Patent Law FAQ

When claiming benefit to multiple prior applications, applicants must carefully establish a chain of copendency. The MPEP 211.01(b) provides guidance:

“The reference to the prior applications must identify all of the prior applications and indicate the relationship (i.e., continuation, divisional, or continuation-in-part) between each nonprovisional application in order to establish copendency throughout the entire chain of prior applications.”

Key points to remember:

• References must be made in each intermediate application in the chain.
• A specific reference is required for each prior-filed application and cannot be incorporated by reference from a prior application.
• There is no limit to the number of prior applications through which a chain of copendency may be traced.

It’s crucial to properly reference all prior applications to ensure the desired benefit claims are recognized. Failure to do so may result in the need for a petition under 37 CFR 1.78 and payment of a petition fee.

To learn more:

• benefit claims
• multiple prior applications
• chain of copendency
• reference to prior applications

New matter can have a significant impact on benefit claims in patent applications. The introduction of new matter in a later-filed application can result in the loss of the benefit claim to the prior-filed application. According to MPEP 211.05:

‘New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).’

This means that if a later-filed application includes new matter not disclosed in the prior-filed application, it cannot claim the benefit of the earlier filing date for that new matter. The new matter will only be entitled to the filing date of the later-filed application. It’s crucial for applicants to ensure that all claimed subject matter is fully supported by the prior-filed application to maintain the benefit of the earlier filing date.

To learn more:

• new matter
• benefit claims
• written description requirement
• prior-filed application

Benefit claims in Continued Prosecution Applications (CPAs) have some unique characteristics:

• A CPA automatically includes a specific reference under 35 U.S.C. 120 to the prior application
• No additional amendment to the specification or application data sheet is required to claim benefit
• A CPA is considered to reference every application in the chain with the same application number
• Priority claims under 35 U.S.C. 119(a)-(d) from the parent application automatically carry over to the CPA

The MPEP states: 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. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).

It’s important to note that applicants cannot delete benefit claims to certain applications in a chain of CPAs. The MPEP clarifies: Therefore, regardless of whether an application is filed under 37 CFR 1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a CPA is, by operation of 37 CFR 1.53(d)(7) and 37 CFR 1.78(d)(4), a claim to every application assigned the application number of such CPA. In addition, applicants will not be permitted to delete such a benefit claim as to certain applications assigned that application number (e.g., for patent term purposes).

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

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

Claiming priority and claiming benefit are two different mechanisms in patent law, though both can affect the effective filing date of a patent application:

1. Claiming Priority:
   • Typically refers to claiming the right of priority to a foreign application under 35 U.S.C. 119(a)-(d) and (f)
   • Also includes priority claims to provisional applications under 35 U.S.C. 119(e)
   • Governed by 37 CFR 1.55 for foreign priority claims
2. Claiming Benefit:
   • Refers to claiming the benefit of an earlier filing date of a U.S. application under 35 U.S.C. 120, 121, 365(c), or 386(c)
   • Typically used for continuation, divisional, or continuation-in-part applications
   • Governed by 37 CFR 1.78

The MPEP discusses both types of claims: “Under certain conditions and on fulfilling certain requirements, a later-filed application for patent filed in the United States may claim the benefit of, or priority to, a prior application filed in the United States (see 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78) or in a foreign country (see 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55).”

The effective filing date for a claimed invention is determined as follows:

• The actual filing date of the application containing the claim, or
• The filing date of the earliest application for which the patent or application is entitled to claim priority or benefit

The MPEP cites 35 U.S.C. 100(i)(1): “the effective filing date for a claimed invention in a patent or application (except in an application for reissue or reissued patent) is set forth in 35 U.S.C. 100(i)(1) as: (A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or (B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b) or to the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c).” (MPEP 210)

Benefit claims in Continued Prosecution Applications (CPAs) have some unique characteristics:

• A CPA automatically includes a specific reference under 35 U.S.C. 120 to the prior application
• No additional amendment to the specification or application data sheet is required to claim benefit
• A CPA is considered to reference every application in the chain with the same application number
• Priority claims under 35 U.S.C. 119(a)-(d) from the parent application automatically carry over to the CPA

The MPEP states: 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. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).

It’s important to note that applicants cannot delete benefit claims to certain applications in a chain of CPAs. The MPEP clarifies: Therefore, regardless of whether an application is filed under 37 CFR 1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a CPA is, by operation of 37 CFR 1.53(d)(7) and 37 CFR 1.78(d)(4), a claim to every application assigned the application number of such CPA. In addition, applicants will not be permitted to delete such a benefit claim as to certain applications assigned that application number (e.g., for patent term purposes).

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

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

When claiming benefit to multiple prior applications, applicants must carefully establish a chain of copendency. The MPEP 211.01(b) provides guidance:

“The reference to the prior applications must identify all of the prior applications and indicate the relationship (i.e., continuation, divisional, or continuation-in-part) between each nonprovisional application in order to establish copendency throughout the entire chain of prior applications.”

Key points to remember:

• References must be made in each intermediate application in the chain.
• A specific reference is required for each prior-filed application and cannot be incorporated by reference from a prior application.
• There is no limit to the number of prior applications through which a chain of copendency may be traced.

It’s crucial to properly reference all prior applications to ensure the desired benefit claims are recognized. Failure to do so may result in the need for a petition under 37 CFR 1.78 and payment of a petition fee.

To learn more:

• benefit claims
• multiple prior applications
• chain of copendency
• reference to prior applications

Claiming priority and claiming benefit are two different mechanisms in patent law, though both can affect the effective filing date of a patent application:

1. Claiming Priority:
   • Typically refers to claiming the right of priority to a foreign application under 35 U.S.C. 119(a)-(d) and (f)
   • Also includes priority claims to provisional applications under 35 U.S.C. 119(e)
   • Governed by 37 CFR 1.55 for foreign priority claims
2. Claiming Benefit:
   • Refers to claiming the benefit of an earlier filing date of a U.S. application under 35 U.S.C. 120, 121, 365(c), or 386(c)
   • Typically used for continuation, divisional, or continuation-in-part applications
   • Governed by 37 CFR 1.78

The MPEP discusses both types of claims: “Under certain conditions and on fulfilling certain requirements, a later-filed application for patent filed in the United States may claim the benefit of, or priority to, a prior application filed in the United States (see 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78) or in a foreign country (see 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55).”

The effective filing date for a claimed invention is determined as follows:

• The actual filing date of the application containing the claim, or
• The filing date of the earliest application for which the patent or application is entitled to claim priority or benefit

The MPEP cites 35 U.S.C. 100(i)(1): “the effective filing date for a claimed invention in a patent or application (except in an application for reissue or reissued patent) is set forth in 35 U.S.C. 100(i)(1) as: (A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or (B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b) or to the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c).” (MPEP 210)

New matter can have a significant impact on benefit claims in patent applications. The introduction of new matter in a later-filed application can result in the loss of the benefit claim to the prior-filed application. According to MPEP 211.05:

‘New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).’

This means that if a later-filed application includes new matter not disclosed in the prior-filed application, it cannot claim the benefit of the earlier filing date for that new matter. The new matter will only be entitled to the filing date of the later-filed application. It’s crucial for applicants to ensure that all claimed subject matter is fully supported by the prior-filed application to maintain the benefit of the earlier filing date.

To learn more:

• new matter
• benefit claims
• written description requirement
• prior-filed application

Benefit claims in Continued Prosecution Applications (CPAs) have some unique characteristics:

• A CPA automatically includes a specific reference under 35 U.S.C. 120 to the prior application
• No additional amendment to the specification or application data sheet is required to claim benefit
• A CPA is considered to reference every application in the chain with the same application number
• Priority claims under 35 U.S.C. 119(a)-(d) from the parent application automatically carry over to the CPA

The MPEP states: 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. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).

It’s important to note that applicants cannot delete benefit claims to certain applications in a chain of CPAs. The MPEP clarifies: Therefore, regardless of whether an application is filed under 37 CFR 1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a CPA is, by operation of 37 CFR 1.53(d)(7) and 37 CFR 1.78(d)(4), a claim to every application assigned the application number of such CPA. In addition, applicants will not be permitted to delete such a benefit claim as to certain applications assigned that application number (e.g., for patent term purposes).

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

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

When claiming benefit to multiple prior applications, applicants must carefully establish a chain of copendency. The MPEP 211.01(b) provides guidance:

“The reference to the prior applications must identify all of the prior applications and indicate the relationship (i.e., continuation, divisional, or continuation-in-part) between each nonprovisional application in order to establish copendency throughout the entire chain of prior applications.”

Key points to remember:

• References must be made in each intermediate application in the chain.
• A specific reference is required for each prior-filed application and cannot be incorporated by reference from a prior application.
• There is no limit to the number of prior applications through which a chain of copendency may be traced.

It’s crucial to properly reference all prior applications to ensure the desired benefit claims are recognized. Failure to do so may result in the need for a petition under 37 CFR 1.78 and payment of a petition fee.

To learn more:

• benefit claims
• multiple prior applications
• chain of copendency
• reference to prior applications

Claiming priority and claiming benefit are two different mechanisms in patent law, though both can affect the effective filing date of a patent application:

1. Claiming Priority:
   • Typically refers to claiming the right of priority to a foreign application under 35 U.S.C. 119(a)-(d) and (f)
   • Also includes priority claims to provisional applications under 35 U.S.C. 119(e)
   • Governed by 37 CFR 1.55 for foreign priority claims
2. Claiming Benefit:
   • Refers to claiming the benefit of an earlier filing date of a U.S. application under 35 U.S.C. 120, 121, 365(c), or 386(c)
   • Typically used for continuation, divisional, or continuation-in-part applications
   • Governed by 37 CFR 1.78

The MPEP discusses both types of claims: “Under certain conditions and on fulfilling certain requirements, a later-filed application for patent filed in the United States may claim the benefit of, or priority to, a prior application filed in the United States (see 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78) or in a foreign country (see 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55).”

The effective filing date for a claimed invention is determined as follows:

• The actual filing date of the application containing the claim, or
• The filing date of the earliest application for which the patent or application is entitled to claim priority or benefit

The MPEP cites 35 U.S.C. 100(i)(1): “the effective filing date for a claimed invention in a patent or application (except in an application for reissue or reissued patent) is set forth in 35 U.S.C. 100(i)(1) as: (A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or (B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b) or to the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c).” (MPEP 210)

New matter can have a significant impact on benefit claims in patent applications. The introduction of new matter in a later-filed application can result in the loss of the benefit claim to the prior-filed application. According to MPEP 211.05:

‘New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).’

This means that if a later-filed application includes new matter not disclosed in the prior-filed application, it cannot claim the benefit of the earlier filing date for that new matter. The new matter will only be entitled to the filing date of the later-filed application. It’s crucial for applicants to ensure that all claimed subject matter is fully supported by the prior-filed application to maintain the benefit of the earlier filing date.

To learn more:

• new matter
• benefit claims
• written description requirement
• prior-filed application

Benefit claims in Continued Prosecution Applications (CPAs) have some unique characteristics:

• A CPA automatically includes a specific reference under 35 U.S.C. 120 to the prior application
• No additional amendment to the specification or application data sheet is required to claim benefit
• A CPA is considered to reference every application in the chain with the same application number
• Priority claims under 35 U.S.C. 119(a)-(d) from the parent application automatically carry over to the CPA

The MPEP states: 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. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).

It’s important to note that applicants cannot delete benefit claims to certain applications in a chain of CPAs. The MPEP clarifies: Therefore, regardless of whether an application is filed under 37 CFR 1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a CPA is, by operation of 37 CFR 1.53(d)(7) and 37 CFR 1.78(d)(4), a claim to every application assigned the application number of such CPA. In addition, applicants will not be permitted to delete such a benefit claim as to certain applications assigned that application number (e.g., for patent term purposes).

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

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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