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

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)

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)

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)