Patent Law FAQ

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.

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).

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.

For a national application to claim the benefit of a prior international application designating the United States, certain conditions must be met. MPEP 211.01(c) outlines these conditions, referencing 35 U.S.C. 365(c) and 35 U.S.C. 120:

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.’

The key conditions include:

• The international application must designate the United States
• The national application must be filed before the patenting, abandonment, or termination of proceedings on the international application
• The national application must contain a specific reference to the international application
• The international application must comply with the requirements of 35 U.S.C. 371(c)

Additionally, the MPEP states:

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….’

Meeting these conditions allows applicants to claim the earlier filing date of the international application, which can be crucial for establishing priority and overcoming prior art references.

To learn more:

• benefit claim
• international application
• national application
• 35 U.S.C. 365(c)
• 35 U.S.C. 120

To learn more:

• 35 U.S.C. 365(c)
• 35 U.S.C. 120

How does the AIA FITF system affect the prior-filed application requirements?

The America Invents Act (AIA) First Inventor to File (FITF) system has introduced some changes to the prior-filed application requirements. The MPEP explains:

“AIA 35 U.S.C. 120, 121, 365(c), and 386(c) require that the prior-filed application to which benefit is claimed must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor.”

Key points to note:

• The prior application must name at least one common inventor with the later-filed application.
• This requirement applies to applications filed on or after September 16, 2012.
• For applications filed before this date, the prior application must name the inventor(s) named in the later-filed application.

These changes ensure that the benefit claim aligns with the FITF system’s focus on the first inventor to file. For more information, refer to MPEP 211.01 and USPTO AIA FITF Guidance.

To learn more:

• AIA
• FITF
• prior-filed application
• 35 U.S.C. 120
• 35 U.S.C. 121
• 35 U.S.C. 365(c)
• 35 U.S.C. 386(c)

To learn more:

• 35 U.S.C. 120
• 35 U.S.C. 121
• 35 U.S.C. 365(c)
• 35 U.S.C. 386(c)

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).

Can a continuation-in-part application claim benefit from an international application?

Yes, a continuation-in-part (CIP) application can claim benefit from an international application, but there are specific requirements and limitations. The MPEP 211.01(c) states:

A U.S. national application may claim benefit under 35 U.S.C. 120 and 365(c) to an international application designating the United States only if the international application was filed on or after November 29, 2000.

However, it’s crucial to understand that for a CIP application, the benefit claim is limited to the subject matter that was disclosed in the international application. Any new matter added in the CIP would not receive the benefit of the international application’s filing date. Additionally, the CIP must meet all the requirements of 35 U.S.C. 120, including copendency and specific reference to the earlier application.

To learn more:

• Continuation-in-part
• International application
• Benefit claim
• 35 U.S.C. 120
• 35 U.S.C. 365(c)

To learn more:

• 35 U.S.C. 120
• 35 U.S.C. 365(c)

Can a continuation-in-part (CIP) application claim benefit to multiple prior applications?

Yes, a continuation-in-part (CIP) application can claim benefit to multiple prior applications, provided certain conditions are met. The MPEP states:

“An applicant may claim the benefit of the filing date of one or more prior applications under 35 U.S.C. 120, 121, 365(c), or 386(c) in a later-filed application … if the later-filed application is filed before the patenting or abandonment of or termination of proceedings on the prior application.”

However, it’s important to note that for a CIP application:

• New matter in the CIP will only get the benefit of the CIP’s filing date.
• Matter disclosed in the prior application(s) can claim the earlier filing date(s).
• Each claim in the CIP is evaluated separately to determine which filing date it is entitled to.

For more details, see MPEP 211.01 and MPEP 201.08.

To learn more:

• continuation-in-part
• CIP
• multiple prior applications
• 35 U.S.C. 120
• 35 U.S.C. 121
• 35 U.S.C. 365(c)
• 35 U.S.C. 386(c)

To learn more:

• 35 U.S.C. 120
• 35 U.S.C. 121
• 35 U.S.C. 365(c)
• 35 U.S.C. 386(c)

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.

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).

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.

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).

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.

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).

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.

For a national application to claim the benefit of a prior international application designating the United States, certain conditions must be met. MPEP 211.01(c) outlines these conditions, referencing 35 U.S.C. 365(c) and 35 U.S.C. 120:

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.’

The key conditions include:

• The international application must designate the United States
• The national application must be filed before the patenting, abandonment, or termination of proceedings on the international application
• The national application must contain a specific reference to the international application
• The international application must comply with the requirements of 35 U.S.C. 371(c)

Additionally, the MPEP states:

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….’

Meeting these conditions allows applicants to claim the earlier filing date of the international application, which can be crucial for establishing priority and overcoming prior art references.

To learn more:

• benefit claim
• international application
• national application
• 35 U.S.C. 365(c)
• 35 U.S.C. 120

To learn more:

• 35 U.S.C. 365(c)
• 35 U.S.C. 120

How does the AIA FITF system affect the prior-filed application requirements?

The America Invents Act (AIA) First Inventor to File (FITF) system has introduced some changes to the prior-filed application requirements. The MPEP explains:

“AIA 35 U.S.C. 120, 121, 365(c), and 386(c) require that the prior-filed application to which benefit is claimed must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor.”

Key points to note:

• The prior application must name at least one common inventor with the later-filed application.
• This requirement applies to applications filed on or after September 16, 2012.
• For applications filed before this date, the prior application must name the inventor(s) named in the later-filed application.

These changes ensure that the benefit claim aligns with the FITF system’s focus on the first inventor to file. For more information, refer to MPEP 211.01 and USPTO AIA FITF Guidance.

To learn more:

• AIA
• FITF
• prior-filed application
• 35 U.S.C. 120
• 35 U.S.C. 121
• 35 U.S.C. 365(c)
• 35 U.S.C. 386(c)

To learn more:

• 35 U.S.C. 120
• 35 U.S.C. 121
• 35 U.S.C. 365(c)
• 35 U.S.C. 386(c)

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).

Can a continuation-in-part application claim benefit from an international application?

Yes, a continuation-in-part (CIP) application can claim benefit from an international application, but there are specific requirements and limitations. The MPEP 211.01(c) states:

A U.S. national application may claim benefit under 35 U.S.C. 120 and 365(c) to an international application designating the United States only if the international application was filed on or after November 29, 2000.

However, it’s crucial to understand that for a CIP application, the benefit claim is limited to the subject matter that was disclosed in the international application. Any new matter added in the CIP would not receive the benefit of the international application’s filing date. Additionally, the CIP must meet all the requirements of 35 U.S.C. 120, including copendency and specific reference to the earlier application.

To learn more:

• Continuation-in-part
• International application
• Benefit claim
• 35 U.S.C. 120
• 35 U.S.C. 365(c)

To learn more:

• 35 U.S.C. 120
• 35 U.S.C. 365(c)

Can a continuation-in-part (CIP) application claim benefit to multiple prior applications?

Yes, a continuation-in-part (CIP) application can claim benefit to multiple prior applications, provided certain conditions are met. The MPEP states:

“An applicant may claim the benefit of the filing date of one or more prior applications under 35 U.S.C. 120, 121, 365(c), or 386(c) in a later-filed application … if the later-filed application is filed before the patenting or abandonment of or termination of proceedings on the prior application.”

However, it’s important to note that for a CIP application:

• New matter in the CIP will only get the benefit of the CIP’s filing date.
• Matter disclosed in the prior application(s) can claim the earlier filing date(s).
• Each claim in the CIP is evaluated separately to determine which filing date it is entitled to.

For more details, see MPEP 211.01 and MPEP 201.08.

To learn more:

• continuation-in-part
• CIP
• multiple prior applications
• 35 U.S.C. 120
• 35 U.S.C. 121
• 35 U.S.C. 365(c)
• 35 U.S.C. 386(c)

To learn more:

• 35 U.S.C. 120
• 35 U.S.C. 121
• 35 U.S.C. 365(c)
• 35 U.S.C. 386(c)

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.

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).

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.

For a national application to claim the benefit of a prior international application designating the United States, certain conditions must be met. MPEP 211.01(c) outlines these conditions, referencing 35 U.S.C. 365(c) and 35 U.S.C. 120:

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.’

The key conditions include:

• The international application must designate the United States
• The national application must be filed before the patenting, abandonment, or termination of proceedings on the international application
• The national application must contain a specific reference to the international application
• The international application must comply with the requirements of 35 U.S.C. 371(c)

Additionally, the MPEP states:

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….’

Meeting these conditions allows applicants to claim the earlier filing date of the international application, which can be crucial for establishing priority and overcoming prior art references.

To learn more:

• benefit claim
• international application
• national application
• 35 U.S.C. 365(c)
• 35 U.S.C. 120

To learn more:

• 35 U.S.C. 365(c)
• 35 U.S.C. 120

How does the AIA FITF system affect the prior-filed application requirements?

The America Invents Act (AIA) First Inventor to File (FITF) system has introduced some changes to the prior-filed application requirements. The MPEP explains:

“AIA 35 U.S.C. 120, 121, 365(c), and 386(c) require that the prior-filed application to which benefit is claimed must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor.”

Key points to note:

• The prior application must name at least one common inventor with the later-filed application.
• This requirement applies to applications filed on or after September 16, 2012.
• For applications filed before this date, the prior application must name the inventor(s) named in the later-filed application.

These changes ensure that the benefit claim aligns with the FITF system’s focus on the first inventor to file. For more information, refer to MPEP 211.01 and USPTO AIA FITF Guidance.

To learn more:

• AIA
• FITF
• prior-filed application
• 35 U.S.C. 120
• 35 U.S.C. 121
• 35 U.S.C. 365(c)
• 35 U.S.C. 386(c)

To learn more:

• 35 U.S.C. 120
• 35 U.S.C. 121
• 35 U.S.C. 365(c)
• 35 U.S.C. 386(c)

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).

Can a continuation-in-part application claim benefit from an international application?

Yes, a continuation-in-part (CIP) application can claim benefit from an international application, but there are specific requirements and limitations. The MPEP 211.01(c) states:

A U.S. national application may claim benefit under 35 U.S.C. 120 and 365(c) to an international application designating the United States only if the international application was filed on or after November 29, 2000.

However, it’s crucial to understand that for a CIP application, the benefit claim is limited to the subject matter that was disclosed in the international application. Any new matter added in the CIP would not receive the benefit of the international application’s filing date. Additionally, the CIP must meet all the requirements of 35 U.S.C. 120, including copendency and specific reference to the earlier application.

To learn more:

• Continuation-in-part
• International application
• Benefit claim
• 35 U.S.C. 120
• 35 U.S.C. 365(c)

To learn more:

• 35 U.S.C. 120
• 35 U.S.C. 365(c)

Can a continuation-in-part (CIP) application claim benefit to multiple prior applications?

Yes, a continuation-in-part (CIP) application can claim benefit to multiple prior applications, provided certain conditions are met. The MPEP states:

“An applicant may claim the benefit of the filing date of one or more prior applications under 35 U.S.C. 120, 121, 365(c), or 386(c) in a later-filed application … if the later-filed application is filed before the patenting or abandonment of or termination of proceedings on the prior application.”

However, it’s important to note that for a CIP application:

• New matter in the CIP will only get the benefit of the CIP’s filing date.
• Matter disclosed in the prior application(s) can claim the earlier filing date(s).
• Each claim in the CIP is evaluated separately to determine which filing date it is entitled to.

For more details, see MPEP 211.01 and MPEP 201.08.

To learn more:

• continuation-in-part
• CIP
• multiple prior applications
• 35 U.S.C. 120
• 35 U.S.C. 121
• 35 U.S.C. 365(c)
• 35 U.S.C. 386(c)

To learn more:

• 35 U.S.C. 120
• 35 U.S.C. 121
• 35 U.S.C. 365(c)
• 35 U.S.C. 386(c)