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 (2)
The main differences between claiming benefit under 35 U.S.C. 119(e) and 35 U.S.C. 120 are:
- 35 U.S.C. 119(e):
- Used for claiming benefit of a provisional application
- Does not require specifying the relationship between applications
- Example: “This application claims the benefit of U.S. Provisional Application No. 61/123,456, filed January 1, 2020.”
- 35 U.S.C. 120:
- Used for claiming benefit of a nonprovisional application
- Requires specifying the relationship (continuation, divisional, or continuation-in-part)
- Example: “This application is a continuation of U.S. Application No. 12/345,678, filed January 1, 2020.”
MPEP 211.02 advises: “Although 35 U.S.C. 120 does not preclude a benefit claim to a provisional application, it is not recommended that applicants claim the benefit to a provisional application under 35 U.S.C. 120 since such a claim could have the effect of reducing the patent term, as the term of a patent issuing from such an application may be measured from the filing date of the provisional application pursuant to 35 U.S.C. 154(a)(2).”
It’s important to use the correct statute when making benefit claims to ensure proper recognition and avoid potential issues with patent term calculations.
To learn more:
Can a continuation-in-part (CIP) application claim benefit to a provisional application?
Yes, a continuation-in-part (CIP) application can claim benefit to a provisional application, but there are important considerations regarding the disclosure and priority dates. The MPEP provides guidance on this:
“An applicant may claim the benefit of the filing date of a provisional application in a subsequent nonprovisional application or international application designating the United States if the nonprovisional application or international application designating the United States is filed within 12 months from the filing date of the provisional application.”
However, it’s crucial to understand that:
- Only the subject matter that was disclosed in the provisional application will receive the benefit of the provisional filing date.
- New matter added in the CIP will have the filing date of the CIP application itself.
- The applicant must comply with the requirements of 35 U.S.C. 119(e) and 37 CFR 1.78.
For more details on claiming benefit of provisional applications, see MPEP 211.
To learn more:
Patent Law (2)
The main differences between claiming benefit under 35 U.S.C. 119(e) and 35 U.S.C. 120 are:
- 35 U.S.C. 119(e):
- Used for claiming benefit of a provisional application
- Does not require specifying the relationship between applications
- Example: “This application claims the benefit of U.S. Provisional Application No. 61/123,456, filed January 1, 2020.”
- 35 U.S.C. 120:
- Used for claiming benefit of a nonprovisional application
- Requires specifying the relationship (continuation, divisional, or continuation-in-part)
- Example: “This application is a continuation of U.S. Application No. 12/345,678, filed January 1, 2020.”
MPEP 211.02 advises: “Although 35 U.S.C. 120 does not preclude a benefit claim to a provisional application, it is not recommended that applicants claim the benefit to a provisional application under 35 U.S.C. 120 since such a claim could have the effect of reducing the patent term, as the term of a patent issuing from such an application may be measured from the filing date of the provisional application pursuant to 35 U.S.C. 154(a)(2).”
It’s important to use the correct statute when making benefit claims to ensure proper recognition and avoid potential issues with patent term calculations.
To learn more:
Can a continuation-in-part (CIP) application claim benefit to a provisional application?
Yes, a continuation-in-part (CIP) application can claim benefit to a provisional application, but there are important considerations regarding the disclosure and priority dates. The MPEP provides guidance on this:
“An applicant may claim the benefit of the filing date of a provisional application in a subsequent nonprovisional application or international application designating the United States if the nonprovisional application or international application designating the United States is filed within 12 months from the filing date of the provisional application.”
However, it’s crucial to understand that:
- Only the subject matter that was disclosed in the provisional application will receive the benefit of the provisional filing date.
- New matter added in the CIP will have the filing date of the CIP application itself.
- The applicant must comply with the requirements of 35 U.S.C. 119(e) and 37 CFR 1.78.
For more details on claiming benefit of provisional applications, see MPEP 211.
To learn more:
Patent Procedure (2)
The main differences between claiming benefit under 35 U.S.C. 119(e) and 35 U.S.C. 120 are:
- 35 U.S.C. 119(e):
- Used for claiming benefit of a provisional application
- Does not require specifying the relationship between applications
- Example: “This application claims the benefit of U.S. Provisional Application No. 61/123,456, filed January 1, 2020.”
- 35 U.S.C. 120:
- Used for claiming benefit of a nonprovisional application
- Requires specifying the relationship (continuation, divisional, or continuation-in-part)
- Example: “This application is a continuation of U.S. Application No. 12/345,678, filed January 1, 2020.”
MPEP 211.02 advises: “Although 35 U.S.C. 120 does not preclude a benefit claim to a provisional application, it is not recommended that applicants claim the benefit to a provisional application under 35 U.S.C. 120 since such a claim could have the effect of reducing the patent term, as the term of a patent issuing from such an application may be measured from the filing date of the provisional application pursuant to 35 U.S.C. 154(a)(2).”
It’s important to use the correct statute when making benefit claims to ensure proper recognition and avoid potential issues with patent term calculations.
To learn more:
Can a continuation-in-part (CIP) application claim benefit to a provisional application?
Yes, a continuation-in-part (CIP) application can claim benefit to a provisional application, but there are important considerations regarding the disclosure and priority dates. The MPEP provides guidance on this:
“An applicant may claim the benefit of the filing date of a provisional application in a subsequent nonprovisional application or international application designating the United States if the nonprovisional application or international application designating the United States is filed within 12 months from the filing date of the provisional application.”
However, it’s crucial to understand that:
- Only the subject matter that was disclosed in the provisional application will receive the benefit of the provisional filing date.
- New matter added in the CIP will have the filing date of the CIP application itself.
- The applicant must comply with the requirements of 35 U.S.C. 119(e) and 37 CFR 1.78.
For more details on claiming benefit of provisional applications, see MPEP 211.
To learn more: