Patent Law FAQ

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

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.

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

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.

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.”

If an applicant misses the 12-month deadline for claiming the benefit of a provisional application, they may be able to restore the benefit under certain conditions:

1. The nonprovisional application must be filed within 14 months of the provisional application’s filing date
2. A petition under 37 CFR 1.78(b) must be filed in the nonprovisional application
3. The delay in filing must be unintentional

The MPEP states: “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.”

The petition must include:

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

Yes, a U.S. applicant can claim priority from a provisional application filed in a foreign country, provided certain conditions are met. The MPEP 213 states:

An applicant may claim the right of priority based on a prior foreign application under the Paris Convention and 35 U.S.C. 119(a)-(d) whether the foreign application is an application for a patent or for the registration of a utility model or an industrial design.

Key points to consider:

• The foreign country must be a recognized country or regional patent office as listed in MPEP 213.01.
• The provisional application must be the first filing of the invention in any country.
• The U.S. application must be filed within 12 months of the foreign provisional filing date.
• The applicant must comply with all requirements for claiming priority, including submitting a certified copy of the foreign application.

It’s important to note that not all countries have provisional application systems, so the term ‘provisional’ may have different meanings in different jurisdictions. Always consult with a patent attorney or agent for specific advice on international priority claims.

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.”

If an applicant misses the 12-month deadline for claiming the benefit of a provisional application, they may be able to restore the benefit under certain conditions:

1. The nonprovisional application must be filed within 14 months of the provisional application’s filing date
2. A petition under 37 CFR 1.78(b) must be filed in the nonprovisional application
3. The delay in filing must be unintentional

The MPEP states: “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.”

The petition must include:

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

Yes, a U.S. applicant can claim priority from a provisional application filed in a foreign country, provided certain conditions are met. The MPEP 213 states:

An applicant may claim the right of priority based on a prior foreign application under the Paris Convention and 35 U.S.C. 119(a)-(d) whether the foreign application is an application for a patent or for the registration of a utility model or an industrial design.

Key points to consider:

• The foreign country must be a recognized country or regional patent office as listed in MPEP 213.01.
• The provisional application must be the first filing of the invention in any country.
• The U.S. application must be filed within 12 months of the foreign provisional filing date.
• The applicant must comply with all requirements for claiming priority, including submitting a certified copy of the foreign application.

It’s important to note that not all countries have provisional application systems, so the term ‘provisional’ may have different meanings in different jurisdictions. Always consult with a patent attorney or agent for specific advice on international priority claims.

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

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.

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

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.

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.”

If an applicant misses the 12-month deadline for claiming the benefit of a provisional application, they may be able to restore the benefit under certain conditions:

1. The nonprovisional application must be filed within 14 months of the provisional application’s filing date
2. A petition under 37 CFR 1.78(b) must be filed in the nonprovisional application
3. The delay in filing must be unintentional

The MPEP states: “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.”

The petition must include:

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

Yes, a U.S. applicant can claim priority from a provisional application filed in a foreign country, provided certain conditions are met. The MPEP 213 states:

An applicant may claim the right of priority based on a prior foreign application under the Paris Convention and 35 U.S.C. 119(a)-(d) whether the foreign application is an application for a patent or for the registration of a utility model or an industrial design.

Key points to consider:

• The foreign country must be a recognized country or regional patent office as listed in MPEP 213.01.
• The provisional application must be the first filing of the invention in any country.
• The U.S. application must be filed within 12 months of the foreign provisional filing date.
• The applicant must comply with all requirements for claiming priority, including submitting a certified copy of the foreign application.

It’s important to note that not all countries have provisional application systems, so the term ‘provisional’ may have different meanings in different jurisdictions. Always consult with a patent attorney or agent for specific advice on international priority claims.

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

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.

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.”

If an applicant misses the 12-month deadline for claiming the benefit of a provisional application, they may be able to restore the benefit under certain conditions:

1. The nonprovisional application must be filed within 14 months of the provisional application’s filing date
2. A petition under 37 CFR 1.78(b) must be filed in the nonprovisional application
3. The delay in filing must be unintentional

The MPEP states: “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.”

The petition must include:

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

Yes, a U.S. applicant can claim priority from a provisional application filed in a foreign country, provided certain conditions are met. The MPEP 213 states:

An applicant may claim the right of priority based on a prior foreign application under the Paris Convention and 35 U.S.C. 119(a)-(d) whether the foreign application is an application for a patent or for the registration of a utility model or an industrial design.

Key points to consider:

• The foreign country must be a recognized country or regional patent office as listed in MPEP 213.01.
• The provisional application must be the first filing of the invention in any country.
• The U.S. application must be filed within 12 months of the foreign provisional filing date.
• The applicant must comply with all requirements for claiming priority, including submitting a certified copy of the foreign application.

It’s important to note that not all countries have provisional application systems, so the term ‘provisional’ may have different meanings in different jurisdictions. Always consult with a patent attorney or agent for specific advice on international priority claims.