional

The USPTO may require additional information to determine if the delay was truly unintentional.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on unintentional delay, visit: unintentional delay.

If an applicant includes a benefit claim in the wrong part of the application but within the required time period, the USPTO’s response depends on whether the claim is recognized:

1. If the benefit claim is recognized by the Office (shown by its inclusion on the first filing receipt), no petition or petition fee is required to correct the benefit claim. The MPEP states: If an applicant includes a claim to the benefit of a prior application elsewhere in the application but not in the manner specified in 37 CFR 1.78 (e.g., if the benefit claim is not present in the proper place but is included in an oath or declaration, or the application transmittal letter, or in the first sentence(s) of the specification for an application filed on or after September 16, 2012) within the time period set forth in 37 CFR 1.78, the Office will not require a petition and the petition fee under 37 CFR 1.17(m) to correct the benefit claim if the information concerning the benefit claim contained elsewhere in the application was recognized by the Office as shown by its inclusion on the first filing receipt.
2. If the benefit claim is not recognized by the Office (shown by its absence on the first filing receipt), a petition and petition fee under 37 CFR 1.17(m) will be required to correct the benefit claim if the correction is sought after the time period set in 37 CFR 1.78.

In both cases, the applicant must still submit the benefit claim in the proper format (i.e., in an ADS or by amendment to the specification, depending on the application’s filing date) to have a proper claim under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on filing receipt, visit: filing receipt.

If a benefit claim is filed after the required time period specified in 37 CFR 1.78, the applicant must file a petition for an unintentionally delayed benefit claim. The MPEP states:

“If a benefit claim is filed after the required time period and without a petition as required by 37 CFR 1.78, the applicant should be informed that the benefit claim was not entered and that a petition needs to be filed using form paragraph 2.39.”

The petition must include:

• The reference to the prior application (unless previously submitted)
• A petition fee under 37 CFR 1.17(m)
• A statement that the entire delay was unintentional

The Director may require additional information to determine if the delay was unintentional.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on unintentional delay, visit: unintentional delay.

Copendency refers to the requirement that two related patent applications must be pending at the same time for one to claim the benefit of the earlier filing date of the other. The MPEP states:

Copendency between the current application and the prior application is required.

This means that the later application must be filed before the earlier application is either abandoned or issued as a patent. Copendency is crucial for maintaining a continuous chain of priority between related applications.

For more information on copendency, visit: copendency.

For more information on patent applications, visit: patent applications.

‘Unintentional delay’ is a crucial concept when seeking to restore the benefit of a provisional application. The MPEP requires:

“A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional.”

While the MPEP doesn’t provide a specific definition of ‘unintentional delay’, it generally means that the failure to meet the 12-month deadline was not deliberate. The USPTO may require additional information to determine if the delay was truly unintentional:

“The Director may require additional information where there is a question whether the delay was unintentional.”

It’s important to be prepared to explain the circumstances that led to the delay if requested.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

For more information on unintentional delay, visit: unintentional delay.

According to MPEP 211, a petition to restore the benefit of a provisional application under 37 CFR 1.78(b) must include:

1. The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application (unless previously submitted)
2. The petition fee set forth in 37 CFR 1.17(m)
3. A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional

The MPEP further states:

“The Director may require additional information where there is a question whether the delay was unintentional.”

It’s important to note that this petition must be filed in the subsequent application, not the provisional application itself.

For more information on patent procedure, visit: patent procedure.

For more information on petition requirements, visit: petition requirements.

For more information on provisional application, visit: provisional application.

Filing a delayed benefit claim for a provisional application requires specific components. MPEP 211.04 outlines the requirements:

The petition must be accompanied by: (A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior provisional application (unless previously submitted); (B) a petition fee under 37 CFR 1.17(m); and (C) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional.

For petitions filed more than two years after the due date, additional explanation of the delay circumstances is required to establish that the entire delay was unintentional.

For more information on petition requirements, visit: petition requirements.

For more information on provisional application, visit: provisional application.

For more information on unintentional delay, visit: unintentional delay.

Claiming the benefit of an international application (PCT application) in a U.S. national application has specific requirements. The MPEP states:

“Pursuant to 35 U.S.C. 365(c), a regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b) may claim the benefit of the filing date of an international application which designates the United States without completing the requirements for entering the national stage under 35 U.S.C. 371.”

Requirements for claiming benefit of an international application:

• The international application must designate the United States
• The international application must be entitled to a filing date in accordance with PCT Article 11
• The later-filed U.S. application must be filed during the pendency of the international application
• The U.S. application can be filed as a continuation, divisional, or continuation-in-part of the international application (often called a “bypass” application)

This allows applicants to claim the benefit of an international application’s filing date without completing the national stage entry process under 35 U.S.C. 371.

To claim the benefit of a prior-filed provisional application under 35 U.S.C. 119(e), the following requirements must be met:

• The nonprovisional application must be filed within 12 months of the provisional application’s filing date (unless the benefit has been restored)
• The provisional application must have at least one common inventor with the nonprovisional application
• The provisional application must be entitled to a filing date and have paid the basic filing fee
• If the provisional application was filed in a language other than English, an English translation and a statement that the translation is accurate must be filed

As stated in the MPEP: “When a later-filed application is claiming the benefit of a prior-filed provisional application under 35 U.S.C. 119(e), the nonprovisional application must be filed not later than 12 months after the date on which the provisional application was filed, unless the benefit of the provisional application has been restored.”

To claim benefit to a non-English language provisional application, you must provide:

• An English translation of the non-English language provisional application
• A statement that the translation is accurate

These documents must be filed in the provisional application itself. As stated in MPEP ¶ 2.38: “An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No.[…]”

Additionally, in the present (non-provisional) application, you must confirm that the translation and statement were filed in the provisional application.

For more information on non-English language, visit: non-English language.

For more information on patent filing, visit: patent filing.

For more information on provisional application, visit: provisional application.

For more information on translation requirements, visit: translation requirements.

Benefit claims can be made under various sections of the U.S. Code, each with specific requirements:

• 35 U.S.C. 119(e): For provisional application benefits, refer to 37 CFR 1.78(a).
• 35 U.S.C. 120: For benefit claims to earlier nonprovisional applications, including the relationship (continuation, divisional, or continuation-in-part).
• 35 U.S.C. 121: For divisional applications.
• 35 U.S.C. 365(c): For national stage applications claiming benefit to PCT applications.
• 35 U.S.C. 386(c): For national stage applications claiming benefit to international design applications.

The MPEP states: “For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.”

It’s important to note that the specific requirements and time limits may vary depending on the type of benefit claim. Always refer to the latest version of the MPEP and the relevant U.S. Code sections for the most up-to-date information.

For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For an international design application to be used as a basis for claiming benefit, it must meet specific filing date requirements. MPEP § 211.01(d) states:

To obtain benefit of the filing date of a prior international design application designating the United States, the international design application must be entitled to a filing date in accordance with 37 CFR 1.1023. See 37 CFR 1.78(d)(1)(ii).

This means that the international design application must comply with the requirements set forth in 37 CFR 1.1023 to establish a valid filing date. These requirements typically include proper designation of the United States and adherence to other formal application standards.

For more information on filing date requirements, visit: filing date requirements.

To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:

• The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
• The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
• The later-filed application must contain a specific reference to the prior-filed application
• The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78

Claiming benefit under these statutes allows an application to receive the earlier filing date of a prior-filed application, which can be crucial for establishing priority and overcoming prior art. However, this claim also requires that the application does not contain new matter.

The MPEP ¶ 2.10.01 states:

“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.”

If new matter is found, the applicant may need to change the application type or remove the benefit claim to maintain the new subject matter.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For more information on new matter, visit: new matter.

Failure to timely submit the reference to the prior-filed application within the time periods specified in 37 CFR 1.78 is considered a waiver of any benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application. See 37 CFR 1.78(d)(3)(iii). The time periods are not extendable.

If the reference to the prior-filed application is submitted after the time period provided by 37 CFR 1.78, a petition and the petition fee under 37 CFR 1.17(m) would be required to accept the delayed claim. The petition must be accompanied by:

• The reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior-filed application
• The petition fee
• A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

The abandonment of an international application in the United States is governed by specific legal provisions. According to MPEP 211.01(c), which cites 35 U.S.C. 371(d):

35 U.S.C. 371(d) indicates that failure to timely comply with the requirements of 35 U.S.C. 371(c) ‘shall be regarded as abandonment of the application by the parties thereof.’

This means that an international application designating the United States will be considered abandoned if the applicant fails to meet the requirements for entering the national stage under 35 U.S.C. 371(c) within the specified time limits. These requirements typically include submitting necessary documents, paying required fees, and providing an English translation of the application if it was not originally filed in English.

For more information on national stage entry, visit: national stage entry.

If a benefit claim is improper due to lack of copendency, the MPEP ¶ 2.11 outlines the required action:

Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications.

This means the applicant has two options:

1. Delete the benefit claim to the prior-filed application, or
2. Provide evidence to establish that copendency actually exists between the applications.

If the applicant cannot prove copendency, they must remove the benefit claim to avoid potential issues with the application’s validity or examination process.

For more information on copendency, visit: copendency.

For more information on patent procedure, visit: patent procedure.

When the required documents for a non-English provisional application are missing, the USPTO takes specific actions to notify the applicant. According to MPEP ¶ 2.38:

“Use this form paragraph to notify applicant that an English translation of the non-English language provisional application and/or a statement that the translation is accurate is required.”

The USPTO will issue an Office action informing the applicant of the missing documents and setting a time period for their submission. The applicant must then provide the missing translation and/or accuracy statement in the provisional application and confirm their filing in the present application. Failure to do so within the specified time period may result in the abandonment of the present application.

For more information on missing documents, visit: missing documents.

For more information on patent procedure, visit: patent procedure.

Yes, there is an exception for certain applications filed before November 25, 2005. According to the Examiner Note in MPEP ¶ 2.38:

“Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.”

This means that for non-provisional applications filed before November 25, 2005, it was acceptable to file the English translation and accuracy statement in the non-provisional application itself, rather than in the provisional application. For applications filed after this date, the current rules requiring filing in the provisional application apply.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

For more information on translation requirements, visit: translation requirements.

Yes, there is a time limit for filing a petition to restore the benefit of a provisional application. According to MPEP 211:

“Applicant may wish to file a petition to restore the benefit of the provisional application under 37 CFR 1.78 in the subsequent nonprovisional application or international application designating the United States if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional.”

This means you have a two-month grace period after the expiration of the initial 12-month period to file the petition. It’s crucial to act quickly if you miss the original deadline and wish to restore the benefit of your provisional application.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

Yes, there is a deadline for filing the English translation and accuracy statement for a non-English provisional application. While MPEP ¶ 2.38 doesn’t specify an exact timeframe, it indicates that the USPTO will set a time period in an Office action:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This means that when the USPTO notices that the required documents are missing, they will issue an Office action with a specific deadline. It’s crucial to comply with this deadline to avoid abandonment of your application. As a best practice, it’s advisable to file these documents as soon as possible after filing the non-English provisional application to avoid any potential issues.

For more information on patent procedure, visit: patent procedure.

The method for making a specific reference to a prior-filed application depends on when the application was filed:

• For applications filed before September 16, 2012: The specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS) in compliance with pre-AIA 37 CFR 1.76.
• For applications filed on or after September 16, 2012: The specific reference must be included in an ADS in compliance with 37 CFR 1.76.

Additionally, for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

It’s important to note that for continued prosecution applications (CPAs) filed under 37 CFR 1.53(d) (design applications under 35 U.S.C. chapter 16 only), a specific reference in the specification or ADS is not required and may not be made. For these applications, The specific reference requirement of 35 U.S.C. 120 is met by the transmittal request for the CPA which is considered to be part of the CPA.

For more information on application data sheet, visit: application data sheet.

For more information on continuation application, visit: continuation application.

For more information on Divisional application, visit: Divisional application.

For more information on specific reference, visit: specific reference.

The method for including a benefit claim in a patent application depends on the filing date:

• For applications filed before September 16, 2012: The reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS).
• For applications filed on or after September 16, 2012: The specific reference must be included in an application data sheet (ADS).

The MPEP states: “If the application was filed before September 16, 2012, the reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.”

Additionally, for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on application data sheet, visit: application data sheet.

The presence of new matter in a continuation or divisional application can significantly affect its filing date. If new matter is found, the application may lose the benefit of the earlier filing date for the new subject matter.

According to MPEP ¶ 2.10.01:

“Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:”

If the application is changed to a continuation-in-part, the new matter will have the filing date of the current application, while the previously disclosed matter retains the earlier filing date. This can have important implications for determining prior art and patent term.

For more information on continuation application, visit: continuation application.

For more information on continuation-in-part application, visit: continuation-in-part application.

For more information on Divisional application, visit: Divisional application.

For more information on new matter, visit: new matter.

How does the copendency requirement affect claiming benefit of a prior application?

The copendency requirement is a critical factor in claiming the benefit of a prior application. MPEP 211.01(b) states: To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be copending with the earlier application.

Copendency means:

• The later application must be filed before the patenting or abandonment of the prior application.
• There must be no gap in pendency between the applications in the chain.

If copendency is not maintained, the benefit claim to the earlier application will be lost. This can significantly impact the effective filing date of the later application, potentially affecting its patentability.

For detailed information on copendency, refer to MPEP 211.01(b) and 35 U.S.C. 120.

The benefit claim process for national stage applications entering from an international application under 35 U.S.C. 371 has some specific timing requirements that differ from regular applications filed under 35 U.S.C. 111(a). The MPEP states:

“If the application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, the reference to the prior application must be made during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), 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 application.”

Key differences for national stage applications include:

• The time period for submitting the benefit claim starts from the date the national stage commenced or the date of initial submission to enter the national stage.
• There are three possible deadlines, and the applicant can use the latest of these:
  1. Four months from the date the national stage commenced
  2. Four months from the date of the initial submission to enter the national stage
  3. Sixteen months from the filing date of the prior application

It’s important to carefully track these dates for national stage applications to ensure timely submission of benefit claims.

For more information on 35 U.S.C. 371, visit: 35 U.S.C. 371.

For more information on national stage application, visit: national stage application.

The ‘unintentional’ delay standard is crucial in evaluating petitions for delayed benefit claims. According to MPEP 211.04:

While the Director may require additional information whenever there is a question of whether the delay was unintentional, a person filing a petition to accept a delayed benefit claim more than two years after the date the benefit claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional.

This requirement is in addition to the standard statement of unintentional delay. For further discussion on the ‘unintentional’ delay standard, refer to MPEP § 711.03(c).

For more information on unintentional delay, visit: unintentional delay.

Claiming the benefit of an international design application under 35 U.S.C. 386(c) can potentially establish an earlier effective filing date for a nonprovisional application. This is significant because the effective filing date is used to determine which prior art is applicable during examination.

As stated in the MPEP:

“Pursuant to 35 U.S.C. 386(c), in accordance with the conditions and requirements of 35 U.S.C. 120, a nonprovisional application is entitled to the benefit of a prior international design application designating the United States.”

By claiming this benefit, the nonprovisional application can potentially use the filing date of the international design application as its effective filing date, provided all requirements are met. This earlier date can be crucial for overcoming prior art references and establishing priority in the field.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For more information on effective filing date, visit: effective filing date.

For more information on prior art, visit: prior art.

Patent examiners carefully compare the content of the continuation or divisional application with the prior-filed application to identify any new matter. If they find information not disclosed in the prior application, they will issue a notice to the applicant.

The MPEP ¶ 2.10.01 instructs examiners:

“In bracket 1, provide an example of the matter not disclosed in the prior-filed application.”

This means the examiner must specifically point out the new matter found in the application, allowing the applicant to understand and address the issue.

For more information on continuation application, visit: continuation application.

For more information on Divisional application, visit: Divisional application.

For more information on new matter, visit: new matter.

For more information on patent examination, visit: patent examination.

35 U.S.C. 365(c) is a crucial provision for claiming the benefit of an international application’s filing date in a subsequent national application. As explained in MPEP 211.01(c):

The first sentence of 35 U.S.C. 365(c) specifically provides that ‘[i]n accordance with the conditions and requirements of section 120,… a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States.’

This provision allows applicants to claim the priority of an international application in a later-filed U.S. national application, provided they meet the conditions set forth in 35 U.S.C. 120. One key condition is timing, as the MPEP notes:

The condition of 35 U.S.C. 120 relating to the time of filing requires the later application to be ‘filed before the patenting or abandonment of or termination of proceedings on the first application….’

This means that the national application must be filed while the international application is still pending to claim its benefit.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).

To properly claim the benefit of a prior application, you must include a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be included in an application data sheet (ADS). For applications filed before September 16, 2012, the reference must be in an ADS and/or in the first sentence(s) of the specification following the title.

The MPEP 211.02 states: Both 35 U.S.C. 119(e) and 120 include the requirement that the later-filed application must contain a specific reference to the prior application.

For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

For more information on ADS, visit: ADS.

For more information on divisional, visit: divisional.

For more information on specific reference, visit: specific reference.

To correct or add a benefit claim after filing your application, you need to follow specific procedures depending on the timing and circumstances:

1. If you received a filing receipt with missing or incorrect benefit claim information, you can request a corrected filing receipt. However, the Office will only grant this request if the proper reference to the prior application was included in the original filing or within the time period required by 37 CFR 1.78.
2. If you’re adding a benefit claim after the time period required by 37 CFR 1.78, you must file a petition and pay the petition fee. The petition must be accompanied by a corrected Application Data Sheet (ADS) for applications filed on or after September 16, 2012, or an amendment to the specification or a supplemental ADS for applications filed before that date.

As stated in MPEP 211.02(a): If a benefit claim is added after the time period required by 37 CFR 1.78, a petition and the petition fee are required.

Depending on the status of your application, you may also need to file:

• A Request for Continued Examination (RCE) if the application is under final rejection or has been allowed.
• A reissue application or a request for a certificate of correction if the application has already issued as a patent.

It’s important to note that you cannot add an incorporation by reference statement to a benefit claim after the filing date, as this would be considered new matter.

For more information on ADS, visit: ADS.

For more information on RCE, visit: RCE.

To claim the benefit of a prior-filed application, you must include a specific reference to the prior-filed application in your current application. The method of including this reference depends on when your application was filed:

• For applications filed before September 16, 2012: Include the reference in the first sentence(s) of the specification following the title or in an application data sheet (ADS) compliant with pre-AIA 37 CFR 1.76.
• For applications filed on or after September 16, 2012: Include the reference in an ADS compliant with 37 CFR 1.76.

The MPEP states: If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78. (MPEP § 211)

For more information on ADS, visit: ADS.

For more information on prior-filed application, visit: prior-filed application.

For more information on specific reference, visit: specific reference.

To claim benefit to a non-English language provisional application, you must:

• File an English translation of the non-English language provisional application
• Provide a statement that the translation is accurate
• File both the translation and the statement in the provisional application
• Confirm in the present application that the translation and statement were filed in the provisional application

According to MPEP ¶ 2.38, “An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No.[3]. See 37 CFR 1.78.”

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

If an applicant misses the 12-month deadline for claiming the benefit of a provisional application, they may be able to restore the benefit under certain conditions:

1. The nonprovisional application must be filed within 14 months of the provisional application’s filing date
2. A petition under 37 CFR 1.78(b) must be filed in the nonprovisional application
3. The delay in filing must be unintentional

The MPEP states: “If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

The petition must include:

• The reference to the provisional application
• The petition fee
• A statement that the delay was unintentional

The benefit of a provisional application can be restored if the nonprovisional application is filed within 14 months of the provisional application filing date. To restore the benefit:

1. File a petition under 37 CFR 1.78(b) in the nonprovisional application
2. Include the reference to the provisional application in an application data sheet
3. Pay the petition fee set in 37 CFR 1.17(m)
4. Provide a statement that the delay in filing was unintentional

As stated in MPEP 211.01(a): “If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

Delayed benefit claims in international applications have specific procedures. According to MPEP 211.04:

A petition under 37 CFR 1.78 for accepting an unintentionally delayed benefit claim and the petition fee under 37 CFR 1.17(m) are required to add a benefit claim under 35 U.S.C. 120 and 365(c) in an abandoned international application designating the United States, even when the international application did not enter the national stage under 35 U.S.C. 371.

For international applications not filed with the U.S. Receiving Office and not a nonprovisional application, the petition may be filed in the earliest nonprovisional application claiming benefit to the international application. This petition will be treated as if filed in the international application itself.

For more information on international applications, visit: international applications.

For more information on patent procedure, visit: patent procedure.

No, MPEP ¶ 2.11 does not apply to benefit claims for provisional applications. The MPEP explicitly states:

Do not use this form paragraph for benefit claims under 35 U.S.C. 119(e) to provisional applications.

This means that the copendency requirements and procedures outlined in MPEP ¶ 2.11 are specifically for non-provisional applications claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c). Provisional applications have different rules and procedures for claiming benefit, which are covered under 35 U.S.C. 119(e) and other sections of the MPEP.

For more information on benefit claims, visit: benefit claims.

For more information on patent procedure, visit: patent procedure.

If you filed a translation of the non-English provisional application and a statement of accuracy in the nonprovisional application before November 25, 2005, you do not need to provide them again. The MPEP ¶ 2.38 states in the Examiner Note:

“Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.”

This exception only applies to translations filed in the nonprovisional application before the specified date. For all other cases, the translation and statement must be filed in the provisional application itself.

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

If you submitted the reference to the prior application within the required time period but in the wrong location, you may not need to file a petition. The MPEP provides guidance on this situation:

If the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78 but was not included in the location in the application required by the rule (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt, the petition under 37 CFR 1.78 and the petition fee under 37 CFR 1.17(m) are not required. (MPEP § 211)

However, you are still required to submit the reference in compliance with 37 CFR 1.78. This means:

• For applications filed on or after September 16, 2012: File an ADS in compliance with 37 CFR 1.76 with the reference.
• For applications filed before September 16, 2012: File either an amendment to the first sentence(s) of the specification or an ADS in compliance with pre-AIA 37 CFR 1.76.

For more information on petition requirements, visit: petition requirements.

No, the English translation and accuracy statement for a non-English provisional application cannot be filed in the non-provisional application. They must be filed in the provisional application itself. MPEP ¶ 2.38 is explicit about this requirement:

“An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No.[3].”

However, there is an exception to this rule. The MPEP states:

“Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.”

This means that for applications filed before November 25, 2005, it was acceptable to file these documents in the non-provisional application. For all applications after this date, the translation and statement must be filed in the provisional application, with a confirmation in the non-provisional application that this has been done.

For more information on patent procedure, visit: patent procedure.

Generally, the English translation and accuracy statement for a non-English provisional application must be filed in the provisional application itself, not in the nonprovisional application. However, there is an exception:

As noted in the MPEP, Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.

This means:

• For applications filed on or after November 25, 2005, the translation and statement must be filed in the provisional application.
• For applications filed before November 25, 2005, it was acceptable to file these documents in the nonprovisional application.

It’s important to follow the current requirement of filing these documents in the provisional application to ensure proper benefit claim.

For more information on filing requirements, visit: filing requirements.

For more information on nonprovisional application, visit: nonprovisional application.

For more information on provisional application, visit: provisional application.

No, you cannot file a petition to restore the benefit of a provisional application in the provisional application itself. According to the MPEP:

“A petition to restore the benefit of a provisional application must be filed in the subsequent application.”

This means you must file the petition in the nonprovisional application or the international application designating the United States that is seeking to claim the benefit of the provisional application. This is because the provisional application itself is not examined and automatically expires after 12 months. The petition is a request to restore the right to claim the benefit in a subsequent application, not to extend the life of the provisional application.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

Yes, you can delete a benefit claim, but it’s important to understand the process and potential implications:

1. For applications filed on or after September 16, 2012, you can delete a benefit claim by filing a corrected Application Data Sheet (ADS) that removes the reference to the prior-filed application.
2. For applications filed before September 16, 2012, you can delete a benefit claim by amending the specification (if the claim is in the specification) or by submitting a supplemental ADS to delete references to prior applications.

According to MPEP 211.02(a): The examiner should consider whether any new prior art may now be available if a benefit claim is deleted.

Important considerations:

• Deleting a benefit claim may expose your application to additional prior art, potentially affecting its patentability.
• If you delete a benefit claim after final rejection or allowance, the amendment will be treated under special rules (37 CFR 1.116 or 1.312, respectively).
• Deleting a benefit claim may be seen as intentionally waiving the benefit claim. If you later try to reinstate it, the USPTO may not accept it as unintentionally delayed.
• In a Continued Prosecution Application (CPA), you cannot delete the reference to the prior application with the same application number.

Always carefully consider the implications before deleting a benefit claim, and consult with a patent attorney if you’re unsure about the consequences.

For more information on ADS, visit: ADS.

For more information on CPA, visit: CPA.

For more information on prior art, visit: prior art.

Yes, there are certain situations where a petition and petition fee are not required to correct a timely submitted benefit claim. According to the MPEP, these situations include:

• Changing the relationship of the applications (e.g., from “continuation” to “continuation-in-part” or vice versa)
• Changing the filing date of a prior-filed nonprovisional or provisional application
• Changing a benefit claim of a prior-filed provisional application from 35 U.S.C. 120 to 35 U.S.C. 119(e) during the pendency of the later-filed application

Additionally, if the benefit claim was included elsewhere in the application (e.g., in an oath, declaration, or transmittal letter) within the required time period and was recognized by the Office as shown on the first filing receipt, a petition is not required. However, the applicant must still submit the benefit claim in the proper format (i.e., in an Application Data Sheet or by amending the specification for applications filed before September 16, 2012).

Note: If the application has already issued as a patent, corrections to benefit claims that would affect the patent term cannot be made by a certificate of correction or in a reissue application.

Yes, there are exceptions to the benefit claim requirements for design applications. The MPEP specifically notes:

“Examiner Note: 1. Use this form paragraph only for original applications filed under 35 U.S.C. 111(a) on or after November 29, 2000 and for national stage applications under 35 U.S.C. 371. DO NOT use for design applications.”

This note indicates that the standard benefit claim requirements and procedures outlined in this section of the MPEP do not apply to design applications. Design applications have different rules and requirements for claiming benefit of earlier filing dates.

Key points about benefit claims in design applications:

• Design applications can claim the benefit of an earlier filed design application or an earlier filed provisional application.
• The rules for claiming benefit in design applications are generally less stringent than those for utility applications.
• Specific requirements for design application benefit claims can be found in MPEP 1504.20.

It’s important to consult the specific rules and guidelines for design applications when dealing with benefit claims in this context, as they differ from the requirements for utility applications.

The MPEP ¶ 2.11 mentions several U.S. Code sections relevant to claiming the benefit of an earlier filing date:

This application is claiming the benefit of prior-filed application No.[1] under 35 U.S.C. 120, 121, 365(c), or 386(c).

These sections cover different scenarios:

• 35 U.S.C. 120: Benefit of earlier filing date in the United States
• 35 U.S.C. 121: Divisional applications
• 35 U.S.C. 365(c): Benefit of earlier filing date; national application
• 35 U.S.C. 386(c): Benefit of earlier filing date; international design application

Each of these sections provides specific conditions under which an application can claim the benefit of an earlier filing date.

For more information on earlier filing date, visit: earlier filing date.

For more information on patent law, visit: patent law.

For a non-English provisional application, the English translation and accuracy statement must be filed in the provisional application itself, not in the non-provisional application claiming its benefit. MPEP ¶ 2.38 clearly states:

“An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No.[…]”

Additionally, in the non-provisional application claiming benefit, you must provide confirmation that these documents were filed in the provisional application. This two-step process ensures proper documentation and compliance with 37 CFR 1.78.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

The location of the benefit claim reference depends on the filing date of the application:

• For applications filed before September 16, 2012: The reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS).
• For applications filed on or after September 16, 2012: The specific reference must be included in an application data sheet (ADS).

The MPEP states: “If the application was filed before September 16, 2012, the reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.”

It’s important to note that for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must also include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

For more information on application data sheet, visit: application data sheet.

For more information on divisional, visit: divisional.

According to the MPEP, a petition to restore the benefit of a provisional application should be addressed to:

“Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.”

It’s important to note that this petition must be filed in the subsequent nonprovisional application or international application designating the United States, not in the provisional application itself. Always ensure you’re following the most current USPTO guidelines for petition submissions, as procedures may be updated over time.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

The English translation of a non-English provisional application must be filed in the provisional application itself, not in the non-provisional application claiming benefit. According to MPEP ¶ 2.38:

“An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No.[3].”

Additionally, you must confirm in your current application that the translation and statement were filed in the provisional application.

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

For those seeking more detailed information on benefit claims under 35 U.S.C. 386(c), the Manual of Patent Examining Procedure (MPEP) provides a specific reference. According to MPEP § 211.01(d):

See MPEP § 2920.05(e) for additional information pertaining to benefit claims under 35 U.S.C. 386(c).

This section of the MPEP offers comprehensive guidance on the intricacies of claiming benefit to international design applications, including procedural requirements and practical considerations for patent applicants and examiners.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For more information on benefit claims, visit: benefit claims.

The timing for submitting a specific reference to a prior-filed application depends on the type of application:

• For utility or plant applications filed under 35 U.S.C. 111(a): The specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
• For national stage applications under 35 U.S.C. 371: The specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), 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 application.

It’s important to note that This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s).

For more information on filing deadline, visit: filing deadline.

For more information on specific reference, visit: specific reference.

The ability to claim benefit under 35 U.S.C. 386(c) for international design applications is subject to specific timing requirements. According to MPEP § 211.01(d):

37 CFR 1.78(j) provides that benefit under 35 U.S.C. 386(c) with respect to an international design application can only be claimed in nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.

This means that to claim the benefit of an international design application, the claiming application must have been filed on or after May 13, 2015. This date is significant as it marks the implementation of certain provisions of the Patent Law Treaties Implementation Act of 2012.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For more information on filing date requirements, visit: filing date requirements.

According to 37 CFR 1.78(j), benefit claims under 35 U.S.C. 386(c) can only be made in specific types of applications filed on or after May 13, 2015. The MPEP states:

“37 CFR 1.78(j) provides that benefit under 35 U.S.C. 386(c) with respect to an international design application can only be claimed in nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.”

This means that applications filed before May 13, 2015, cannot claim the benefit of an international design application under 35 U.S.C. 386(c). It’s important for applicants to be aware of this date restriction when considering their benefit claims.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

If you missed the deadline for filing a benefit claim, you may still be able to claim the benefit by filing a petition for an unintentionally delayed benefit claim. The process differs based on the type of benefit claim:

• For benefit claims under 35 U.S.C. 119(e): File a petition under 37 CFR 1.78(c)
• For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c): File a petition under 37 CFR 1.78(e)

The MPEP states: “If applicant desires the benefit under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c) based upon a previously filed application, applicant must file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) for benefit claims under 35 U.S.C. 119(e) or under 37 CFR 1.78(e) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c).”

The petition must include:

1. The reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior application (unless previously submitted)
2. A petition fee under 37 CFR 1.17(m)
3. A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional

The Director may require additional information if there’s a question about whether the delay was unintentional.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on petition fee, visit: petition fee.

For more information on unintentional delay, visit: unintentional delay.

If you miss the 12-month deadline for claiming the benefit of a provisional application, you have two main options:

1. Delete the claim to the benefit of the prior-filed provisional application.
2. File a petition to restore the benefit of the provisional application.

The MPEP states:

“Alternatively, applicant may wish to file a petition to restore the benefit of the provisional application under 37 CFR 1.78 in the subsequent nonprovisional application or international application designating the United States if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional.”

This petition must be filed in the subsequent application and include specific requirements, such as a reference to the provisional application, a petition fee, and a statement that the delay was unintentional.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

The time limit for submitting a benefit claim depends on the type of application:

• For utility or plant applications filed under 35 U.S.C. 111(a), the specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
• For national stage applications under 35 U.S.C. 371, the specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced, 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 application.

As stated in MPEP 211.02: This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c).

For more information on national stage application, visit: national stage application.

For more information on time limit, visit: time limit.

The time limit for filing a benefit claim depends on the type of application:

• For applications filed under 35 U.S.C. 111(a), the reference must be submitted within the later of:
  • Four months from the actual filing date of the application, or
  • Sixteen months from the filing date of the prior application
• For nonprovisional applications entering the national stage from an international application under 35 U.S.C. 371, the reference must be made within the later of:
  • Four months from the date on which the national stage commenced
  • Four months from the date of the initial submission to enter the national stage
  • Sixteen months from the filing date of the prior application

As stated in the MPEP: “If the application is an application filed under 35 U.S.C. 111(a), the reference to the prior application must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.”

For more information on 35 U.S.C. 111(a), visit: 35 U.S.C. 111(a).

For more information on 35 U.S.C. 371, visit: 35 U.S.C. 371.

For more information on time limit, visit: time limit.

The time limit for claiming benefit of a prior application depends on the type of application:

• For utility or plant applications filed under 35 U.S.C. 111(a), the benefit claim must be made 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
• For nonprovisional applications entering the national stage from an international application under 35 U.S.C. 371, the benefit claim must be made within the later of:
  • Four months from the date on which the national stage commenced
  • Four months from the date of the initial submission to enter the national stage
  • Sixteen months from the filing date of the prior application

As stated in the MPEP: “This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c) unless a petition to accept an unintentionally delayed benefit claim is granted.”

For more information on 35 U.S.C. 111(a), visit: 35 U.S.C. 111(a).

For more information on 35 U.S.C. 371, visit: 35 U.S.C. 371.

For more information on time limit, visit: time limit.

MPEP ¶ 2.15 provides guidance on how to properly claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c). It outlines the requirements for including a specific reference to the prior-filed application and the timeframes within which this reference must be submitted.

The paragraph states: If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78. This means that applicants must explicitly reference the prior application to claim its benefits.

For more information on specific reference, visit: specific reference.

Form Paragraph 2.38 in the MPEP serves several important purposes regarding non-English provisional applications:

1. It notifies the applicant that an English translation and/or a statement of translation accuracy is required for a non-English language provisional application.
2. It informs the applicant about the specific documents that are missing from their application.
3. It provides clear instructions on what the applicant needs to do to rectify the situation.
4. It warns the applicant about the potential consequences of not providing the required documents.

The MPEP states: Use this form paragraph to notify applicant that an English translation of the non-English language provisional application and/or a statement that the translation is accurate is required.

This form paragraph is a crucial tool for patent examiners to communicate requirements and potential issues to applicants, ensuring that all necessary documents are properly filed for claiming benefit to a non-English provisional application.

For more information on patent examination, visit: patent examination.

For more information on USPTO communication, visit: USPTO communication.

If a benefit claim is not filed within the required time period, it may still be accepted through a petition process. According to MPEP ¶ 2.15:

A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

The petition must include:

1. The reference to the prior application (unless previously submitted)
2. The petition fee under 37 CFR 1.17(m)
3. A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

The Director may request additional information if there’s a question about whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

For more information on unintentional delay, visit: unintentional delay.

The MPEP does not specify a fixed deadline for submitting the English translation of a non-English provisional application. However, it indicates that the translation must be provided within a time period set by the USPTO. According to MPEP ¶ 2.38:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This suggests that the USPTO will set a specific deadline in an Office action, and you must comply with this deadline to avoid abandonment of your application.

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

The deadline for submitting a benefit claim depends on the type of application:

• For utility or plant applications filed under 35 U.S.C. 111(a): Submit within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
• For national stage applications under 35 U.S.C. 371: Submit within the later of four months from the date on which the national stage commenced, 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 application.

The MPEP emphasizes: This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c). (MPEP § 211)

For more information on national stage application, visit: national stage application.

The deadline for filing a benefit claim depends on the type of application:

• For applications filed under 35 U.S.C. 111(a), the reference must be submitted within the later of:
  • Four months from the actual filing date of the application, or
  • Sixteen months from the filing date of the prior application
• For nonprovisional applications entering the national stage from an international application under 35 U.S.C. 371, the reference must be made within the later of:
  • Four months from the date on which the national stage commenced
  • Four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage
  • Sixteen months from the filing date of the prior application

As stated in the MPEP: “If the application is an application filed under 35 U.S.C. 111(a), the reference to the prior application must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.”

For more information on 35 U.S.C. 111(a), visit: 35 U.S.C. 111(a).

For more information on 35 U.S.C. 371, visit: 35 U.S.C. 371.

For more information on filing deadline, visit: filing deadline.

For more information on national stage application, visit: national stage application.

Copendency is a crucial requirement when claiming the benefit of a prior-filed nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c). The MPEP defines copendency as follows:

“Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”

Key points about copendency:

• The later-filed application must be filed before the prior application patents, is abandoned, or proceedings are terminated
• If the prior application issues as a patent, the later-filed application can be filed on the same date the patent issues
• If the prior application is abandoned, the later-filed application must be filed before the abandonment
• Without copendency, the later-filed application cannot claim the benefit of the prior application’s filing date

Applicants should be aware of the copendency requirement to ensure their benefit claims are valid.

Claiming priority to an international design application can provide significant benefits for nonprovisional applications. According to MPEP § 211.01(d):

Pursuant to 35 U.S.C. 386(c), in accordance with the conditions and requirements of 35 U.S.C. 120, a nonprovisional application is entitled to the benefit of a prior international design application designating the United States.

This means that a nonprovisional application can claim the earlier filing date of an international design application, potentially providing an earlier priority date for the claimed invention.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For more information on nonprovisional application, visit: nonprovisional application.

Under 35 U.S.C. 386(c), a nonprovisional application can claim the benefit of a prior international design application designating the United States, subject to the conditions and requirements of 35 U.S.C. 120. This provision allows applicants to establish an earlier effective filing date for their nonprovisional applications based on their international design applications.

As stated in the MPEP:

“Pursuant to 35 U.S.C. 386(c), in accordance with the conditions and requirements of 35 U.S.C. 120, a nonprovisional application is entitled to the benefit of a prior international design application designating the United States.”

This benefit claim can be crucial for establishing priority and overcoming prior art references.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For more information on nonprovisional application, visit: nonprovisional application.

What is the ‘specific reference’ requirement for claiming benefit of a prior-filed application?

The ‘specific reference’ requirement is a crucial aspect of claiming the benefit of a prior-filed application. According to MPEP 211.01, To claim the benefit of a prior-filed application, the later-filed application must contain a specific reference to the prior-filed application. This means that:

• The specific reference must be made in the first sentence(s) of the specification or in an application data sheet (ADS).
• It should include the relationship between the applications (e.g., continuation, divisional, or continuation-in-part).
• The prior application’s serial number and filing date must be provided.

For example: ‘This application is a continuation of Application No. 12/345,678, filed January 1, 2020.’

Failure to provide this specific reference can result in the loss of the benefit claim. For more details, refer to MPEP 211 and 37 CFR 1.78.

What is the ‘same invention’ requirement for claiming benefit under 35 U.S.C. 120?

The ‘same invention’ requirement is a crucial aspect of claiming benefit under 35 U.S.C. 120. MPEP 211.01(b) explains: The second application must be an application for a patent for an invention which is also disclosed in the first application.

This means:

• The later application must disclose at least some part of the invention claimed in the prior application.
• The disclosure in the prior application must provide adequate support for the claims in the later application.
• New matter introduced in the later application cannot claim the benefit of the earlier filing date.

The ‘same invention’ does not require identical claims, but there must be a common disclosure that supports the claims in both applications. For more information, see MPEP 211.01(b) and 35 U.S.C. 120.

To claim the benefit of an earlier filing date under 35 U.S.C. 120, the following requirements must be met:

• The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application
• 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
• The later-filed application must contain a specific reference to the prior application
• The later-filed application must be filed before the patenting or abandonment of or termination of proceedings on the first application

As stated in the MPEP: “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.”

A petition to restore the benefit of a provisional application under 37 CFR 1.78(b) must include several elements. According to MPEP 211.01(a):

‘A petition under 37 CFR 1.78(b) requires: (A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application, which must be included in application data sheet (unless previously submitted in an application data sheet); (B) the petition fee as set forth in 37 CFR 1.17(m); and (C) a statement that the delay in filing the nonprovisional application or international application designating the United States within the twelve-month period set forth in 37 CFR 1.78(a)(1)(i) was unintentional.’

The petition must be filed in the subsequent application (nonprovisional or international application designating the US) within 14 months of the provisional application’s filing date. The USPTO may require additional information to verify that the delay was unintentional.

For more information on benefit restoration, visit: benefit restoration.

For more information on petition requirements, visit: petition requirements.

For more information on provisional application, visit: provisional application.

For more information on unintentional delay, visit: unintentional delay.

When claiming the benefit of a provisional application filed in a language other than English, additional requirements must be met. The MPEP states:

“If benefit is being claimed to a provisional application which was filed in a language other than English, (A) an English language translation of the provisional application, and (B) a statement that the translation is accurate, are required to be filed in the provisional application.”

If these documents were not filed in the provisional application, the applicant will be notified and given a period to:

1. File the translation and statement in the provisional application
2. Submit a confirmation in the nonprovisional application that the translation and statement were filed in the provisional application

Failure to respond to this notice in a pending nonprovisional application will result in abandonment. For more details, see MPEP § 211.01(a).

For more information on patent filing, visit: patent filing.

For more information on provisional application, visit: provisional application.

For more information on translation requirements, visit: translation requirements.

Copendency refers to the requirement that a later-filed application claiming benefit of a prior application must be filed before the prior application is patented, abandoned, or proceedings are terminated. Copendency is crucial because:

• It establishes a continuous chain of pending applications
• It allows the later application to claim the earlier filing date
• Without copendency, the benefit claim is improper

As stated in MPEP 211.01(b): “Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”

A ‘bypass’ application is:

• A regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b)
• It claims benefit of an international application’s filing date without entering the national stage under 35 U.S.C. 371
• It can be filed as a continuation, divisional, or continuation-in-part of the international application

MPEP 211.01(c) explains: “Rather than submitting a national stage application under 35 U.S.C. 371, applicant may file a continuation, divisional, or continuation-in-part of an international (PCT) application under 35 U.S.C. 111(a). Such applications are often referred to as ‘bypass’ applications.”

For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), which include continuations, divisionals, and continuation-in-part applications, the benefit claim must include specific information about the relationship between the applications. The MPEP states:

“For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.”

This means that when making a benefit claim, you must explicitly state whether the current application is a:

• Continuation
• Divisional
• Continuation-in-part

of the prior application. This information helps the USPTO and others understand the relationship between related applications and ensures proper examination and treatment of the claims.

Remember, this requirement is in addition to other necessary information for the benefit claim, such as the application number and filing date of the prior application.

For more information on divisional, visit: divisional.

If the specific reference to a prior-filed application is not submitted within the required time period, it is considered a waiver of any benefit claim to that prior application. The MPEP states:

This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c).

However, there is a possibility to accept a late benefit claim. The MPEP provides that: A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

Such a petition must include:

1. The reference to the prior application
2. The petition fee
3. A statement that the delay was unintentional

The Director may require additional information to verify that the delay was indeed unintentional.

For more information on unintentional delay, visit: unintentional delay.

For more information on waiver, visit: waiver.

If the required translation or statement is missing for a non-English provisional application, the following consequences apply:

1. The USPTO will issue a notice stating that the required documents are missing.
2. The applicant must supply the missing translation and/or statement in the provisional application.
3. The applicant must provide confirmation in the present application that the translation and statement were filed in the provisional application.
4. If these requirements are not met within the time period set by the USPTO, the present application will be abandoned.

As stated in the MPEP, If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned. See 37 CFR 1.78.

For more information on application abandonment, visit: application abandonment.

For more information on missing documents, visit: missing documents.

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

If the required translation and statement are not filed for a non-English provisional application, serious consequences can occur. According to MPEP ¶ 2.38:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This means that if you fail to provide the English translation and accuracy statement in the provisional application, and fail to confirm their filing in the present application, your current application may be abandoned. It’s crucial to comply with these requirements within the specified time frame to maintain your application’s active status.

For more information on application abandonment, visit: application abandonment.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

For more information on translation requirements, visit: translation requirements.

If you miss the deadline for submitting a benefit claim, you may still be able to claim the benefit by filing a petition. According to MPEP 211.02:

A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

The petition must include:

• The reference to the prior application (unless previously submitted)
• The petition fee under 37 CFR 1.17(m)
• A statement that the entire delay was unintentional

The Director may require additional information if there’s a question about whether the delay was unintentional. It’s important to note that accepting a late benefit claim is at the discretion of the USPTO and is not guaranteed.

For more information on unintentional delay, visit: unintentional delay.

For more information on USPTO, visit: USPTO.

If you fail to provide the required English translation and statement of accuracy for a non-English provisional application, your current application may be abandoned. The MPEP states:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned. See 37 CFR 1.78.”

This means you must either provide the required documents or withdraw the benefit claim to avoid abandonment of your application.

For more information on application abandonment, visit: application abandonment.

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

If you don’t file a petition to restore the benefit of a provisional application after missing the 12-month deadline, you will lose the right to claim the earlier filing date of the provisional application. The MPEP states:

“Applicant is required to delete the claim to the benefit of the prior-filed provisional application, unless applicant can establish that this application, or an intermediate nonprovisional application or international application designating the United States, was filed within 12 months of the filing date of the provisional application.”

This means your application will be treated as if it was filed on the date of the nonprovisional application, potentially affecting your ability to secure patent rights if intervening prior art exists. It’s crucial to either meet the original 12-month deadline or file a timely petition to restore the benefit to maintain your earlier filing date.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

If copendency is not established between patent applications, the benefit claim to the prior-filed application becomes improper. The MPEP clearly states:

Since the applications are not copending, the benefit claim to the prior-filed application is improper. Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications.

In such cases, the applicant must either prove that copendency exists or remove the benefit claim. Failure to do so may result in the loss of the earlier priority date, potentially affecting the patentability of the invention.

For more information on copendency, visit: copendency.

For more information on patent procedure, visit: patent procedure.

If a continuation or divisional application contains new matter not disclosed in the prior-filed application, the applicant will be required to either delete the benefit claim or change the relationship to a continuation-in-part application. This is because continuation and divisional applications cannot include new matter.

As stated in MPEP ¶ 2.10.01:

“Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:”

This form paragraph is used by examiners when they identify new matter in an application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c).

For more information on continuation application, visit: continuation application.

For more information on Divisional application, visit: Divisional application.

For more information on new matter, visit: new matter.

For more information on patent examination, visit: patent examination.

If a benefit claim to a provisional application lacks proper indication of an intermediate application:

• The Office may not recognize the benefit claim
• The benefit claim may not appear on the filing receipt
• A petition under 37 CFR 1.78(c) and petition fee may be required to correct the benefit claim

MPEP 211.01(b) states: “If a benefit claim to a provisional application is submitted without an indication that an intermediate application directly claims the benefit of the provisional application and the instant nonprovisional application is not filed within the 12 month period (or 14 month period if the benefit of the provisional application has been restored pursuant to 37 CFR 1.78(b)) or the relationship between each nonprovisional application is not indicated, the Office will not recognize such benefit claim and will not include the benefit claim on the filing receipt.”

If a benefit claim is included elsewhere in the application (e.g., in an oath or declaration) and is recognized by the USPTO as shown by its inclusion on the first filing receipt, but not properly submitted in the manner specified by 37 CFR 1.78, the following applies:

• The USPTO will not require a petition and petition fee to correct the benefit claim.
• This is because the application will have been scheduled for publication based on the information concerning the benefit claim.
• However, the applicant must still submit the benefit claim in the proper manner (i.e., in an ADS or by amendment to the specification, depending on the filing date) to have a proper claim under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78.

The MPEP states: “If an applicant includes a claim to the benefit of a prior application elsewhere in the application but not in the manner specified in 37 CFR 1.78 (e.g., if the benefit claim is not present in the proper place but is included in an oath or declaration, or the application transmittal letter, or in the first sentence(s) of the specification for an application filed on or after September 16, 2012) within the time period set forth in 37 CFR 1.78, the Office will not require a petition and the petition fee under 37 CFR 1.17(m) to correct the benefit claim if the information concerning the benefit claim contained elsewhere in the application was recognized by the Office as shown by its inclusion on the first filing receipt.”

If a benefit claim is not properly made within the required time period, it is considered untimely and will not be entered. The MPEP states:

“The benefit claim filed on [1] was not entered because the required reference was not timely filed within the time period set forth in 37 CFR 1.78.”

Consequences of an untimely benefit claim include:

• Loss of the earlier priority date, which could affect the patentability of the application if intervening prior art exists.
• Inability to rely on the earlier filing date to overcome prior art references.
• Potential issues with statutory bars under 35 U.S.C. 102.

However, all is not lost if the benefit claim is untimely. The applicant may file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) or 37 CFR 1.78(e), depending on the type of benefit claim. This petition must include:

1. The required reference to the prior application
2. A petition fee
3. A statement that the entire delay was unintentional

The USPTO may require additional information to determine if the delay was truly unintentional.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on unintentional delay, visit: unintentional delay.

If an applicant includes a benefit claim in the wrong part of the application but within the required time period, the USPTO’s response depends on whether the claim is recognized:

1. If the benefit claim is recognized by the Office (shown by its inclusion on the first filing receipt), no petition or petition fee is required to correct the benefit claim. The MPEP states: If an applicant includes a claim to the benefit of a prior application elsewhere in the application but not in the manner specified in 37 CFR 1.78 (e.g., if the benefit claim is not present in the proper place but is included in an oath or declaration, or the application transmittal letter, or in the first sentence(s) of the specification for an application filed on or after September 16, 2012) within the time period set forth in 37 CFR 1.78, the Office will not require a petition and the petition fee under 37 CFR 1.17(m) to correct the benefit claim if the information concerning the benefit claim contained elsewhere in the application was recognized by the Office as shown by its inclusion on the first filing receipt.
2. If the benefit claim is not recognized by the Office (shown by its absence on the first filing receipt), a petition and petition fee under 37 CFR 1.17(m) will be required to correct the benefit claim if the correction is sought after the time period set in 37 CFR 1.78.

In both cases, the applicant must still submit the benefit claim in the proper format (i.e., in an ADS or by amendment to the specification, depending on the application’s filing date) to have a proper claim under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on filing receipt, visit: filing receipt.

If a benefit claim is filed after the required time period specified in 37 CFR 1.78, the applicant must file a petition for an unintentionally delayed benefit claim. The MPEP states:

“If a benefit claim is filed after the required time period and without a petition as required by 37 CFR 1.78, the applicant should be informed that the benefit claim was not entered and that a petition needs to be filed using form paragraph 2.39.”

The petition must include:

• The reference to the prior application (unless previously submitted)
• A petition fee under 37 CFR 1.17(m)
• A statement that the entire delay was unintentional

The Director may require additional information to determine if the delay was unintentional.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on unintentional delay, visit: unintentional delay.

Copendency refers to the requirement that two related patent applications must be pending at the same time for one to claim the benefit of the earlier filing date of the other. The MPEP states:

Copendency between the current application and the prior application is required.

This means that the later application must be filed before the earlier application is either abandoned or issued as a patent. Copendency is crucial for maintaining a continuous chain of priority between related applications.

For more information on copendency, visit: copendency.

For more information on patent applications, visit: patent applications.

‘Unintentional delay’ is a crucial concept when seeking to restore the benefit of a provisional application. The MPEP requires:

“A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional.”

While the MPEP doesn’t provide a specific definition of ‘unintentional delay’, it generally means that the failure to meet the 12-month deadline was not deliberate. The USPTO may require additional information to determine if the delay was truly unintentional:

“The Director may require additional information where there is a question whether the delay was unintentional.”

It’s important to be prepared to explain the circumstances that led to the delay if requested.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

For more information on unintentional delay, visit: unintentional delay.

According to MPEP 211, a petition to restore the benefit of a provisional application under 37 CFR 1.78(b) must include:

1. The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application (unless previously submitted)
2. The petition fee set forth in 37 CFR 1.17(m)
3. A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional

The MPEP further states:

“The Director may require additional information where there is a question whether the delay was unintentional.”

It’s important to note that this petition must be filed in the subsequent application, not the provisional application itself.

For more information on patent procedure, visit: patent procedure.

For more information on petition requirements, visit: petition requirements.

For more information on provisional application, visit: provisional application.

Filing a delayed benefit claim for a provisional application requires specific components. MPEP 211.04 outlines the requirements:

The petition must be accompanied by: (A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior provisional application (unless previously submitted); (B) a petition fee under 37 CFR 1.17(m); and (C) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional.

For petitions filed more than two years after the due date, additional explanation of the delay circumstances is required to establish that the entire delay was unintentional.

For more information on petition requirements, visit: petition requirements.

For more information on provisional application, visit: provisional application.

For more information on unintentional delay, visit: unintentional delay.

Claiming the benefit of an international application (PCT application) in a U.S. national application has specific requirements. The MPEP states:

“Pursuant to 35 U.S.C. 365(c), a regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b) may claim the benefit of the filing date of an international application which designates the United States without completing the requirements for entering the national stage under 35 U.S.C. 371.”

Requirements for claiming benefit of an international application:

• The international application must designate the United States
• The international application must be entitled to a filing date in accordance with PCT Article 11
• The later-filed U.S. application must be filed during the pendency of the international application
• The U.S. application can be filed as a continuation, divisional, or continuation-in-part of the international application (often called a “bypass” application)

This allows applicants to claim the benefit of an international application’s filing date without completing the national stage entry process under 35 U.S.C. 371.

To claim the benefit of a prior-filed provisional application under 35 U.S.C. 119(e), the following requirements must be met:

• The nonprovisional application must be filed within 12 months of the provisional application’s filing date (unless the benefit has been restored)
• The provisional application must have at least one common inventor with the nonprovisional application
• The provisional application must be entitled to a filing date and have paid the basic filing fee
• If the provisional application was filed in a language other than English, an English translation and a statement that the translation is accurate must be filed

As stated in the MPEP: “When a later-filed application is claiming the benefit of a prior-filed provisional application under 35 U.S.C. 119(e), the nonprovisional application must be filed not later than 12 months after the date on which the provisional application was filed, unless the benefit of the provisional application has been restored.”

To claim benefit to a non-English language provisional application, you must provide:

• An English translation of the non-English language provisional application
• A statement that the translation is accurate

These documents must be filed in the provisional application itself. As stated in MPEP ¶ 2.38: “An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No.[…]”

Additionally, in the present (non-provisional) application, you must confirm that the translation and statement were filed in the provisional application.

For more information on non-English language, visit: non-English language.

For more information on patent filing, visit: patent filing.

For more information on provisional application, visit: provisional application.

For more information on translation requirements, visit: translation requirements.

Benefit claims can be made under various sections of the U.S. Code, each with specific requirements:

• 35 U.S.C. 119(e): For provisional application benefits, refer to 37 CFR 1.78(a).
• 35 U.S.C. 120: For benefit claims to earlier nonprovisional applications, including the relationship (continuation, divisional, or continuation-in-part).
• 35 U.S.C. 121: For divisional applications.
• 35 U.S.C. 365(c): For national stage applications claiming benefit to PCT applications.
• 35 U.S.C. 386(c): For national stage applications claiming benefit to international design applications.

The MPEP states: “For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.”

It’s important to note that the specific requirements and time limits may vary depending on the type of benefit claim. Always refer to the latest version of the MPEP and the relevant U.S. Code sections for the most up-to-date information.

For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For an international design application to be used as a basis for claiming benefit, it must meet specific filing date requirements. MPEP § 211.01(d) states:

To obtain benefit of the filing date of a prior international design application designating the United States, the international design application must be entitled to a filing date in accordance with 37 CFR 1.1023. See 37 CFR 1.78(d)(1)(ii).

This means that the international design application must comply with the requirements set forth in 37 CFR 1.1023 to establish a valid filing date. These requirements typically include proper designation of the United States and adherence to other formal application standards.

For more information on filing date requirements, visit: filing date requirements.

To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:

• The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
• The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
• The later-filed application must contain a specific reference to the prior-filed application
• The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78

Claiming benefit under these statutes allows an application to receive the earlier filing date of a prior-filed application, which can be crucial for establishing priority and overcoming prior art. However, this claim also requires that the application does not contain new matter.

The MPEP ¶ 2.10.01 states:

“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.”

If new matter is found, the applicant may need to change the application type or remove the benefit claim to maintain the new subject matter.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For more information on new matter, visit: new matter.

Failure to timely submit the reference to the prior-filed application within the time periods specified in 37 CFR 1.78 is considered a waiver of any benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application. See 37 CFR 1.78(d)(3)(iii). The time periods are not extendable.

If the reference to the prior-filed application is submitted after the time period provided by 37 CFR 1.78, a petition and the petition fee under 37 CFR 1.17(m) would be required to accept the delayed claim. The petition must be accompanied by:

• The reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior-filed application
• The petition fee
• A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

The abandonment of an international application in the United States is governed by specific legal provisions. According to MPEP 211.01(c), which cites 35 U.S.C. 371(d):

35 U.S.C. 371(d) indicates that failure to timely comply with the requirements of 35 U.S.C. 371(c) ‘shall be regarded as abandonment of the application by the parties thereof.’

This means that an international application designating the United States will be considered abandoned if the applicant fails to meet the requirements for entering the national stage under 35 U.S.C. 371(c) within the specified time limits. These requirements typically include submitting necessary documents, paying required fees, and providing an English translation of the application if it was not originally filed in English.

For more information on national stage entry, visit: national stage entry.