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 (7)
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:
Can a provisional application be used as a prior-filed application for benefit claims?
Yes, a provisional application can be used as a prior-filed application for benefit claims in certain circumstances. According to MPEP 211.01:
‘The prior application may be a provisional application under 35 U.S.C. 111(b) or a nonprovisional application under 35 U.S.C. 111(a).’
However, there are specific requirements and limitations when claiming the benefit of a provisional application:
- The nonprovisional application must be filed within 12 months of the provisional application’s filing date (or 14 months with a grantable petition under 37 CFR 1.78(b)).
- The provisional application must adequately support and enable the subject matter of the claims in the nonprovisional application.
- The specific reference to the provisional application must be included in an application data sheet (ADS) or the first sentence of the specification.
It’s important to note that while a nonprovisional application can claim the benefit of a provisional application, a provisional application cannot claim the benefit of or priority to any other application.
To learn more:
What is the process for adding a benefit claim after the time period set forth in 37 CFR 1.78?
To add a benefit claim after the time period set forth in 37 CFR 1.78, you must file a petition to accept an unintentionally delayed benefit claim. The MPEP 211.02(a) outlines the process:
- File a petition under 37 CFR 1.78(c) for claiming the benefit of a prior-filed provisional application, or under 37 CFR 1.78(e) for claiming the benefit of a prior-filed nonprovisional application.
- Pay the petition fee (currently $2,000 for nonprovisional applications).
- Submit a corrected application data sheet (ADS) including the reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior-filed application.
- Provide a statement that the entire delay between the date the benefit claim was due and the date the benefit claim was filed was unintentional.
The MPEP states: “The Director may require additional information where there is a question whether the delay was unintentional.” It’s crucial to ensure all requirements are met to avoid potential rejection of the petition.
To learn more:
How do I mark changes in a corrected Application Data Sheet (ADS) for benefit claims?
When submitting a corrected Application Data Sheet (ADS) to add or correct a benefit claim, it’s crucial to properly mark the changes. According to MPEP 211.02(a):
The corrected ADS must identify the information that is being changed with underlining for insertions and strike-through or brackets for text removed as required by 37 CFR 1.76(c)(2).
To properly mark changes in a corrected ADS:
- Insertions: Underline new text
- Deletions: Use strike-through or brackets for removed text
- Existing information: Include all information from the original ADS, even if unchanged
It’s important to note that the entire benefit claim must be underlined if you’re adding a new benefit claim. This helps the USPTO easily identify and process the changes to your application.
To learn more:
How do I correct a benefit claim in a nonprovisional application after the time period set forth in 37 CFR 1.78?
To correct a benefit claim in a nonprovisional application after the time period set forth in 37 CFR 1.78, you need to file a petition to accept a delayed claim. The MPEP states:
“A petition to accept a delayed claim under 37 CFR 1.78(c) for the benefit of a prior-filed provisional application or under 37 CFR 1.78(e) for the benefit of a prior-filed nonprovisional application must be accompanied by:”
- The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed provisional application or the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed nonprovisional application, unless previously submitted;
- The petition fee set forth in 37 CFR 1.17(m); and
- A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(a)(4) or 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional.
The Director may require additional information where there is a question whether the delay was unintentional.
For more detailed information, refer to MPEP 211.02(a).
To learn more:
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.
To learn more:
To learn more:
Patent Law (7)
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:
Can a provisional application be used as a prior-filed application for benefit claims?
Yes, a provisional application can be used as a prior-filed application for benefit claims in certain circumstances. According to MPEP 211.01:
‘The prior application may be a provisional application under 35 U.S.C. 111(b) or a nonprovisional application under 35 U.S.C. 111(a).’
However, there are specific requirements and limitations when claiming the benefit of a provisional application:
- The nonprovisional application must be filed within 12 months of the provisional application’s filing date (or 14 months with a grantable petition under 37 CFR 1.78(b)).
- The provisional application must adequately support and enable the subject matter of the claims in the nonprovisional application.
- The specific reference to the provisional application must be included in an application data sheet (ADS) or the first sentence of the specification.
It’s important to note that while a nonprovisional application can claim the benefit of a provisional application, a provisional application cannot claim the benefit of or priority to any other application.
To learn more:
What is the process for adding a benefit claim after the time period set forth in 37 CFR 1.78?
To add a benefit claim after the time period set forth in 37 CFR 1.78, you must file a petition to accept an unintentionally delayed benefit claim. The MPEP 211.02(a) outlines the process:
- File a petition under 37 CFR 1.78(c) for claiming the benefit of a prior-filed provisional application, or under 37 CFR 1.78(e) for claiming the benefit of a prior-filed nonprovisional application.
- Pay the petition fee (currently $2,000 for nonprovisional applications).
- Submit a corrected application data sheet (ADS) including the reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior-filed application.
- Provide a statement that the entire delay between the date the benefit claim was due and the date the benefit claim was filed was unintentional.
The MPEP states: “The Director may require additional information where there is a question whether the delay was unintentional.” It’s crucial to ensure all requirements are met to avoid potential rejection of the petition.
To learn more:
How do I mark changes in a corrected Application Data Sheet (ADS) for benefit claims?
When submitting a corrected Application Data Sheet (ADS) to add or correct a benefit claim, it’s crucial to properly mark the changes. According to MPEP 211.02(a):
The corrected ADS must identify the information that is being changed with underlining for insertions and strike-through or brackets for text removed as required by 37 CFR 1.76(c)(2).
To properly mark changes in a corrected ADS:
- Insertions: Underline new text
- Deletions: Use strike-through or brackets for removed text
- Existing information: Include all information from the original ADS, even if unchanged
It’s important to note that the entire benefit claim must be underlined if you’re adding a new benefit claim. This helps the USPTO easily identify and process the changes to your application.
To learn more:
How do I correct a benefit claim in a nonprovisional application after the time period set forth in 37 CFR 1.78?
To correct a benefit claim in a nonprovisional application after the time period set forth in 37 CFR 1.78, you need to file a petition to accept a delayed claim. The MPEP states:
“A petition to accept a delayed claim under 37 CFR 1.78(c) for the benefit of a prior-filed provisional application or under 37 CFR 1.78(e) for the benefit of a prior-filed nonprovisional application must be accompanied by:”
- The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed provisional application or the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed nonprovisional application, unless previously submitted;
- The petition fee set forth in 37 CFR 1.17(m); and
- A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(a)(4) or 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional.
The Director may require additional information where there is a question whether the delay was unintentional.
For more detailed information, refer to MPEP 211.02(a).
To learn more:
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.
To learn more:
To learn more:
Patent Procedure (7)
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:
Can a provisional application be used as a prior-filed application for benefit claims?
Yes, a provisional application can be used as a prior-filed application for benefit claims in certain circumstances. According to MPEP 211.01:
‘The prior application may be a provisional application under 35 U.S.C. 111(b) or a nonprovisional application under 35 U.S.C. 111(a).’
However, there are specific requirements and limitations when claiming the benefit of a provisional application:
- The nonprovisional application must be filed within 12 months of the provisional application’s filing date (or 14 months with a grantable petition under 37 CFR 1.78(b)).
- The provisional application must adequately support and enable the subject matter of the claims in the nonprovisional application.
- The specific reference to the provisional application must be included in an application data sheet (ADS) or the first sentence of the specification.
It’s important to note that while a nonprovisional application can claim the benefit of a provisional application, a provisional application cannot claim the benefit of or priority to any other application.
To learn more:
What is the process for adding a benefit claim after the time period set forth in 37 CFR 1.78?
To add a benefit claim after the time period set forth in 37 CFR 1.78, you must file a petition to accept an unintentionally delayed benefit claim. The MPEP 211.02(a) outlines the process:
- File a petition under 37 CFR 1.78(c) for claiming the benefit of a prior-filed provisional application, or under 37 CFR 1.78(e) for claiming the benefit of a prior-filed nonprovisional application.
- Pay the petition fee (currently $2,000 for nonprovisional applications).
- Submit a corrected application data sheet (ADS) including the reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior-filed application.
- Provide a statement that the entire delay between the date the benefit claim was due and the date the benefit claim was filed was unintentional.
The MPEP states: “The Director may require additional information where there is a question whether the delay was unintentional.” It’s crucial to ensure all requirements are met to avoid potential rejection of the petition.
To learn more:
How do I mark changes in a corrected Application Data Sheet (ADS) for benefit claims?
When submitting a corrected Application Data Sheet (ADS) to add or correct a benefit claim, it’s crucial to properly mark the changes. According to MPEP 211.02(a):
The corrected ADS must identify the information that is being changed with underlining for insertions and strike-through or brackets for text removed as required by 37 CFR 1.76(c)(2).
To properly mark changes in a corrected ADS:
- Insertions: Underline new text
- Deletions: Use strike-through or brackets for removed text
- Existing information: Include all information from the original ADS, even if unchanged
It’s important to note that the entire benefit claim must be underlined if you’re adding a new benefit claim. This helps the USPTO easily identify and process the changes to your application.
To learn more:
How do I correct a benefit claim in a nonprovisional application after the time period set forth in 37 CFR 1.78?
To correct a benefit claim in a nonprovisional application after the time period set forth in 37 CFR 1.78, you need to file a petition to accept a delayed claim. The MPEP states:
“A petition to accept a delayed claim under 37 CFR 1.78(c) for the benefit of a prior-filed provisional application or under 37 CFR 1.78(e) for the benefit of a prior-filed nonprovisional application must be accompanied by:”
- The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed provisional application or the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed nonprovisional application, unless previously submitted;
- The petition fee set forth in 37 CFR 1.17(m); and
- A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(a)(4) or 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional.
The Director may require additional information where there is a question whether the delay was unintentional.
For more detailed information, refer to MPEP 211.02(a).
To learn more:
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.
To learn more:
To learn more: