Question 1

What is the specific reference required by 35 U.S.C. 120 for a CPA?

Accepted Answer

For a Continued Prosecution Application (CPA), the specific reference required by 35 U.S.C. 120 is the CPA request itself. This is explicitly stated in 37 CFR 1.53(d)(7).

According to MPEP ¶ 2.34:

"As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request."

This means that when you file a CPA, the request itself serves as the necessary reference to the prior application, eliminating the need for additional amendments to the specification to establish continuity.

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

For more information on CPA, visit: CPA.

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

Question 2

What are the implications of claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c)?

Accepted Answer

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.

Question 3

Can a design patent application claim benefit from a PCT application under 35 U.S.C. 120?

Accepted Answer

Yes, a design patent application can claim benefit from a PCT application under 35 U.S.C. 120, provided certain conditions are met:

The PCT application must have designated the United States.
The design must be fully disclosed in the PCT application in compliance with 35 U.S.C. 112(a).
All other requirements for a proper benefit claim under 35 U.S.C. 120 must be satisfied.

The MPEP explicitly states: "In addition, a design application may claim benefit from an earlier filed PCT application under 35 U.S.C. 120 if the U.S. was designated in the PCT application."

It's important to note that while a design application can claim benefit from a PCT application, it cannot claim benefit from a provisional application. The MPEP clarifies: "It should be noted that where a design patent application claims benefit under 35 U.S.C. 120 to an intermediate nonprovisional utility patent application that directly claims the benefit of a provisional application, the design patent application cannot claim the benefit of the filing date of the provisional application. This is because a design application may not claim the benefit of a provisional application. See 35 U.S.C. 172."

To learn more:

Question 4

What conditions must be met for an international design application to be used as a basis for benefit claims?

Accepted Answer

For an international design application to be used as a basis for benefit claims, it must meet certain conditions. The MPEP specifies:

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.

This means that the international design application must have a valid filing date as determined by the regulations set forth in 37 CFR 1.1023. These regulations outline the requirements for establishing a filing date for international design applications, which typically include submitting the necessary documents and fees to the International Bureau or an appropriate office.

Additionally, the application claiming benefit must comply with the requirements of 35 U.S.C. 120, which include proper copendency and specific reference to the earlier application.

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Question 5

What happens if the only error identified in a reissue declaration is to delete a 35 U.S.C. 120 benefit claim?

Accepted Answer

If the only error identified in the reissue declaration is the need to delete a 35 U.S.C. 120 benefit claim, and there's no mention of increasing the patent term, the examiner should not reject the application under 35 U.S.C. 251. According to MPEP 1405:

"If the only error identified in the reissue declaration is the need to delete a 35 U.S.C. 120 benefit claim, which the patentee seeks to now delete in the reissue application, (and no reference is made as to increasing the term of the patent), the examiner should not make a rejection under 35 U.S.C. 251 based on lack of an appropriate error for reissue and failure to comply with 37 CFR 1.175."

The examiner should examine the reissue application in accordance with 37 CFR 1.176, but should include a statement in an Office action pointing out that the change will not affect the patent term.

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Patent Law FAQ

This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.

MPEP 200 – Types and Status of Application; Benefit and Priority (3)

What is the specific reference required by 35 U.S.C. 120 for a CPA?

What are the implications of claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c)?

What conditions must be met for an international design application to be used as a basis for benefit claims?

MPEP 201 – Types of Applications (1)

What is the specific reference required by 35 U.S.C. 120 for a CPA?

MPEP 211 – Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) (1)

What are the implications of claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c)?

Patent Law (3)

What is the specific reference required by 35 U.S.C. 120 for a CPA?

What are the implications of claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c)?

What conditions must be met for an international design application to be used as a basis for benefit claims?

Patent Procedure (3)

What is the specific reference required by 35 U.S.C. 120 for a CPA?

What are the implications of claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c)?

What conditions must be met for an international design application to be used as a basis for benefit claims?