Patent Law FAQ

35 U.S.C. 119(e) is crucial in understanding the relationship between provisional applications and their non-provisional counterparts, particularly in terms of assignments. The MPEP § 306.01 states:

If an application which claims the benefit of the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later application, similar to the practice with respect to continuations and divisions filed under 35 U.S.C. 120.

This means:

• 35 U.S.C. 119(e) allows non-provisional applications to claim the benefit of an earlier filing date from a provisional application.
• When a non-provisional application claims this benefit and contains only subject matter from the provisional, the assignment recorded for the provisional application remains effective for the non-provisional.
• This treatment aligns with how assignments are handled for continuations and divisions under 35 U.S.C. 120.

However, if new subject matter is introduced in the non-provisional application, different assignment rules may apply, as detailed in other parts of MPEP § 306.01.

35 U.S.C. 119(e) is crucial in understanding the relationship between provisional applications and their non-provisional counterparts, particularly in terms of assignments. The MPEP § 306.01 states:

If an application which claims the benefit of the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later application, similar to the practice with respect to continuations and divisions filed under 35 U.S.C. 120.

This means:

• 35 U.S.C. 119(e) allows non-provisional applications to claim the benefit of an earlier filing date from a provisional application.
• When a non-provisional application claims this benefit and contains only subject matter from the provisional, the assignment recorded for the provisional application remains effective for the non-provisional.
• This treatment aligns with how assignments are handled for continuations and divisions under 35 U.S.C. 120.

However, if new subject matter is introduced in the non-provisional application, different assignment rules may apply, as detailed in other parts of MPEP § 306.01.

For those seeking more detailed information on benefit claims under 35 U.S.C. 386(c), the Manual of Patent Examining Procedure (MPEP) provides a specific reference. According to MPEP § 211.01(d):

See MPEP § 2920.05(e) for additional information pertaining to benefit claims under 35 U.S.C. 386(c).

This section of the MPEP offers comprehensive guidance on the intricacies of claiming benefit to international design applications, including procedural requirements and practical considerations for patent applicants and examiners.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

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

The Transco Products decision is significant in determining benefit claims because it established that a later-filed application does not need to use the exact same words as the prior-filed application to satisfy the written description requirement. 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). While there is no in haec verba requirement, newly added claims or claim limitations must be supported in the specification through express, implicit, or inherent disclosure. An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of the error in the specification, but also recognize the appropriate correction. In re Oda, 443 F.2d 1200, 170 USPQ 268 (CCPA 1971).’

This means that the USPTO will consider whether the prior-filed application provides sufficient support for the claims in the later-filed application, even if the exact wording is different, as long as the support is express, implicit, or inherent in the original disclosure.

To learn more:

• Transco Products
• benefit claims
• written description
• express disclosure
• implicit disclosure
• inherent disclosure

What is the significance of the ‘365(c)’ filing date in claiming benefit of a nonprovisional application?

The ‘365(c)’ filing date is crucial when claiming the benefit of a nonprovisional application that was filed as a PCT application and entered the national stage. According to MPEP 211.01(b):

‘If the prior nonprovisional application is an international application that was filed as a PCT application and entered the national stage under 35 U.S.C. 371, the 365(c) filing date of the international application is the filing date to be used in determining copendency.’

This means that when determining if applications are copendent for benefit claims, the PCT filing date (365(c) date) is used rather than the U.S. national stage entry date. This can be significant for maintaining continuous priority chains in international patent applications.

To learn more:

• 365(c) filing date
• PCT applications
• national stage entry
• copendency
• benefit claims

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

Copendency is a crucial requirement when claiming the benefit of a prior-filed nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c). The MPEP defines copendency as follows:

“Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”

Key points about copendency:

• The later-filed application must be filed before the prior application patents, is abandoned, or proceedings are terminated
• If the prior application issues as a patent, the later-filed application can be filed on the same date the patent issues
• If the prior application is abandoned, the later-filed application must be filed before the abandonment
• Without copendency, the later-filed application cannot claim the benefit of the prior application’s filing date

Applicants should be aware of the copendency requirement to ensure their benefit claims are valid.

What is the ‘specific reference’ requirement for claiming benefit of a prior-filed application?

The ‘specific reference’ requirement is a crucial aspect of claiming the benefit of a prior-filed application. According to MPEP 211.01, To claim the benefit of a prior-filed application, the later-filed application must contain a specific reference to the prior-filed application. This means that:

• The specific reference must be made in the first sentence(s) of the specification or in an application data sheet (ADS).
• It should include the relationship between the applications (e.g., continuation, divisional, or continuation-in-part).
• The prior application’s serial number and filing date must be provided.

For example: ‘This application is a continuation of Application No. 12/345,678, filed January 1, 2020.’

Failure to provide this specific reference can result in the loss of the benefit claim. For more details, refer to MPEP 211 and 37 CFR 1.78.

What is the ‘same invention’ requirement for claiming benefit under 35 U.S.C. 120?

The ‘same invention’ requirement is a crucial aspect of claiming benefit under 35 U.S.C. 120. MPEP 211.01(b) explains: The second application must be an application for a patent for an invention which is also disclosed in the first application.

This means:

• The later application must disclose at least some part of the invention claimed in the prior application.
• The disclosure in the prior application must provide adequate support for the claims in the later application.
• New matter introduced in the later application cannot claim the benefit of the earlier filing date.

The ‘same invention’ does not require identical claims, but there must be a common disclosure that supports the claims in both applications. For more information, see MPEP 211.01(b) and 35 U.S.C. 120.

The front page of a patent issuing from a continued prosecution application (CPA) filed under 37 CFR 1.53(d) contains specific information about prior applications.

As stated in the MPEP: The front page of a printed patent issuing on a continued prosecution application (CPA) filed under37 CFR 1.53(d)will identify the application number and filing date of the most recent noncontinued prosecution application (but not the filing date of the CPA) as well as all prior applications from which benefit was claimed in the most recent noncontinued prosecution application. (MPEP 202)

This means that for a CPA:

• The application number and filing date of the most recent non-CPA application are shown
• The CPA’s own filing date is not displayed
• All prior applications claimed as benefit in the most recent non-CPA application are listed

This information helps establish the continuity and priority of the patent application.

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 front page, visit: patent front page.

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

What happens if I need to change the order of benefit claims in my patent application?

Changing the order of benefit claims in a patent application requires specific actions, as outlined in MPEP 211.02(a):

“If applicant needs to change the order of benefit claims presented in an application data sheet or patent, applicant must file a corrected application data sheet under 37 CFR 1.76(c) or a Certificate of Correction, as appropriate.”

The method you choose depends on the status of your application:

• For pending applications: File a corrected Application Data Sheet (ADS) under 37 CFR 1.76(c).
• For issued patents: File a Certificate of Correction.

It’s important to note that changing the order of benefit claims may affect the effective filing date of your application, which could impact patentability considerations.

To learn more:

• benefit claims
• order change
• Application Data Sheet
• Certificate of Correction
• patent application

When claiming benefit to a non-English language provisional application, the following are required:

• An English language translation of the provisional application
• A statement that the translation is accurate

These must be filed in the provisional application. If not filed, the applicant will be notified and given a period of time to file the translation and statement.

MPEP 211.01(a) states: If benefit is being claimed to a provisional application which was filed in a language other than English, (A) an English language translation of the provisional application, and (B) a statement that the translation is accurate, are required to be filed in the provisional application.

Failure to timely provide the translation and statement may result in the abandonment of the nonprovisional application.

To learn more:

• provisional applications
• non-English applications
• translations
• benefit claims

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.

To claim the benefit of a prior-filed provisional application under 35 U.S.C. 119(e), the following requirements must be met:

• The nonprovisional application must be filed within 12 months of the provisional application’s filing date (unless the benefit has been restored)
• The provisional application must have at least one common inventor with the nonprovisional application
• The provisional application must be entitled to a filing date and have paid the basic filing fee
• If the provisional application was filed in a language other than English, an English translation and a statement that the translation is accurate must be filed

As stated in the MPEP: “When a later-filed application is claiming the benefit of a prior-filed provisional application under 35 U.S.C. 119(e), the nonprovisional application must be filed not later than 12 months after the date on which the provisional application was filed, unless the benefit of the provisional application has been restored.”

The filing date of a Continued Prosecution Application (CPA) is important for priority claims and patent term calculations. Key points include:

• The filing date of a CPA is the date on which the CPA request is received by the USPTO
• A CPA is automatically considered a specific reference under 35 U.S.C. 120 to the prior application
• The CPA is entitled to the benefit of the filing date of the prior application
• Priority claims from the parent application automatically carry over to the CPA

As stated in MPEP 201.06(d): 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. That is, the CPA includes the request for an application under 37 CFR 1.53(d) and the recitation of the application number of the prior application in such request is the ‘specific reference to the earlier filed application’ required by 35 U.S.C. 120.

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

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

How does the copendency requirement affect claiming benefit of a prior application?

The copendency requirement is a critical factor in claiming the benefit of a prior application. MPEP 211.01(b) states: To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be copending with the earlier application.

Copendency means:

• The later application must be filed before the patenting or abandonment of the prior application.
• There must be no gap in pendency between the applications in the chain.

If copendency is not maintained, the benefit claim to the earlier application will be lost. This can significantly impact the effective filing date of the later application, potentially affecting its patentability.

For detailed information on copendency, refer to MPEP 211.01(b) and 35 U.S.C. 120.

For applications filed before the America Invents Act (AIA), the best mode requirement affects benefit claims by requiring that the prior-filed application disclose the best mode contemplated by the inventor for carrying out the invention. According to MPEP 211.05:

‘The disclosure of the prior-filed application must provide adequate support and enablement for the claimed subject matter of the later-filed application in compliance with the requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, except for the best mode requirement.‘

However, it’s important to note that while the best mode requirement is not applied to benefit claims for applications filed on or after September 16, 2012 (the effective date of the AIA), it still applies to applications filed before this date. For pre-AIA applications, failure to disclose the best mode in the prior-filed application could result in the loss of the benefit claim if it is determined that the best mode was not carried forward to the later-filed application.

To learn more:

• best mode requirement
• AIA
• pre-AIA applications
• benefit claims

How does the AIA first-inventor-to-file system affect benefit claims?

The America Invents Act (AIA) introduced the first-inventor-to-file system, which has significant implications for benefit claims. While the MPEP 211.01 doesn’t directly address this, it’s an important consideration for applicants. Here’s how it affects benefit claims:

• Effective Filing Date: The effective filing date of a claimed invention is crucial under the AIA system. It’s determined by the earliest application in the priority chain that describes the claimed invention.
• Prior Art: The prior art date is now based on the effective filing date, making proper benefit claims even more critical.
• Grace Period: The one-year grace period for disclosures by the inventor is now measured from the effective filing date.
• Continuation and CIP Applications: These applications can still claim benefit to earlier applications, but the effective filing date for each claim is determined individually based on when its subject matter was first disclosed in the application chain.

For more information on the AIA and its impact on patent applications, refer to MPEP 2151 and the USPTO’s AIA FAQ page.

To learn more:

• AIA
• first-inventor-to-file
• benefit claims
• effective filing date

Copendency is a crucial requirement for claiming benefit between nonprovisional applications. The later-filed application must be filed before:

• The patenting of the prior application
• The abandonment of the prior application
• The termination of proceedings in the prior application

As stated in MPEP 211.01(b): When a later-filed application is claiming the benefit of a prior-filed nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c), the later-filed application must be copending with the prior application or with an intermediate nonprovisional application similarly entitled to the benefit of the filing date of the prior application.

If copendency is not maintained, the benefit claim is improper and the later-filed application cannot claim the earlier filing date of the prior application.

To learn more:

• copendency
• benefit claims
• continuation applications
• patent applications

Filing a Continued Prosecution Application (CPA) can have important implications for both patent term and prior art dates:

Patent Term:

• A CPA is a continuation of the prior application, so it does not get a new 15-year term from filing
• The 15-year term for a design patent issuing from a CPA is measured from the filing date of the earliest application in the chain that is subject to the 15-year term

Prior Art Dates:

• The effective filing date of a CPA for prior art purposes is generally the actual filing date of the CPA
• However, the CPA can claim the benefit of the prior application’s filing date for subject matter disclosed in the prior application

The MPEP notes: “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 amendment in an application under this paragraph may delete this specific reference to any prior application.” (37 CFR 1.53(d)(7))

This means the CPA is automatically considered a continuation for benefit claim purposes, which can affect both term and prior art dates.

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

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

For more information on prior art, visit: prior art.

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

To claim benefit of an international design application designating the United States, the following requirements must be met:

• The claim must be made in a nonprovisional application, international application, or international design application filed on or after May 13, 2015
• The international design application must be entitled to a filing date in accordance with 37 CFR 1.1023
• The claim must meet the conditions and requirements of 35 U.S.C. 120

MPEP 211.01(d) states: Pursuant to 35 U.S.C. 386(c), in accordance with the conditions and requirements of 35 U.S.C. 120, a nonprovisional application is entitled to the benefit of a prior international design application designating the United States.

It’s important to note that this benefit can only be claimed in applications or patents filed on or after May 13, 2015, as specified in 37 CFR 1.78(j).

To learn more:

• international design applications
• benefit claims
• design patents
• patent law

Provisional application benefits are handled differently from other types of priority claims on the bib-data sheet. If an applicant claims benefit under 35 U.S.C. 119(e) to a prior provisional application, the application number of that provisional application should be printed on the bib-data sheet.

However, it’s important to note: If applicant claims benefit under35 U.S.C. 119(e)to a prior provisional application, and states that the provisional application claims the benefit of, or priority to, earlier domestic or foreign application(s), the earlier application(s) should not be reflected on the bib-data sheet because a provisional application is not entitled to the benefit of, or right of priority to, any other application. (MPEP 202)

This is due to the limitation set forth in 35 U.S.C. 111(b)(7), which states that a provisional application cannot claim priority to or benefit from any other application.

Examiners should verify that provisional application data is correctly listed and that no improper benefit claims to earlier applications through a provisional application are included on the bib-data sheet.

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

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

For more information on provisional application, visit: provisional application.

No, MPEP ¶ 2.11 does not apply to benefit claims for provisional applications. The MPEP explicitly states:

Do not use this form paragraph for benefit claims under 35 U.S.C. 119(e) to provisional applications.

This means that the copendency requirements and procedures outlined in MPEP ¶ 2.11 are specifically for non-provisional applications claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c). Provisional applications have different rules and procedures for claiming benefit, which are covered under 35 U.S.C. 119(e) and other sections of the MPEP.

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

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

Yes, the benefit of a provisional application can be restored even after the 12-month deadline has passed, under certain conditions. The MPEP explains:

“If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

To restore the benefit, a petition under 37 CFR 1.78(b) must be filed, which requires:

• A reference to the provisional application
• The petition fee
• A statement that the delay was unintentional

The petition must be filed in the subsequent application or, in certain cases, in the earliest nonprovisional application claiming benefit to the international application.

To learn more:

• provisional application
• benefit restoration
• patent petition
• unintentional delay

To learn more:

• provisional applications
• benefit claims
• restoration of benefit
• patent law

No, design applications cannot claim the benefit of provisional applications under 35 U.S.C. 119(e).

MPEP 211.01(a) explicitly states: Design applications may not claim the benefit of a provisional application under 35 U.S.C. 119(e).

However, it’s important to note that while a design application cannot directly claim benefit of a provisional application, it may be possible to indirectly claim benefit through an intermediate utility application. The MPEP clarifies: Thus, where a design patent application claims benefit under 35 U.S.C. 120 to an intermediate nonprovisional utility patent application that directly claims the benefit of a provisional application, the design application cannot claim the benefit of the filing date of the provisional application.

To learn more:

• design applications
• provisional applications
• benefit claims
• patent law

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

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).”

To claim the benefit of an earlier filing date under 35 U.S.C. 120, the following requirements must be met:

• The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application
• The disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement
• The later-filed application must contain a specific reference to the prior application
• The later-filed application must be filed before the patenting or abandonment of or termination of proceedings on the first application

As stated in the MPEP: “To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or earlier-filed nonprovisional application or provisional application for which benefit is claimed); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement.”

Priority in patent applications refers to the ability of a later-filed application to claim the benefit of, or priority to, an earlier-filed application. This allows the later application to effectively have the filing date of the earlier application for certain purposes.

According to the MPEP, “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).”

Copendency refers to the requirement that a later-filed application claiming benefit of a prior application must be filed before the prior application is patented, abandoned, or proceedings are terminated. Copendency is crucial because:

• It establishes a continuous chain of pending applications
• It allows the later application to claim the earlier filing date
• Without copendency, the benefit claim is improper

As stated in MPEP 211.01(b): “Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”

The front page of a printed patent identifies all prior applications for which benefits are claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in continuation-in-part, continuation, divisional, and reissue applications.

If a benefit claim to a provisional application lacks proper indication of an intermediate application:

• The Office may not recognize the benefit claim
• The benefit claim may not appear on the filing receipt
• A petition under 37 CFR 1.78(c) and petition fee may be required to correct the benefit claim

MPEP 211.01(b) states: “If a benefit claim to a provisional application is submitted without an indication that an intermediate application directly claims the benefit of the provisional application and the instant nonprovisional application is not filed within the 12 month period (or 14 month period if the benefit of the provisional application has been restored pursuant to 37 CFR 1.78(b)) or the relationship between each nonprovisional application is not indicated, the Office will not recognize such benefit claim and will not include the benefit claim on the filing receipt.”

The following conditions and requirements need to be met to add omitted material to an application under 37 CFR 1.57(b):n

n
1. The application must have been filed on or after September 21, 2004

n

2. All or a portion of the specification or drawing(s) must have been inadvertently omitted

n

3. A priority claim under 37 CFR 1.55 or benefit claim under 37 CFR 1.78 must have been present on the filing date

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4. The omitted portion must be completely contained in the prior-filed application

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5. An amendment to include the omitted portion must be filed within a time period set by the Office

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6. If not otherwise entitled to a filing date, a petition under 37 CFR 1.53(e) with the fee must also be filed

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7. A copy of the prior-filed application must be supplied, except where the prior application was filed under 35 U.S.C. 111

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8. An English translation of any non-English prior-filed application must be supplied

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9. The location of the omitted portion in the prior-filed application must be identified

The time periods for filing priority or benefit claims in U.S. patent applications vary depending on the type of claim and application. Generally:

• For foreign priority claims under 35 U.S.C. 119(a)-(d) and (f), the claim must be made within the later of 4 months from the actual filing date or 16 months from the foreign application’s filing date.
• For domestic benefit claims under 35 U.S.C. 119(e) or 120, the claim must be made within the later of 4 months from the actual filing date or 16 months from the prior application’s filing date.
• For international applications entering the national stage, special rules apply.

The MPEP states: “37 CFR 1.55(d) contains provisions relating to the time for filing a priority claim in an application filed under 35 U.S.C. 111(a) and in an application entering the national stage under 35 U.S.C. 371” and “37 CFR 1.78(d) contains provisions relating to claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application.”

Note that these time periods are subject to the provisions of 37 CFR 1.55(p) and 1.78(k), which state that they are not extendable but are subject to certain exceptions.

To claim priority to or benefit of a prior-filed application, the later-filed application must:

• Contain a specific reference to the earlier-filed application
• Be filed within the required time period
• Include the priority or benefit claim in the application data sheet (for applications filed on or after September 16, 2012)

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.” (MPEP 210)

The requirements for claiming benefit of an earlier national application under 37 CFR 1.78 include:

• A specific reference to the earlier-filed application in the later-filed application
• For applications filed on or after September 16, 2012, the specific reference must be in the application data sheet (ADS)
• For applications filed before September 16, 2012, the specific reference must be in the ADS or in the first sentence(s) of the specification
• Meeting time requirements for filing the benefit claim
• In some cases, providing a statement regarding the effective filing date of claims

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.”

To claim the benefit of a prior-filed application in a continuation or continuation-in-part application, several requirements must be met:

1. The application must be filed before the patenting, abandonment, or termination of proceedings on the prior application.

2. The application must contain or be amended to contain a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be in an application data sheet.

3. The application must have at least one common inventor with the prior application.

4. The application must comply with the requirements of 35 U.S.C. 120 and 37 CFR 1.78.

As stated in the MPEP: “An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.”

To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:

• The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
• The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
• The later-filed application must contain a specific reference to the prior-filed application
• The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78

Failure to timely submit the reference to the prior-filed application within the time periods specified in 37 CFR 1.78 is considered a waiver of any benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application. See 37 CFR 1.78(d)(3)(iii). The time periods are not extendable.

If the reference to the prior-filed application is submitted after the time period provided by 37 CFR 1.78, a petition and the petition fee under 37 CFR 1.17(m) would be required to accept the delayed claim. The petition must be accompanied by:

• The reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior-filed application
• The petition fee
• A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

Examiners should review the identifying data of all prior applications for which benefits are claimed to ensure accuracy. This review includes:

• Checking that the data is provided in an application data sheet for applications filed on or after September 16, 2012
• Verifying that the data is provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012
• Ensuring the appropriate relationship (e.g., continuation, divisional, or continuation-in-part) between nonprovisional applications is included

The MPEP states: “The identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012.” (MPEP 202)

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)

No, the inclusion of prior application information in the patent does not necessarily indicate that the claims are entitled to the benefit of the earlier filing date.

See MPEP 2136.03 and MPEP 2154.01(b) for additional information.

To claim the benefit of a prior-filed application in a continuation or continuation-in-part application, several requirements must be met:

1. The application must be filed before the patenting, abandonment, or termination of proceedings on the prior application.

2. The application must contain or be amended to contain a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be in an application data sheet.

3. The application must have at least one common inventor with the prior application.

4. The application must comply with the requirements of 35 U.S.C. 120 and 37 CFR 1.78.

As stated in the MPEP: “An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.”

The filing date of a Continued Prosecution Application (CPA) is important for priority claims and patent term calculations. Key points include:

• The filing date of a CPA is the date on which the CPA request is received by the USPTO
• A CPA is automatically considered a specific reference under 35 U.S.C. 120 to the prior application
• The CPA is entitled to the benefit of the filing date of the prior application
• Priority claims from the parent application automatically carry over to the CPA

As stated in MPEP 201.06(d): 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. That is, the CPA includes the request for an application under 37 CFR 1.53(d) and the recitation of the application number of the prior application in such request is the ‘specific reference to the earlier filed application’ required by 35 U.S.C. 120.

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

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

Filing a Continued Prosecution Application (CPA) can have important implications for both patent term and prior art dates:

Patent Term:

• A CPA is a continuation of the prior application, so it does not get a new 15-year term from filing
• The 15-year term for a design patent issuing from a CPA is measured from the filing date of the earliest application in the chain that is subject to the 15-year term

Prior Art Dates:

• The effective filing date of a CPA for prior art purposes is generally the actual filing date of the CPA
• However, the CPA can claim the benefit of the prior application’s filing date for subject matter disclosed in the prior application

The MPEP notes: “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 amendment in an application under this paragraph may delete this specific reference to any prior application.” (37 CFR 1.53(d)(7))

This means the CPA is automatically considered a continuation for benefit claim purposes, which can affect both term and prior art dates.

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

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

For more information on prior art, visit: prior art.

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.

The front page of a printed patent identifies all prior applications for which benefits are claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in continuation-in-part, continuation, divisional, and reissue applications.

The front page of a patent issuing from a continued prosecution application (CPA) filed under 37 CFR 1.53(d) contains specific information about prior applications.

As stated in the MPEP: The front page of a printed patent issuing on a continued prosecution application (CPA) filed under37 CFR 1.53(d)will identify the application number and filing date of the most recent noncontinued prosecution application (but not the filing date of the CPA) as well as all prior applications from which benefit was claimed in the most recent noncontinued prosecution application. (MPEP 202)

This means that for a CPA:

• The application number and filing date of the most recent non-CPA application are shown
• The CPA’s own filing date is not displayed
• All prior applications claimed as benefit in the most recent non-CPA application are listed

This information helps establish the continuity and priority of the patent application.

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 front page, visit: patent front page.

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

Examiners should review the identifying data of all prior applications for which benefits are claimed to ensure accuracy. This review includes:

• Checking that the data is provided in an application data sheet for applications filed on or after September 16, 2012
• Verifying that the data is provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012
• Ensuring the appropriate relationship (e.g., continuation, divisional, or continuation-in-part) between nonprovisional applications is included

The MPEP states: “The identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012.” (MPEP 202)

Provisional application benefits are handled differently from other types of priority claims on the bib-data sheet. If an applicant claims benefit under 35 U.S.C. 119(e) to a prior provisional application, the application number of that provisional application should be printed on the bib-data sheet.

However, it’s important to note: If applicant claims benefit under35 U.S.C. 119(e)to a prior provisional application, and states that the provisional application claims the benefit of, or priority to, earlier domestic or foreign application(s), the earlier application(s) should not be reflected on the bib-data sheet because a provisional application is not entitled to the benefit of, or right of priority to, any other application. (MPEP 202)

This is due to the limitation set forth in 35 U.S.C. 111(b)(7), which states that a provisional application cannot claim priority to or benefit from any other application.

Examiners should verify that provisional application data is correctly listed and that no improper benefit claims to earlier applications through a provisional application are included on the bib-data sheet.

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

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

For more information on provisional application, visit: provisional application.

No, the inclusion of prior application information in the patent does not necessarily indicate that the claims are entitled to the benefit of the earlier filing date.

See MPEP 2136.03 and MPEP 2154.01(b) for additional information.

For those seeking more detailed information on benefit claims under 35 U.S.C. 386(c), the Manual of Patent Examining Procedure (MPEP) provides a specific reference. According to MPEP § 211.01(d):

See MPEP § 2920.05(e) for additional information pertaining to benefit claims under 35 U.S.C. 386(c).

This section of the MPEP offers comprehensive guidance on the intricacies of claiming benefit to international design applications, including procedural requirements and practical considerations for patent applicants and examiners.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

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

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

Copendency is a crucial requirement when claiming the benefit of a prior-filed nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c). The MPEP defines copendency as follows:

“Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”

Key points about copendency:

• The later-filed application must be filed before the prior application patents, is abandoned, or proceedings are terminated
• If the prior application issues as a patent, the later-filed application can be filed on the same date the patent issues
• If the prior application is abandoned, the later-filed application must be filed before the abandonment
• Without copendency, the later-filed application cannot claim the benefit of the prior application’s filing date

Applicants should be aware of the copendency requirement to ensure their benefit claims are valid.

What is the ‘specific reference’ requirement for claiming benefit of a prior-filed application?

The ‘specific reference’ requirement is a crucial aspect of claiming the benefit of a prior-filed application. According to MPEP 211.01, To claim the benefit of a prior-filed application, the later-filed application must contain a specific reference to the prior-filed application. This means that:

• The specific reference must be made in the first sentence(s) of the specification or in an application data sheet (ADS).
• It should include the relationship between the applications (e.g., continuation, divisional, or continuation-in-part).
• The prior application’s serial number and filing date must be provided.

For example: ‘This application is a continuation of Application No. 12/345,678, filed January 1, 2020.’

Failure to provide this specific reference can result in the loss of the benefit claim. For more details, refer to MPEP 211 and 37 CFR 1.78.

What is the ‘same invention’ requirement for claiming benefit under 35 U.S.C. 120?

The ‘same invention’ requirement is a crucial aspect of claiming benefit under 35 U.S.C. 120. MPEP 211.01(b) explains: The second application must be an application for a patent for an invention which is also disclosed in the first application.

This means:

• The later application must disclose at least some part of the invention claimed in the prior application.
• The disclosure in the prior application must provide adequate support for the claims in the later application.
• New matter introduced in the later application cannot claim the benefit of the earlier filing date.

The ‘same invention’ does not require identical claims, but there must be a common disclosure that supports the claims in both applications. For more information, see MPEP 211.01(b) and 35 U.S.C. 120.

To claim the benefit of an earlier filing date under 35 U.S.C. 120, the following requirements must be met:

• The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application
• The disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement
• The later-filed application must contain a specific reference to the prior application
• The later-filed application must be filed before the patenting or abandonment of or termination of proceedings on the first application

As stated in the MPEP: “To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or earlier-filed nonprovisional application or provisional application for which benefit is claimed); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement.”

Copendency refers to the requirement that a later-filed application claiming benefit of a prior application must be filed before the prior application is patented, abandoned, or proceedings are terminated. Copendency is crucial because:

• It establishes a continuous chain of pending applications
• It allows the later application to claim the earlier filing date
• Without copendency, the benefit claim is improper

As stated in MPEP 211.01(b): “Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”

If a benefit claim to a provisional application lacks proper indication of an intermediate application:

• The Office may not recognize the benefit claim
• The benefit claim may not appear on the filing receipt
• A petition under 37 CFR 1.78(c) and petition fee may be required to correct the benefit claim

MPEP 211.01(b) states: “If a benefit claim to a provisional application is submitted without an indication that an intermediate application directly claims the benefit of the provisional application and the instant nonprovisional application is not filed within the 12 month period (or 14 month period if the benefit of the provisional application has been restored pursuant to 37 CFR 1.78(b)) or the relationship between each nonprovisional application is not indicated, the Office will not recognize such benefit claim and will not include the benefit claim on the filing receipt.”

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.

To claim the benefit of a prior-filed provisional application under 35 U.S.C. 119(e), the following requirements must be met:

• The nonprovisional application must be filed within 12 months of the provisional application’s filing date (unless the benefit has been restored)
• The provisional application must have at least one common inventor with the nonprovisional application
• The provisional application must be entitled to a filing date and have paid the basic filing fee
• If the provisional application was filed in a language other than English, an English translation and a statement that the translation is accurate must be filed

As stated in the MPEP: “When a later-filed application is claiming the benefit of a prior-filed provisional application under 35 U.S.C. 119(e), the nonprovisional application must be filed not later than 12 months after the date on which the provisional application was filed, unless the benefit of the provisional application has been restored.”

To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:

• The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
• The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
• The later-filed application must contain a specific reference to the prior-filed application
• The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78

Failure to timely submit the reference to the prior-filed application within the time periods specified in 37 CFR 1.78 is considered a waiver of any benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application. See 37 CFR 1.78(d)(3)(iii). The time periods are not extendable.

If the reference to the prior-filed application is submitted after the time period provided by 37 CFR 1.78, a petition and the petition fee under 37 CFR 1.17(m) would be required to accept the delayed claim. The petition must be accompanied by:

• The reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior-filed application
• The petition fee
• A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

How does the copendency requirement affect claiming benefit of a prior application?

The copendency requirement is a critical factor in claiming the benefit of a prior application. MPEP 211.01(b) states: To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be copending with the earlier application.

Copendency means:

• The later application must be filed before the patenting or abandonment of the prior application.
• There must be no gap in pendency between the applications in the chain.

If copendency is not maintained, the benefit claim to the earlier application will be lost. This can significantly impact the effective filing date of the later application, potentially affecting its patentability.

For detailed information on copendency, refer to MPEP 211.01(b) and 35 U.S.C. 120.

No, MPEP ¶ 2.11 does not apply to benefit claims for provisional applications. The MPEP explicitly states:

Do not use this form paragraph for benefit claims under 35 U.S.C. 119(e) to provisional applications.

This means that the copendency requirements and procedures outlined in MPEP ¶ 2.11 are specifically for non-provisional applications claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c). Provisional applications have different rules and procedures for claiming benefit, which are covered under 35 U.S.C. 119(e) and other sections of the MPEP.

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

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

The following conditions and requirements need to be met to add omitted material to an application under 37 CFR 1.57(b):n

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1. The application must have been filed on or after September 21, 2004

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2. All or a portion of the specification or drawing(s) must have been inadvertently omitted

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3. A priority claim under 37 CFR 1.55 or benefit claim under 37 CFR 1.78 must have been present on the filing date

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4. The omitted portion must be completely contained in the prior-filed application

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5. An amendment to include the omitted portion must be filed within a time period set by the Office

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6. If not otherwise entitled to a filing date, a petition under 37 CFR 1.53(e) with the fee must also be filed

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7. A copy of the prior-filed application must be supplied, except where the prior application was filed under 35 U.S.C. 111

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8. An English translation of any non-English prior-filed application must be supplied

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9. The location of the omitted portion in the prior-filed application must be identified

35 U.S.C. 119(e) is crucial in understanding the relationship between provisional applications and their non-provisional counterparts, particularly in terms of assignments. The MPEP § 306.01 states:

If an application which claims the benefit of the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later application, similar to the practice with respect to continuations and divisions filed under 35 U.S.C. 120.

This means:

• 35 U.S.C. 119(e) allows non-provisional applications to claim the benefit of an earlier filing date from a provisional application.
• When a non-provisional application claims this benefit and contains only subject matter from the provisional, the assignment recorded for the provisional application remains effective for the non-provisional.
• This treatment aligns with how assignments are handled for continuations and divisions under 35 U.S.C. 120.

However, if new subject matter is introduced in the non-provisional application, different assignment rules may apply, as detailed in other parts of MPEP § 306.01.

For those seeking more detailed information on benefit claims under 35 U.S.C. 386(c), the Manual of Patent Examining Procedure (MPEP) provides a specific reference. According to MPEP § 211.01(d):

See MPEP § 2920.05(e) for additional information pertaining to benefit claims under 35 U.S.C. 386(c).

This section of the MPEP offers comprehensive guidance on the intricacies of claiming benefit to international design applications, including procedural requirements and practical considerations for patent applicants and examiners.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

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

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

The Transco Products decision is significant in determining benefit claims because it established that a later-filed application does not need to use the exact same words as the prior-filed application to satisfy the written description requirement. 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). While there is no in haec verba requirement, newly added claims or claim limitations must be supported in the specification through express, implicit, or inherent disclosure. An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of the error in the specification, but also recognize the appropriate correction. In re Oda, 443 F.2d 1200, 170 USPQ 268 (CCPA 1971).’

This means that the USPTO will consider whether the prior-filed application provides sufficient support for the claims in the later-filed application, even if the exact wording is different, as long as the support is express, implicit, or inherent in the original disclosure.

To learn more:

• Transco Products
• benefit claims
• written description
• express disclosure
• implicit disclosure
• inherent disclosure

The Application Data Sheet (ADS) plays a crucial role in establishing priority and benefit claims in patent applications:

• Providing domestic benefit information in the ADS constitutes the specific reference required by 35 U.S.C. 119(e) or 120, and 37 CFR 1.78.
• Providing foreign priority information in the ADS constitutes the claim for priority as required by 35 U.S.C. 119(b) and 37 CFR 1.55.
• The most recent ADS will govern with respect to foreign priority or domestic benefit claims in case of inconsistencies.

37 CFR 1.76(b)(5) states: “Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120, and § 1.78.”

Similarly, 37 CFR 1.76(b)(6) states: “Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and § 1.55.”

It’s crucial to ensure that priority and benefit claims are accurately listed in the ADS to properly establish these claims in the patent application.

To learn more:

• ADS
• Application Data Sheet
• priority claims
• benefit claims
• patent application

What is the significance of the ‘365(c)’ filing date in claiming benefit of a nonprovisional application?

The ‘365(c)’ filing date is crucial when claiming the benefit of a nonprovisional application that was filed as a PCT application and entered the national stage. According to MPEP 211.01(b):

‘If the prior nonprovisional application is an international application that was filed as a PCT application and entered the national stage under 35 U.S.C. 371, the 365(c) filing date of the international application is the filing date to be used in determining copendency.’

This means that when determining if applications are copendent for benefit claims, the PCT filing date (365(c) date) is used rather than the U.S. national stage entry date. This can be significant for maintaining continuous priority chains in international patent applications.

To learn more:

• 365(c) filing date
• PCT applications
• national stage entry
• copendency
• benefit claims

35 U.S.C. 119(e) is crucial in understanding the relationship between provisional applications and their non-provisional counterparts, particularly in terms of assignments. The MPEP § 306.01 states:

If an application which claims the benefit of the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later application, similar to the practice with respect to continuations and divisions filed under 35 U.S.C. 120.

This means:

• 35 U.S.C. 119(e) allows non-provisional applications to claim the benefit of an earlier filing date from a provisional application.
• When a non-provisional application claims this benefit and contains only subject matter from the provisional, the assignment recorded for the provisional application remains effective for the non-provisional.
• This treatment aligns with how assignments are handled for continuations and divisions under 35 U.S.C. 120.

However, if new subject matter is introduced in the non-provisional application, different assignment rules may apply, as detailed in other parts of MPEP § 306.01.

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

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).”

Copendency is a crucial requirement when claiming the benefit of a prior-filed nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c). The MPEP defines copendency as follows:

“Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”

Key points about copendency:

• The later-filed application must be filed before the prior application patents, is abandoned, or proceedings are terminated
• If the prior application issues as a patent, the later-filed application can be filed on the same date the patent issues
• If the prior application is abandoned, the later-filed application must be filed before the abandonment
• Without copendency, the later-filed application cannot claim the benefit of the prior application’s filing date

Applicants should be aware of the copendency requirement to ensure their benefit claims are valid.

What is the ‘specific reference’ requirement for claiming benefit of a prior-filed application?

The ‘specific reference’ requirement is a crucial aspect of claiming the benefit of a prior-filed application. According to MPEP 211.01, To claim the benefit of a prior-filed application, the later-filed application must contain a specific reference to the prior-filed application. This means that:

• The specific reference must be made in the first sentence(s) of the specification or in an application data sheet (ADS).
• It should include the relationship between the applications (e.g., continuation, divisional, or continuation-in-part).
• The prior application’s serial number and filing date must be provided.

For example: ‘This application is a continuation of Application No. 12/345,678, filed January 1, 2020.’

Failure to provide this specific reference can result in the loss of the benefit claim. For more details, refer to MPEP 211 and 37 CFR 1.78.

What is the ‘same invention’ requirement for claiming benefit under 35 U.S.C. 120?

The ‘same invention’ requirement is a crucial aspect of claiming benefit under 35 U.S.C. 120. MPEP 211.01(b) explains: The second application must be an application for a patent for an invention which is also disclosed in the first application.

This means:

• The later application must disclose at least some part of the invention claimed in the prior application.
• The disclosure in the prior application must provide adequate support for the claims in the later application.
• New matter introduced in the later application cannot claim the benefit of the earlier filing date.

The ‘same invention’ does not require identical claims, but there must be a common disclosure that supports the claims in both applications. For more information, see MPEP 211.01(b) and 35 U.S.C. 120.

To claim the benefit of an earlier filing date under 35 U.S.C. 120, the following requirements must be met:

• The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application
• The disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement
• The later-filed application must contain a specific reference to the prior application
• The later-filed application must be filed before the patenting or abandonment of or termination of proceedings on the first application

As stated in the MPEP: “To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or earlier-filed nonprovisional application or provisional application for which benefit is claimed); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement.”

Priority in patent applications refers to the ability of a later-filed application to claim the benefit of, or priority to, an earlier-filed application. This allows the later application to effectively have the filing date of the earlier application for certain purposes.

According to the MPEP, “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).”

Copendency refers to the requirement that a later-filed application claiming benefit of a prior application must be filed before the prior application is patented, abandoned, or proceedings are terminated. Copendency is crucial because:

• It establishes a continuous chain of pending applications
• It allows the later application to claim the earlier filing date
• Without copendency, the benefit claim is improper

As stated in MPEP 211.01(b): “Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”

The front page of a printed patent identifies all prior applications for which benefits are claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in continuation-in-part, continuation, divisional, and reissue applications.

The front page of a patent issuing from a continued prosecution application (CPA) filed under 37 CFR 1.53(d) contains specific information about prior applications.

As stated in the MPEP: The front page of a printed patent issuing on a continued prosecution application (CPA) filed under37 CFR 1.53(d)will identify the application number and filing date of the most recent noncontinued prosecution application (but not the filing date of the CPA) as well as all prior applications from which benefit was claimed in the most recent noncontinued prosecution application. (MPEP 202)

This means that for a CPA:

• The application number and filing date of the most recent non-CPA application are shown
• The CPA’s own filing date is not displayed
• All prior applications claimed as benefit in the most recent non-CPA application are listed

This information helps establish the continuity and priority of the patent application.

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 front page, visit: patent front page.

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

What happens if I need to change the order of benefit claims in my patent application?

Changing the order of benefit claims in a patent application requires specific actions, as outlined in MPEP 211.02(a):

“If applicant needs to change the order of benefit claims presented in an application data sheet or patent, applicant must file a corrected application data sheet under 37 CFR 1.76(c) or a Certificate of Correction, as appropriate.”

The method you choose depends on the status of your application:

• For pending applications: File a corrected Application Data Sheet (ADS) under 37 CFR 1.76(c).
• For issued patents: File a Certificate of Correction.

It’s important to note that changing the order of benefit claims may affect the effective filing date of your application, which could impact patentability considerations.

To learn more:

• benefit claims
• order change
• Application Data Sheet
• Certificate of Correction
• patent application

When claiming benefit to a non-English language provisional application, the following are required:

• An English language translation of the provisional application
• A statement that the translation is accurate

These must be filed in the provisional application. If not filed, the applicant will be notified and given a period of time to file the translation and statement.

MPEP 211.01(a) states: If benefit is being claimed to a provisional application which was filed in a language other than English, (A) an English language translation of the provisional application, and (B) a statement that the translation is accurate, are required to be filed in the provisional application.

Failure to timely provide the translation and statement may result in the abandonment of the nonprovisional application.

To learn more:

• provisional applications
• non-English applications
• translations
• benefit claims

If a benefit claim to a provisional application lacks proper indication of an intermediate application:

• The Office may not recognize the benefit claim
• The benefit claim may not appear on the filing receipt
• A petition under 37 CFR 1.78(c) and petition fee may be required to correct the benefit claim

MPEP 211.01(b) states: “If a benefit claim to a provisional application is submitted without an indication that an intermediate application directly claims the benefit of the provisional application and the instant nonprovisional application is not filed within the 12 month period (or 14 month period if the benefit of the provisional application has been restored pursuant to 37 CFR 1.78(b)) or the relationship between each nonprovisional application is not indicated, the Office will not recognize such benefit claim and will not include the benefit claim on the filing receipt.”

The following conditions and requirements need to be met to add omitted material to an application under 37 CFR 1.57(b):n

n
1. The application must have been filed on or after September 21, 2004

n

2. All or a portion of the specification or drawing(s) must have been inadvertently omitted

n

3. A priority claim under 37 CFR 1.55 or benefit claim under 37 CFR 1.78 must have been present on the filing date

n

4. The omitted portion must be completely contained in the prior-filed application

n

5. An amendment to include the omitted portion must be filed within a time period set by the Office

n

6. If not otherwise entitled to a filing date, a petition under 37 CFR 1.53(e) with the fee must also be filed

n

7. A copy of the prior-filed application must be supplied, except where the prior application was filed under 35 U.S.C. 111

n

8. An English translation of any non-English prior-filed application must be supplied

n

9. The location of the omitted portion in the prior-filed application must be identified

The time periods for filing priority or benefit claims in U.S. patent applications vary depending on the type of claim and application. Generally:

• For foreign priority claims under 35 U.S.C. 119(a)-(d) and (f), the claim must be made within the later of 4 months from the actual filing date or 16 months from the foreign application’s filing date.
• For domestic benefit claims under 35 U.S.C. 119(e) or 120, the claim must be made within the later of 4 months from the actual filing date or 16 months from the prior application’s filing date.
• For international applications entering the national stage, special rules apply.

The MPEP states: “37 CFR 1.55(d) contains provisions relating to the time for filing a priority claim in an application filed under 35 U.S.C. 111(a) and in an application entering the national stage under 35 U.S.C. 371” and “37 CFR 1.78(d) contains provisions relating to claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application.”

Note that these time periods are subject to the provisions of 37 CFR 1.55(p) and 1.78(k), which state that they are not extendable but are subject to certain exceptions.

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.

To claim the benefit of a prior-filed provisional application under 35 U.S.C. 119(e), the following requirements must be met:

• The nonprovisional application must be filed within 12 months of the provisional application’s filing date (unless the benefit has been restored)
• The provisional application must have at least one common inventor with the nonprovisional application
• The provisional application must be entitled to a filing date and have paid the basic filing fee
• If the provisional application was filed in a language other than English, an English translation and a statement that the translation is accurate must be filed

As stated in the MPEP: “When a later-filed application is claiming the benefit of a prior-filed provisional application under 35 U.S.C. 119(e), the nonprovisional application must be filed not later than 12 months after the date on which the provisional application was filed, unless the benefit of the provisional application has been restored.”

To claim priority to or benefit of a prior-filed application, the later-filed application must:

• Contain a specific reference to the earlier-filed application
• Be filed within the required time period
• Include the priority or benefit claim in the application data sheet (for applications filed on or after September 16, 2012)

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.” (MPEP 210)

The requirements for claiming benefit of an earlier national application under 37 CFR 1.78 include:

• A specific reference to the earlier-filed application in the later-filed application
• For applications filed on or after September 16, 2012, the specific reference must be in the application data sheet (ADS)
• For applications filed before September 16, 2012, the specific reference must be in the ADS or in the first sentence(s) of the specification
• Meeting time requirements for filing the benefit claim
• In some cases, providing a statement regarding the effective filing date of claims

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.”

To claim the benefit of a prior-filed application in a continuation or continuation-in-part application, several requirements must be met:

1. The application must be filed before the patenting, abandonment, or termination of proceedings on the prior application.

2. The application must contain or be amended to contain a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be in an application data sheet.

3. The application must have at least one common inventor with the prior application.

4. The application must comply with the requirements of 35 U.S.C. 120 and 37 CFR 1.78.

As stated in the MPEP: “An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.”

To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:

• The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
• The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
• The later-filed application must contain a specific reference to the prior-filed application
• The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78

Failure to timely submit the reference to the prior-filed application within the time periods specified in 37 CFR 1.78 is considered a waiver of any benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application. See 37 CFR 1.78(d)(3)(iii). The time periods are not extendable.

If the reference to the prior-filed application is submitted after the time period provided by 37 CFR 1.78, a petition and the petition fee under 37 CFR 1.17(m) would be required to accept the delayed claim. The petition must be accompanied by:

• The reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior-filed application
• The petition fee
• A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

Examiners should review the identifying data of all prior applications for which benefits are claimed to ensure accuracy. This review includes:

• Checking that the data is provided in an application data sheet for applications filed on or after September 16, 2012
• Verifying that the data is provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012
• Ensuring the appropriate relationship (e.g., continuation, divisional, or continuation-in-part) between nonprovisional applications is included

The MPEP states: “The identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012.” (MPEP 202)

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)

The filing date of a Continued Prosecution Application (CPA) is important for priority claims and patent term calculations. Key points include:

• The filing date of a CPA is the date on which the CPA request is received by the USPTO
• A CPA is automatically considered a specific reference under 35 U.S.C. 120 to the prior application
• The CPA is entitled to the benefit of the filing date of the prior application
• Priority claims from the parent application automatically carry over to the CPA

As stated in MPEP 201.06(d): 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. That is, the CPA includes the request for an application under 37 CFR 1.53(d) and the recitation of the application number of the prior application in such request is the ‘specific reference to the earlier filed application’ required by 35 U.S.C. 120.

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

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

How does the copendency requirement affect claiming benefit of a prior application?

The copendency requirement is a critical factor in claiming the benefit of a prior application. MPEP 211.01(b) states: To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be copending with the earlier application.

Copendency means:

• The later application must be filed before the patenting or abandonment of the prior application.
• There must be no gap in pendency between the applications in the chain.

If copendency is not maintained, the benefit claim to the earlier application will be lost. This can significantly impact the effective filing date of the later application, potentially affecting its patentability.

For detailed information on copendency, refer to MPEP 211.01(b) and 35 U.S.C. 120.

For applications filed before the America Invents Act (AIA), the best mode requirement affects benefit claims by requiring that the prior-filed application disclose the best mode contemplated by the inventor for carrying out the invention. According to MPEP 211.05:

‘The disclosure of the prior-filed application must provide adequate support and enablement for the claimed subject matter of the later-filed application in compliance with the requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, except for the best mode requirement.‘

However, it’s important to note that while the best mode requirement is not applied to benefit claims for applications filed on or after September 16, 2012 (the effective date of the AIA), it still applies to applications filed before this date. For pre-AIA applications, failure to disclose the best mode in the prior-filed application could result in the loss of the benefit claim if it is determined that the best mode was not carried forward to the later-filed application.

To learn more:

• best mode requirement
• AIA
• pre-AIA applications
• benefit claims

How does the AIA first-inventor-to-file system affect benefit claims?

The America Invents Act (AIA) introduced the first-inventor-to-file system, which has significant implications for benefit claims. While the MPEP 211.01 doesn’t directly address this, it’s an important consideration for applicants. Here’s how it affects benefit claims:

• Effective Filing Date: The effective filing date of a claimed invention is crucial under the AIA system. It’s determined by the earliest application in the priority chain that describes the claimed invention.
• Prior Art: The prior art date is now based on the effective filing date, making proper benefit claims even more critical.
• Grace Period: The one-year grace period for disclosures by the inventor is now measured from the effective filing date.
• Continuation and CIP Applications: These applications can still claim benefit to earlier applications, but the effective filing date for each claim is determined individually based on when its subject matter was first disclosed in the application chain.

For more information on the AIA and its impact on patent applications, refer to MPEP 2151 and the USPTO’s AIA FAQ page.

To learn more:

• AIA
• first-inventor-to-file
• benefit claims
• effective filing date

Copendency is a crucial requirement for claiming benefit between nonprovisional applications. The later-filed application must be filed before:

• The patenting of the prior application
• The abandonment of the prior application
• The termination of proceedings in the prior application

As stated in MPEP 211.01(b): When a later-filed application is claiming the benefit of a prior-filed nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c), the later-filed application must be copending with the prior application or with an intermediate nonprovisional application similarly entitled to the benefit of the filing date of the prior application.

If copendency is not maintained, the benefit claim is improper and the later-filed application cannot claim the earlier filing date of the prior application.

To learn more:

• copendency
• benefit claims
• continuation applications
• patent applications

Filing a Continued Prosecution Application (CPA) can have important implications for both patent term and prior art dates:

Patent Term:

• A CPA is a continuation of the prior application, so it does not get a new 15-year term from filing
• The 15-year term for a design patent issuing from a CPA is measured from the filing date of the earliest application in the chain that is subject to the 15-year term

Prior Art Dates:

• The effective filing date of a CPA for prior art purposes is generally the actual filing date of the CPA
• However, the CPA can claim the benefit of the prior application’s filing date for subject matter disclosed in the prior application

The MPEP notes: “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 amendment in an application under this paragraph may delete this specific reference to any prior application.” (37 CFR 1.53(d)(7))

This means the CPA is automatically considered a continuation for benefit claim purposes, which can affect both term and prior art dates.

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

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

For more information on prior art, visit: prior art.

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

To claim benefit of an international design application designating the United States, the following requirements must be met:

• The claim must be made in a nonprovisional application, international application, or international design application filed on or after May 13, 2015
• The international design application must be entitled to a filing date in accordance with 37 CFR 1.1023
• The claim must meet the conditions and requirements of 35 U.S.C. 120

MPEP 211.01(d) states: Pursuant to 35 U.S.C. 386(c), in accordance with the conditions and requirements of 35 U.S.C. 120, a nonprovisional application is entitled to the benefit of a prior international design application designating the United States.

It’s important to note that this benefit can only be claimed in applications or patents filed on or after May 13, 2015, as specified in 37 CFR 1.78(j).

To learn more:

• international design applications
• benefit claims
• design patents
• patent law

Provisional application benefits are handled differently from other types of priority claims on the bib-data sheet. If an applicant claims benefit under 35 U.S.C. 119(e) to a prior provisional application, the application number of that provisional application should be printed on the bib-data sheet.

However, it’s important to note: If applicant claims benefit under35 U.S.C. 119(e)to a prior provisional application, and states that the provisional application claims the benefit of, or priority to, earlier domestic or foreign application(s), the earlier application(s) should not be reflected on the bib-data sheet because a provisional application is not entitled to the benefit of, or right of priority to, any other application. (MPEP 202)

This is due to the limitation set forth in 35 U.S.C. 111(b)(7), which states that a provisional application cannot claim priority to or benefit from any other application.

Examiners should verify that provisional application data is correctly listed and that no improper benefit claims to earlier applications through a provisional application are included on the bib-data sheet.

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

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

For more information on provisional application, visit: provisional application.

No, the inclusion of prior application information in the patent does not necessarily indicate that the claims are entitled to the benefit of the earlier filing date.

See MPEP 2136.03 and MPEP 2154.01(b) for additional information.

No, MPEP ¶ 2.11 does not apply to benefit claims for provisional applications. The MPEP explicitly states:

Do not use this form paragraph for benefit claims under 35 U.S.C. 119(e) to provisional applications.

This means that the copendency requirements and procedures outlined in MPEP ¶ 2.11 are specifically for non-provisional applications claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c). Provisional applications have different rules and procedures for claiming benefit, which are covered under 35 U.S.C. 119(e) and other sections of the MPEP.

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

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

Yes, the benefit of a provisional application can be restored even after the 12-month deadline has passed, under certain conditions. The MPEP explains:

“If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

To restore the benefit, a petition under 37 CFR 1.78(b) must be filed, which requires:

• A reference to the provisional application
• The petition fee
• A statement that the delay was unintentional

The petition must be filed in the subsequent application or, in certain cases, in the earliest nonprovisional application claiming benefit to the international application.

To learn more:

• provisional application
• benefit restoration
• patent petition
• unintentional delay

To learn more:

• provisional applications
• benefit claims
• restoration of benefit
• patent law

No, design applications cannot claim the benefit of provisional applications under 35 U.S.C. 119(e).

MPEP 211.01(a) explicitly states: Design applications may not claim the benefit of a provisional application under 35 U.S.C. 119(e).

However, it’s important to note that while a design application cannot directly claim benefit of a provisional application, it may be possible to indirectly claim benefit through an intermediate utility application. The MPEP clarifies: Thus, where a design patent application claims benefit under 35 U.S.C. 120 to an intermediate nonprovisional utility patent application that directly claims the benefit of a provisional application, the design application cannot claim the benefit of the filing date of the provisional application.

To learn more:

• design applications
• provisional applications
• benefit claims
• patent law

For those seeking more detailed information on benefit claims under 35 U.S.C. 386(c), the Manual of Patent Examining Procedure (MPEP) provides a specific reference. According to MPEP § 211.01(d):

See MPEP § 2920.05(e) for additional information pertaining to benefit claims under 35 U.S.C. 386(c).

This section of the MPEP offers comprehensive guidance on the intricacies of claiming benefit to international design applications, including procedural requirements and practical considerations for patent applicants and examiners.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

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

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

The Transco Products decision is significant in determining benefit claims because it established that a later-filed application does not need to use the exact same words as the prior-filed application to satisfy the written description requirement. 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). While there is no in haec verba requirement, newly added claims or claim limitations must be supported in the specification through express, implicit, or inherent disclosure. An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of the error in the specification, but also recognize the appropriate correction. In re Oda, 443 F.2d 1200, 170 USPQ 268 (CCPA 1971).’

This means that the USPTO will consider whether the prior-filed application provides sufficient support for the claims in the later-filed application, even if the exact wording is different, as long as the support is express, implicit, or inherent in the original disclosure.

To learn more:

• Transco Products
• benefit claims
• written description
• express disclosure
• implicit disclosure
• inherent disclosure

The Application Data Sheet (ADS) plays a crucial role in establishing priority and benefit claims in patent applications:

• Providing domestic benefit information in the ADS constitutes the specific reference required by 35 U.S.C. 119(e) or 120, and 37 CFR 1.78.
• Providing foreign priority information in the ADS constitutes the claim for priority as required by 35 U.S.C. 119(b) and 37 CFR 1.55.
• The most recent ADS will govern with respect to foreign priority or domestic benefit claims in case of inconsistencies.

37 CFR 1.76(b)(5) states: “Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120, and § 1.78.”

Similarly, 37 CFR 1.76(b)(6) states: “Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and § 1.55.”

It’s crucial to ensure that priority and benefit claims are accurately listed in the ADS to properly establish these claims in the patent application.

To learn more:

• ADS
• Application Data Sheet
• priority claims
• benefit claims
• patent application

What is the significance of the ‘365(c)’ filing date in claiming benefit of a nonprovisional application?

The ‘365(c)’ filing date is crucial when claiming the benefit of a nonprovisional application that was filed as a PCT application and entered the national stage. According to MPEP 211.01(b):

‘If the prior nonprovisional application is an international application that was filed as a PCT application and entered the national stage under 35 U.S.C. 371, the 365(c) filing date of the international application is the filing date to be used in determining copendency.’

This means that when determining if applications are copendent for benefit claims, the PCT filing date (365(c) date) is used rather than the U.S. national stage entry date. This can be significant for maintaining continuous priority chains in international patent applications.

To learn more:

• 365(c) filing date
• PCT applications
• national stage entry
• copendency
• benefit claims

35 U.S.C. 119(e) is crucial in understanding the relationship between provisional applications and their non-provisional counterparts, particularly in terms of assignments. The MPEP § 306.01 states:

If an application which claims the benefit of the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later application, similar to the practice with respect to continuations and divisions filed under 35 U.S.C. 120.

This means:

• 35 U.S.C. 119(e) allows non-provisional applications to claim the benefit of an earlier filing date from a provisional application.
• When a non-provisional application claims this benefit and contains only subject matter from the provisional, the assignment recorded for the provisional application remains effective for the non-provisional.
• This treatment aligns with how assignments are handled for continuations and divisions under 35 U.S.C. 120.

However, if new subject matter is introduced in the non-provisional application, different assignment rules may apply, as detailed in other parts of MPEP § 306.01.

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

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).”

Copendency is a crucial requirement when claiming the benefit of a prior-filed nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c). The MPEP defines copendency as follows:

“Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”

Key points about copendency:

• The later-filed application must be filed before the prior application patents, is abandoned, or proceedings are terminated
• If the prior application issues as a patent, the later-filed application can be filed on the same date the patent issues
• If the prior application is abandoned, the later-filed application must be filed before the abandonment
• Without copendency, the later-filed application cannot claim the benefit of the prior application’s filing date

Applicants should be aware of the copendency requirement to ensure their benefit claims are valid.

What is the ‘specific reference’ requirement for claiming benefit of a prior-filed application?

The ‘specific reference’ requirement is a crucial aspect of claiming the benefit of a prior-filed application. According to MPEP 211.01, To claim the benefit of a prior-filed application, the later-filed application must contain a specific reference to the prior-filed application. This means that:

• The specific reference must be made in the first sentence(s) of the specification or in an application data sheet (ADS).
• It should include the relationship between the applications (e.g., continuation, divisional, or continuation-in-part).
• The prior application’s serial number and filing date must be provided.

For example: ‘This application is a continuation of Application No. 12/345,678, filed January 1, 2020.’

Failure to provide this specific reference can result in the loss of the benefit claim. For more details, refer to MPEP 211 and 37 CFR 1.78.

What is the ‘same invention’ requirement for claiming benefit under 35 U.S.C. 120?

The ‘same invention’ requirement is a crucial aspect of claiming benefit under 35 U.S.C. 120. MPEP 211.01(b) explains: The second application must be an application for a patent for an invention which is also disclosed in the first application.

This means:

• The later application must disclose at least some part of the invention claimed in the prior application.
• The disclosure in the prior application must provide adequate support for the claims in the later application.
• New matter introduced in the later application cannot claim the benefit of the earlier filing date.

The ‘same invention’ does not require identical claims, but there must be a common disclosure that supports the claims in both applications. For more information, see MPEP 211.01(b) and 35 U.S.C. 120.

To claim the benefit of an earlier filing date under 35 U.S.C. 120, the following requirements must be met:

• The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application
• The disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement
• The later-filed application must contain a specific reference to the prior application
• The later-filed application must be filed before the patenting or abandonment of or termination of proceedings on the first application

As stated in the MPEP: “To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or earlier-filed nonprovisional application or provisional application for which benefit is claimed); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement.”

Priority in patent applications refers to the ability of a later-filed application to claim the benefit of, or priority to, an earlier-filed application. This allows the later application to effectively have the filing date of the earlier application for certain purposes.

According to the MPEP, “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).”

Copendency refers to the requirement that a later-filed application claiming benefit of a prior application must be filed before the prior application is patented, abandoned, or proceedings are terminated. Copendency is crucial because:

• It establishes a continuous chain of pending applications
• It allows the later application to claim the earlier filing date
• Without copendency, the benefit claim is improper

As stated in MPEP 211.01(b): “Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”

The front page of a printed patent identifies all prior applications for which benefits are claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in continuation-in-part, continuation, divisional, and reissue applications.

The front page of a patent issuing from a continued prosecution application (CPA) filed under 37 CFR 1.53(d) contains specific information about prior applications.

As stated in the MPEP: The front page of a printed patent issuing on a continued prosecution application (CPA) filed under37 CFR 1.53(d)will identify the application number and filing date of the most recent noncontinued prosecution application (but not the filing date of the CPA) as well as all prior applications from which benefit was claimed in the most recent noncontinued prosecution application. (MPEP 202)

This means that for a CPA:

• The application number and filing date of the most recent non-CPA application are shown
• The CPA’s own filing date is not displayed
• All prior applications claimed as benefit in the most recent non-CPA application are listed

This information helps establish the continuity and priority of the patent application.

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 front page, visit: patent front page.

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

What happens if I need to change the order of benefit claims in my patent application?

Changing the order of benefit claims in a patent application requires specific actions, as outlined in MPEP 211.02(a):

“If applicant needs to change the order of benefit claims presented in an application data sheet or patent, applicant must file a corrected application data sheet under 37 CFR 1.76(c) or a Certificate of Correction, as appropriate.”

The method you choose depends on the status of your application:

• For pending applications: File a corrected Application Data Sheet (ADS) under 37 CFR 1.76(c).
• For issued patents: File a Certificate of Correction.

It’s important to note that changing the order of benefit claims may affect the effective filing date of your application, which could impact patentability considerations.

To learn more:

• benefit claims
• order change
• Application Data Sheet
• Certificate of Correction
• patent application

When claiming benefit to a non-English language provisional application, the following are required:

• An English language translation of the provisional application
• A statement that the translation is accurate

These must be filed in the provisional application. If not filed, the applicant will be notified and given a period of time to file the translation and statement.

MPEP 211.01(a) states: If benefit is being claimed to a provisional application which was filed in a language other than English, (A) an English language translation of the provisional application, and (B) a statement that the translation is accurate, are required to be filed in the provisional application.

Failure to timely provide the translation and statement may result in the abandonment of the nonprovisional application.

To learn more:

• provisional applications
• non-English applications
• translations
• benefit claims

If a benefit claim to a provisional application lacks proper indication of an intermediate application:

• The Office may not recognize the benefit claim
• The benefit claim may not appear on the filing receipt
• A petition under 37 CFR 1.78(c) and petition fee may be required to correct the benefit claim

MPEP 211.01(b) states: “If a benefit claim to a provisional application is submitted without an indication that an intermediate application directly claims the benefit of the provisional application and the instant nonprovisional application is not filed within the 12 month period (or 14 month period if the benefit of the provisional application has been restored pursuant to 37 CFR 1.78(b)) or the relationship between each nonprovisional application is not indicated, the Office will not recognize such benefit claim and will not include the benefit claim on the filing receipt.”

The following conditions and requirements need to be met to add omitted material to an application under 37 CFR 1.57(b):n

n
1. The application must have been filed on or after September 21, 2004

n

2. All or a portion of the specification or drawing(s) must have been inadvertently omitted

n

3. A priority claim under 37 CFR 1.55 or benefit claim under 37 CFR 1.78 must have been present on the filing date

n

4. The omitted portion must be completely contained in the prior-filed application

n

5. An amendment to include the omitted portion must be filed within a time period set by the Office

n

6. If not otherwise entitled to a filing date, a petition under 37 CFR 1.53(e) with the fee must also be filed

n

7. A copy of the prior-filed application must be supplied, except where the prior application was filed under 35 U.S.C. 111

n

8. An English translation of any non-English prior-filed application must be supplied

n

9. The location of the omitted portion in the prior-filed application must be identified

The time periods for filing priority or benefit claims in U.S. patent applications vary depending on the type of claim and application. Generally:

• For foreign priority claims under 35 U.S.C. 119(a)-(d) and (f), the claim must be made within the later of 4 months from the actual filing date or 16 months from the foreign application’s filing date.
• For domestic benefit claims under 35 U.S.C. 119(e) or 120, the claim must be made within the later of 4 months from the actual filing date or 16 months from the prior application’s filing date.
• For international applications entering the national stage, special rules apply.

The MPEP states: “37 CFR 1.55(d) contains provisions relating to the time for filing a priority claim in an application filed under 35 U.S.C. 111(a) and in an application entering the national stage under 35 U.S.C. 371” and “37 CFR 1.78(d) contains provisions relating to claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application.”

Note that these time periods are subject to the provisions of 37 CFR 1.55(p) and 1.78(k), which state that they are not extendable but are subject to certain exceptions.

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.

To claim the benefit of a prior-filed provisional application under 35 U.S.C. 119(e), the following requirements must be met:

• The nonprovisional application must be filed within 12 months of the provisional application’s filing date (unless the benefit has been restored)
• The provisional application must have at least one common inventor with the nonprovisional application
• The provisional application must be entitled to a filing date and have paid the basic filing fee
• If the provisional application was filed in a language other than English, an English translation and a statement that the translation is accurate must be filed

As stated in the MPEP: “When a later-filed application is claiming the benefit of a prior-filed provisional application under 35 U.S.C. 119(e), the nonprovisional application must be filed not later than 12 months after the date on which the provisional application was filed, unless the benefit of the provisional application has been restored.”

To claim priority to or benefit of a prior-filed application, the later-filed application must:

• Contain a specific reference to the earlier-filed application
• Be filed within the required time period
• Include the priority or benefit claim in the application data sheet (for applications filed on or after September 16, 2012)

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.” (MPEP 210)

The requirements for claiming benefit of an earlier national application under 37 CFR 1.78 include:

• A specific reference to the earlier-filed application in the later-filed application
• For applications filed on or after September 16, 2012, the specific reference must be in the application data sheet (ADS)
• For applications filed before September 16, 2012, the specific reference must be in the ADS or in the first sentence(s) of the specification
• Meeting time requirements for filing the benefit claim
• In some cases, providing a statement regarding the effective filing date of claims

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.”

To claim the benefit of a prior-filed application in a continuation or continuation-in-part application, several requirements must be met:

1. The application must be filed before the patenting, abandonment, or termination of proceedings on the prior application.

2. The application must contain or be amended to contain a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be in an application data sheet.

3. The application must have at least one common inventor with the prior application.

4. The application must comply with the requirements of 35 U.S.C. 120 and 37 CFR 1.78.

As stated in the MPEP: “An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.”

To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:

• The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
• The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
• The later-filed application must contain a specific reference to the prior-filed application
• The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78

Failure to timely submit the reference to the prior-filed application within the time periods specified in 37 CFR 1.78 is considered a waiver of any benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application. See 37 CFR 1.78(d)(3)(iii). The time periods are not extendable.

If the reference to the prior-filed application is submitted after the time period provided by 37 CFR 1.78, a petition and the petition fee under 37 CFR 1.17(m) would be required to accept the delayed claim. The petition must be accompanied by:

• The reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior-filed application
• The petition fee
• A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

Examiners should review the identifying data of all prior applications for which benefits are claimed to ensure accuracy. This review includes:

• Checking that the data is provided in an application data sheet for applications filed on or after September 16, 2012
• Verifying that the data is provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012
• Ensuring the appropriate relationship (e.g., continuation, divisional, or continuation-in-part) between nonprovisional applications is included

The MPEP states: “The identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012.” (MPEP 202)

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)

The filing date of a Continued Prosecution Application (CPA) is important for priority claims and patent term calculations. Key points include:

• The filing date of a CPA is the date on which the CPA request is received by the USPTO
• A CPA is automatically considered a specific reference under 35 U.S.C. 120 to the prior application
• The CPA is entitled to the benefit of the filing date of the prior application
• Priority claims from the parent application automatically carry over to the CPA

As stated in MPEP 201.06(d): 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. That is, the CPA includes the request for an application under 37 CFR 1.53(d) and the recitation of the application number of the prior application in such request is the ‘specific reference to the earlier filed application’ required by 35 U.S.C. 120.

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

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

How does the copendency requirement affect claiming benefit of a prior application?

The copendency requirement is a critical factor in claiming the benefit of a prior application. MPEP 211.01(b) states: To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be copending with the earlier application.

Copendency means:

• The later application must be filed before the patenting or abandonment of the prior application.
• There must be no gap in pendency between the applications in the chain.

If copendency is not maintained, the benefit claim to the earlier application will be lost. This can significantly impact the effective filing date of the later application, potentially affecting its patentability.

For detailed information on copendency, refer to MPEP 211.01(b) and 35 U.S.C. 120.

For applications filed before the America Invents Act (AIA), the best mode requirement affects benefit claims by requiring that the prior-filed application disclose the best mode contemplated by the inventor for carrying out the invention. According to MPEP 211.05:

‘The disclosure of the prior-filed application must provide adequate support and enablement for the claimed subject matter of the later-filed application in compliance with the requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, except for the best mode requirement.‘

However, it’s important to note that while the best mode requirement is not applied to benefit claims for applications filed on or after September 16, 2012 (the effective date of the AIA), it still applies to applications filed before this date. For pre-AIA applications, failure to disclose the best mode in the prior-filed application could result in the loss of the benefit claim if it is determined that the best mode was not carried forward to the later-filed application.

To learn more:

• best mode requirement
• AIA
• pre-AIA applications
• benefit claims

How does the AIA first-inventor-to-file system affect benefit claims?

The America Invents Act (AIA) introduced the first-inventor-to-file system, which has significant implications for benefit claims. While the MPEP 211.01 doesn’t directly address this, it’s an important consideration for applicants. Here’s how it affects benefit claims:

• Effective Filing Date: The effective filing date of a claimed invention is crucial under the AIA system. It’s determined by the earliest application in the priority chain that describes the claimed invention.
• Prior Art: The prior art date is now based on the effective filing date, making proper benefit claims even more critical.
• Grace Period: The one-year grace period for disclosures by the inventor is now measured from the effective filing date.
• Continuation and CIP Applications: These applications can still claim benefit to earlier applications, but the effective filing date for each claim is determined individually based on when its subject matter was first disclosed in the application chain.

For more information on the AIA and its impact on patent applications, refer to MPEP 2151 and the USPTO’s AIA FAQ page.

To learn more:

• AIA
• first-inventor-to-file
• benefit claims
• effective filing date

Copendency is a crucial requirement for claiming benefit between nonprovisional applications. The later-filed application must be filed before:

• The patenting of the prior application
• The abandonment of the prior application
• The termination of proceedings in the prior application

As stated in MPEP 211.01(b): When a later-filed application is claiming the benefit of a prior-filed nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c), the later-filed application must be copending with the prior application or with an intermediate nonprovisional application similarly entitled to the benefit of the filing date of the prior application.

If copendency is not maintained, the benefit claim is improper and the later-filed application cannot claim the earlier filing date of the prior application.

To learn more:

• copendency
• benefit claims
• continuation applications
• patent applications

Filing a Continued Prosecution Application (CPA) can have important implications for both patent term and prior art dates:

Patent Term:

• A CPA is a continuation of the prior application, so it does not get a new 15-year term from filing
• The 15-year term for a design patent issuing from a CPA is measured from the filing date of the earliest application in the chain that is subject to the 15-year term

Prior Art Dates:

• The effective filing date of a CPA for prior art purposes is generally the actual filing date of the CPA
• However, the CPA can claim the benefit of the prior application’s filing date for subject matter disclosed in the prior application

The MPEP notes: “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 amendment in an application under this paragraph may delete this specific reference to any prior application.” (37 CFR 1.53(d)(7))

This means the CPA is automatically considered a continuation for benefit claim purposes, which can affect both term and prior art dates.

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

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

For more information on prior art, visit: prior art.

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

To claim benefit of an international design application designating the United States, the following requirements must be met:

• The claim must be made in a nonprovisional application, international application, or international design application filed on or after May 13, 2015
• The international design application must be entitled to a filing date in accordance with 37 CFR 1.1023
• The claim must meet the conditions and requirements of 35 U.S.C. 120

MPEP 211.01(d) states: Pursuant to 35 U.S.C. 386(c), in accordance with the conditions and requirements of 35 U.S.C. 120, a nonprovisional application is entitled to the benefit of a prior international design application designating the United States.

It’s important to note that this benefit can only be claimed in applications or patents filed on or after May 13, 2015, as specified in 37 CFR 1.78(j).

To learn more:

• international design applications
• benefit claims
• design patents
• patent law

Provisional application benefits are handled differently from other types of priority claims on the bib-data sheet. If an applicant claims benefit under 35 U.S.C. 119(e) to a prior provisional application, the application number of that provisional application should be printed on the bib-data sheet.

However, it’s important to note: If applicant claims benefit under35 U.S.C. 119(e)to a prior provisional application, and states that the provisional application claims the benefit of, or priority to, earlier domestic or foreign application(s), the earlier application(s) should not be reflected on the bib-data sheet because a provisional application is not entitled to the benefit of, or right of priority to, any other application. (MPEP 202)

This is due to the limitation set forth in 35 U.S.C. 111(b)(7), which states that a provisional application cannot claim priority to or benefit from any other application.

Examiners should verify that provisional application data is correctly listed and that no improper benefit claims to earlier applications through a provisional application are included on the bib-data sheet.

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

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

For more information on provisional application, visit: provisional application.

No, the inclusion of prior application information in the patent does not necessarily indicate that the claims are entitled to the benefit of the earlier filing date.

See MPEP 2136.03 and MPEP 2154.01(b) for additional information.

No, MPEP ¶ 2.11 does not apply to benefit claims for provisional applications. The MPEP explicitly states:

Do not use this form paragraph for benefit claims under 35 U.S.C. 119(e) to provisional applications.

This means that the copendency requirements and procedures outlined in MPEP ¶ 2.11 are specifically for non-provisional applications claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c). Provisional applications have different rules and procedures for claiming benefit, which are covered under 35 U.S.C. 119(e) and other sections of the MPEP.

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

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

Yes, the benefit of a provisional application can be restored even after the 12-month deadline has passed, under certain conditions. The MPEP explains:

“If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

To restore the benefit, a petition under 37 CFR 1.78(b) must be filed, which requires:

• A reference to the provisional application
• The petition fee
• A statement that the delay was unintentional

The petition must be filed in the subsequent application or, in certain cases, in the earliest nonprovisional application claiming benefit to the international application.

To learn more:

• provisional application
• benefit restoration
• patent petition
• unintentional delay

To learn more:

• provisional applications
• benefit claims
• restoration of benefit
• patent law

No, design applications cannot claim the benefit of provisional applications under 35 U.S.C. 119(e).

MPEP 211.01(a) explicitly states: Design applications may not claim the benefit of a provisional application under 35 U.S.C. 119(e).

However, it’s important to note that while a design application cannot directly claim benefit of a provisional application, it may be possible to indirectly claim benefit through an intermediate utility application. The MPEP clarifies: Thus, where a design patent application claims benefit under 35 U.S.C. 120 to an intermediate nonprovisional utility patent application that directly claims the benefit of a provisional application, the design application cannot claim the benefit of the filing date of the provisional application.

To learn more:

• design applications
• provisional applications
• benefit claims
• patent law