Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 200 – Types and Status of Application; Benefit and Priority (4)
What happens if I miss the 12-month deadline for filing a nonprovisional application after a provisional application?
If you miss the 12-month deadline for filing a nonprovisional application claiming the benefit of a provisional application, you lose the right to claim that benefit. The MPEP states: A provisional application is not entitled to the right of priority under 35 U.S.C. 119(e) unless the full fee set forth in 37 CFR 1.16(d) has been paid and the basic filing fee set forth in 37 CFR 1.16(a) has been paid on or before the date the provisional application was filed.
(MPEP 201.04) Additionally, you cannot extend this 12-month period. However, you may still file a nonprovisional application; it just won’t have the earlier priority date of the provisional application.
To learn more:
To learn more:
The main differences between claiming benefit under 35 U.S.C. 119(e) and 35 U.S.C. 120 are:
- 35 U.S.C. 119(e):
- Used for claiming benefit of a provisional application
- Does not require specifying the relationship between applications
- Example: “This application claims the benefit of U.S. Provisional Application No. 61/123,456, filed January 1, 2020.”
- 35 U.S.C. 120:
- Used for claiming benefit of a nonprovisional application
- Requires specifying the relationship (continuation, divisional, or continuation-in-part)
- Example: “This application is a continuation of U.S. Application No. 12/345,678, filed January 1, 2020.”
MPEP 211.02 advises: “Although 35 U.S.C. 120 does not preclude a benefit claim to a provisional application, it is not recommended that applicants claim the benefit to a provisional application under 35 U.S.C. 120 since such a claim could have the effect of reducing the patent term, as the term of a patent issuing from such an application may be measured from the filing date of the provisional application pursuant to 35 U.S.C. 154(a)(2).”
It’s important to use the correct statute when making benefit claims to ensure proper recognition and avoid potential issues with patent term calculations.
To learn more:
Can I file a U.S. nonprovisional application claiming priority to a provisional application after 12 months?
While it’s generally recommended to file within 12 months, there is a limited exception that allows for filing a nonprovisional application claiming priority to a provisional application after the 12-month period. The MPEP explains:
“A nonprovisional application filed not later than twelve months after the date on which the provisional application was filed … will have its filing date restored to the filing date of the provisional application for the purpose of establishing copendency with the provisional application under 35 U.S.C. 119(e).” (MPEP 213.03)
However, this exception comes with strict conditions:
- The delay in filing must have been unintentional.
- The nonprovisional application must be filed within 14 months from the provisional filing date.
- A petition to restore the right of priority must be filed promptly.
It’s important to note that this exception is not automatic and requires a petition process. If granted, it allows the nonprovisional application to claim the benefit of the provisional application’s filing date.
To learn more:
How do I correct a benefit claim in a nonprovisional application after the time period set forth in 37 CFR 1.78?
To correct a benefit claim in a nonprovisional application after the time period set forth in 37 CFR 1.78, you need to file a petition to accept a delayed claim. The MPEP states:
“A petition to accept a delayed claim under 37 CFR 1.78(c) for the benefit of a prior-filed provisional application or under 37 CFR 1.78(e) for the benefit of a prior-filed nonprovisional application must be accompanied by:”
- The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed provisional application or the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed nonprovisional application, unless previously submitted;
- The petition fee set forth in 37 CFR 1.17(m); and
- A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(a)(4) or 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional.
The Director may require additional information where there is a question whether the delay was unintentional.
For more detailed information, refer to MPEP 211.02(a).
To learn more:
Patent Law (7)
What happens if I miss the 12-month deadline for filing a nonprovisional application after a provisional application?
If you miss the 12-month deadline for filing a nonprovisional application claiming the benefit of a provisional application, you lose the right to claim that benefit. The MPEP states: A provisional application is not entitled to the right of priority under 35 U.S.C. 119(e) unless the full fee set forth in 37 CFR 1.16(d) has been paid and the basic filing fee set forth in 37 CFR 1.16(a) has been paid on or before the date the provisional application was filed.
(MPEP 201.04) Additionally, you cannot extend this 12-month period. However, you may still file a nonprovisional application; it just won’t have the earlier priority date of the provisional application.
To learn more:
To learn more:
The main differences between claiming benefit under 35 U.S.C. 119(e) and 35 U.S.C. 120 are:
- 35 U.S.C. 119(e):
- Used for claiming benefit of a provisional application
- Does not require specifying the relationship between applications
- Example: “This application claims the benefit of U.S. Provisional Application No. 61/123,456, filed January 1, 2020.”
- 35 U.S.C. 120:
- Used for claiming benefit of a nonprovisional application
- Requires specifying the relationship (continuation, divisional, or continuation-in-part)
- Example: “This application is a continuation of U.S. Application No. 12/345,678, filed January 1, 2020.”
MPEP 211.02 advises: “Although 35 U.S.C. 120 does not preclude a benefit claim to a provisional application, it is not recommended that applicants claim the benefit to a provisional application under 35 U.S.C. 120 since such a claim could have the effect of reducing the patent term, as the term of a patent issuing from such an application may be measured from the filing date of the provisional application pursuant to 35 U.S.C. 154(a)(2).”
It’s important to use the correct statute when making benefit claims to ensure proper recognition and avoid potential issues with patent term calculations.
To learn more:
Provisional and nonprovisional patent applications have several key differences:
- Claims: Nonprovisional applications require claims, while provisional applications do not. As stated in the MPEP, “Unlike an application filed under 35 U.S.C. 111(a) which requires claims before examination, a provisional application does not require claims.”
- Oath or Declaration: Nonprovisional applications require an oath or declaration, while provisional applications do not. The MPEP notes, “Furthermore, no oath or declaration is required.”
- Examination: Nonprovisional applications undergo substantive examination, while provisional applications do not.
- Information Disclosure Statement: Provisional applications should not include an information disclosure statement, unlike nonprovisional applications. The MPEP states, “Unlike applications filed under 35 U.S.C. 111(a), provisional applications should not include an information disclosure statement.”
- Cover Sheet: Provisional applications require a specific cover sheet with identifying information, which is not required for nonprovisional applications.
For more details on provisional applications, refer to MPEP § 201.04.
To learn more:
Can I file a U.S. nonprovisional application claiming priority to a provisional application after 12 months?
While it’s generally recommended to file within 12 months, there is a limited exception that allows for filing a nonprovisional application claiming priority to a provisional application after the 12-month period. The MPEP explains:
“A nonprovisional application filed not later than twelve months after the date on which the provisional application was filed … will have its filing date restored to the filing date of the provisional application for the purpose of establishing copendency with the provisional application under 35 U.S.C. 119(e).” (MPEP 213.03)
However, this exception comes with strict conditions:
- The delay in filing must have been unintentional.
- The nonprovisional application must be filed within 14 months from the provisional filing date.
- A petition to restore the right of priority must be filed promptly.
It’s important to note that this exception is not automatic and requires a petition process. If granted, it allows the nonprovisional application to claim the benefit of the provisional application’s filing date.
To learn more:
Yes, the filing fee, oath or declaration, and claims can be submitted after the initial filing of a nonprovisional application. However, there are specific rules and time limits for doing so:
- These items must be submitted within the period specified by the USPTO, usually in a Notice to File Missing Parts.
- A surcharge may be required for late submission.
- Failure to submit these items within the specified period may result in the application being abandoned.
The MPEP states: The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
It’s important to note that while these items can be submitted later, it’s generally best practice to include them with the initial filing to avoid potential issues or delays.
To learn more:
Can an oath or declaration from a provisional application be used for a nonprovisional application?
No, an oath or declaration from a provisional application cannot be used for a subsequent nonprovisional application. The MPEP 602.05 states:
‘The oath or declaration filed in a provisional application is not sufficient for the purposes of a nonprovisional application filed under 35 U.S.C. 111(a) or a national stage application filed under 35 U.S.C. 371, even if the nonprovisional application claims the benefit of the provisional application under 35 U.S.C. 119(e).’
This means that when converting a provisional application to a nonprovisional application or filing a nonprovisional application claiming priority to a provisional, a new oath or declaration must be submitted. This requirement ensures that the inventors properly declare their inventorship for the nonprovisional application, which may contain additional or modified content compared to the provisional application.
To learn more:
How do I correct a benefit claim in a nonprovisional application after the time period set forth in 37 CFR 1.78?
To correct a benefit claim in a nonprovisional application after the time period set forth in 37 CFR 1.78, you need to file a petition to accept a delayed claim. The MPEP states:
“A petition to accept a delayed claim under 37 CFR 1.78(c) for the benefit of a prior-filed provisional application or under 37 CFR 1.78(e) for the benefit of a prior-filed nonprovisional application must be accompanied by:”
- The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed provisional application or the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed nonprovisional application, unless previously submitted;
- The petition fee set forth in 37 CFR 1.17(m); and
- A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(a)(4) or 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional.
The Director may require additional information where there is a question whether the delay was unintentional.
For more detailed information, refer to MPEP 211.02(a).
To learn more:
Patent Procedure (7)
What happens if I miss the 12-month deadline for filing a nonprovisional application after a provisional application?
If you miss the 12-month deadline for filing a nonprovisional application claiming the benefit of a provisional application, you lose the right to claim that benefit. The MPEP states: A provisional application is not entitled to the right of priority under 35 U.S.C. 119(e) unless the full fee set forth in 37 CFR 1.16(d) has been paid and the basic filing fee set forth in 37 CFR 1.16(a) has been paid on or before the date the provisional application was filed.
(MPEP 201.04) Additionally, you cannot extend this 12-month period. However, you may still file a nonprovisional application; it just won’t have the earlier priority date of the provisional application.
To learn more:
To learn more:
The main differences between claiming benefit under 35 U.S.C. 119(e) and 35 U.S.C. 120 are:
- 35 U.S.C. 119(e):
- Used for claiming benefit of a provisional application
- Does not require specifying the relationship between applications
- Example: “This application claims the benefit of U.S. Provisional Application No. 61/123,456, filed January 1, 2020.”
- 35 U.S.C. 120:
- Used for claiming benefit of a nonprovisional application
- Requires specifying the relationship (continuation, divisional, or continuation-in-part)
- Example: “This application is a continuation of U.S. Application No. 12/345,678, filed January 1, 2020.”
MPEP 211.02 advises: “Although 35 U.S.C. 120 does not preclude a benefit claim to a provisional application, it is not recommended that applicants claim the benefit to a provisional application under 35 U.S.C. 120 since such a claim could have the effect of reducing the patent term, as the term of a patent issuing from such an application may be measured from the filing date of the provisional application pursuant to 35 U.S.C. 154(a)(2).”
It’s important to use the correct statute when making benefit claims to ensure proper recognition and avoid potential issues with patent term calculations.
To learn more:
Provisional and nonprovisional patent applications have several key differences:
- Claims: Nonprovisional applications require claims, while provisional applications do not. As stated in the MPEP, “Unlike an application filed under 35 U.S.C. 111(a) which requires claims before examination, a provisional application does not require claims.”
- Oath or Declaration: Nonprovisional applications require an oath or declaration, while provisional applications do not. The MPEP notes, “Furthermore, no oath or declaration is required.”
- Examination: Nonprovisional applications undergo substantive examination, while provisional applications do not.
- Information Disclosure Statement: Provisional applications should not include an information disclosure statement, unlike nonprovisional applications. The MPEP states, “Unlike applications filed under 35 U.S.C. 111(a), provisional applications should not include an information disclosure statement.”
- Cover Sheet: Provisional applications require a specific cover sheet with identifying information, which is not required for nonprovisional applications.
For more details on provisional applications, refer to MPEP § 201.04.
To learn more:
Can I file a U.S. nonprovisional application claiming priority to a provisional application after 12 months?
While it’s generally recommended to file within 12 months, there is a limited exception that allows for filing a nonprovisional application claiming priority to a provisional application after the 12-month period. The MPEP explains:
“A nonprovisional application filed not later than twelve months after the date on which the provisional application was filed … will have its filing date restored to the filing date of the provisional application for the purpose of establishing copendency with the provisional application under 35 U.S.C. 119(e).” (MPEP 213.03)
However, this exception comes with strict conditions:
- The delay in filing must have been unintentional.
- The nonprovisional application must be filed within 14 months from the provisional filing date.
- A petition to restore the right of priority must be filed promptly.
It’s important to note that this exception is not automatic and requires a petition process. If granted, it allows the nonprovisional application to claim the benefit of the provisional application’s filing date.
To learn more:
Yes, the filing fee, oath or declaration, and claims can be submitted after the initial filing of a nonprovisional application. However, there are specific rules and time limits for doing so:
- These items must be submitted within the period specified by the USPTO, usually in a Notice to File Missing Parts.
- A surcharge may be required for late submission.
- Failure to submit these items within the specified period may result in the application being abandoned.
The MPEP states: The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
It’s important to note that while these items can be submitted later, it’s generally best practice to include them with the initial filing to avoid potential issues or delays.
To learn more:
Can an oath or declaration from a provisional application be used for a nonprovisional application?
No, an oath or declaration from a provisional application cannot be used for a subsequent nonprovisional application. The MPEP 602.05 states:
‘The oath or declaration filed in a provisional application is not sufficient for the purposes of a nonprovisional application filed under 35 U.S.C. 111(a) or a national stage application filed under 35 U.S.C. 371, even if the nonprovisional application claims the benefit of the provisional application under 35 U.S.C. 119(e).’
This means that when converting a provisional application to a nonprovisional application or filing a nonprovisional application claiming priority to a provisional, a new oath or declaration must be submitted. This requirement ensures that the inventors properly declare their inventorship for the nonprovisional application, which may contain additional or modified content compared to the provisional application.
To learn more:
How do I correct a benefit claim in a nonprovisional application after the time period set forth in 37 CFR 1.78?
To correct a benefit claim in a nonprovisional application after the time period set forth in 37 CFR 1.78, you need to file a petition to accept a delayed claim. The MPEP states:
“A petition to accept a delayed claim under 37 CFR 1.78(c) for the benefit of a prior-filed provisional application or under 37 CFR 1.78(e) for the benefit of a prior-filed nonprovisional application must be accompanied by:”
- The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed provisional application or the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed nonprovisional application, unless previously submitted;
- The petition fee set forth in 37 CFR 1.17(m); and
- A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(a)(4) or 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional.
The Director may require additional information where there is a question whether the delay was unintentional.
For more detailed information, refer to MPEP 211.02(a).
To learn more: