Patent Law FAQ

How does a secrecy order affect patent term and maintenance fees?

A secrecy order can have significant impacts on both the patent term and maintenance fees. According to MPEP 120:

“If the application is found to be allowable during the secrecy order period, it will be passed to issue upon the removal or rescission of the secrecy order.”

This means that while under a secrecy order:

• The patent application’s examination continues, but issuance is delayed.
• The patent term may be affected, as it typically begins on the issue date.
• No maintenance fees are due until the patent is issued.

However, the law provides some compensation for these delays. “The term of the patent may be extended for the period of delay due to the secrecy order pursuant to 35 U.S.C. 154(b).” This extension helps to offset the time lost due to the secrecy order, ensuring that inventors don’t lose patent protection time unfairly.

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

What is the significance of the filing date in a divisional application?

The filing date of a divisional application is crucial for several reasons:

• Benefit of earlier filing date: A divisional application is entitled to the benefit of the filing date of the prior-filed application, as stated in MPEP 201.06(c): ‘A divisional application is entitled to the benefit of the filing date of the prior-filed application if filed before the patenting or abandonment of or termination of proceedings on the prior-filed application.’
• Prior art considerations: The earlier filing date can be used to overcome prior art references that might otherwise be applicable.
• Patent term calculations: The filing date may affect the calculation of the patent term.
• Priority claims: It establishes the basis for any priority claims to foreign applications.

It’s important to note that the divisional application must be filed while the parent application is still pending to claim the benefit of the earlier filing date.

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

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

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

What is the effect of a continuation-in-part application on patent term?

A continuation-in-part (CIP) application can have a significant impact on patent term. According to the MPEP 201.08:

The term of a patent issuing from a continuation-in-part application may be barred or limited by any prior applications or patents from which benefit is claimed.

This means that:

• The patent term for subject matter carried over from the parent application is calculated from the filing date of the parent application.
• The patent term for new subject matter introduced in the CIP is calculated from the filing date of the CIP application.
• This can result in different expiration dates for different claims within the same patent.

It’s crucial for inventors and patent practitioners to carefully consider the timing and content of CIP applications to maximize patent protection and term.

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

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:

• benefit claim
• priority claim
• provisional application
• nonprovisional application
• patent term

Filing a provisional patent application offers several advantages, as outlined in the MPEP:

1. Establishing Priority: It allows applicants to quickly and inexpensively file provisional applications and establish a priority date for their invention.
2. Paris Convention Priority: It starts the Paris Convention priority year, allowing foreign filings within 12 months while maintaining the U.S. filing date.
3. Simplified Filing: As stated in the MPEP, No claim is required in a provisional application and No oath or declaration is required in a provisional application.
4. Patent Term: The MPEP notes, The domestic priority period will not count in the measurement of the 20-year patent term. This puts domestic applicants… on equal footing with foreign applicants with respect to the patent term.
5. Time for Development: It provides a 12-month period to further develop the invention before filing a nonprovisional application.

These advantages make provisional applications a useful tool for inventors to secure an early filing date while allowing time for further development and market assessment.

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

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

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

The filing date of a divisional application can affect the patent term in several ways:

1. 20-year term: The 20-year patent term is calculated from the earliest U.S. filing date to which the divisional application claims priority. This means that the term of a patent issued on a divisional application will generally be shorter than that of its parent application.
2. Patent Term Adjustment (PTA): The divisional application may be eligible for PTA based on delays in its own prosecution, but not for delays in the prosecution of its parent application.
3. Terminal Disclaimer: If there’s a risk of obviousness-type double patenting, a terminal disclaimer may be required, potentially limiting the term of the divisional patent to that of the parent patent.

The MPEP 201.06(c) does not directly address patent term, but it’s important to consider these factors when filing a divisional application. For more details on patent term, refer to MPEP 2701.

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

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

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

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.

The filing date of a continuation application can significantly affect its patent term. While the continuation application gets the benefit of the earlier filing date for prior art purposes, its actual filing date is used to calculate the patent term. According to MPEP 201.07:

The filing date of a continuation application is the filing date of the parent application.

However, this refers to the priority date for prior art purposes. The actual patent term is calculated from the filing date of the continuation application itself. Here’s how it works:

• The patent term is generally 20 years from the filing date of the earliest non-provisional application to which priority is claimed.
• For a continuation application, this means 20 years from the filing date of the parent non-provisional application.
• Each continuation in a chain reduces the effective patent term.

It’s crucial to consider this when deciding whether to file a continuation or a new application, as it can impact the overall protection period for your invention.

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

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

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

How does claiming benefit of an international application affect the patent term?

Claiming the benefit of an international application can affect the patent term in specific ways. According to MPEP 211.01(c):

It should be noted that international applications, which designate the United States, are included in the definition of ‘national application’ in pre-AIA 35 U.S.C. 154(a)(2).

This means that for patents subject to the 20-year term provision of pre-AIA 35 U.S.C. 154(a)(2), the 20-year term begins on the international filing date of the international application. However, it’s important to note that the MPEP 2701 provides more detailed information on patent term calculations, including adjustments and extensions that may apply.

To learn more:

• International application
• Patent term
• Pre-AIA 35 U.S.C. 154(a)(2)
• Patent term calculation

To learn more:

• Pre-AIA 35 U.S.C. 154(a)(2)

Claiming benefit to a prior application can affect the patent term in several ways:

1. For applications subject to the 20-year term provision:
   • The term begins from the earliest U.S. filing date to which benefit is claimed under 35 U.S.C. 120, 121, or 365(c)
   • Claiming benefit to earlier applications may reduce the effective patent term
2. For provisional applications:
   • Claiming benefit under 35 U.S.C. 119(e) does not affect the patent term
   • However, claiming benefit to a provisional under 35 U.S.C. 120 (not recommended) could reduce the term

MPEP 211.02 cautions: “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 carefully consider the implications of benefit claims on patent term when developing a patent strategy, especially for patent families with multiple related applications.

To learn more:

• patent term
• benefit claim
• priority claim
• provisional application
• patent strategy

A terminal disclaimer filed in a parent application automatically carries over to a Continued Prosecution Application (CPA). The MPEP clearly states:

“A terminal disclaimer filed in the parent application carries over to a CPA. The terminal disclaimer filed in the parent application carries over because the CPA retains the same application number as the parent application, i.e., the application number to which the previously filed terminal disclaimer is directed.”

However, if an applicant does not want the terminal disclaimer to apply to the CPA, they must take specific action:

“If applicant does not want the terminal disclaimer to carry over to the CPA, applicant must file a petition under 37 CFR 1.182 along with the required petition fee, requesting the terminal disclaimer filed in the parent application not be carried over to the CPA.”

It’s important to note that such a petition must be filed and granted before the patent issues to be effective.

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

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

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

A reissue application does not affect the original patent’s term. According to MPEP 201.05, ‘The reissue application is a continuation of the original application and the reissue patent will expire at the same time that the original patent would have expired.’

This means that:

• The term of the reissue patent remains the same as the original patent.
• No additional patent term is granted through the reissue process.
• The expiration date of the reissue patent will be identical to that of the original patent.

It’s important to note that while a reissue doesn’t extend the patent term, it can potentially strengthen or broaden the patent’s claims within the original term, subject to certain limitations such as the two-year rule for broadening reissues.

The patent term is governed by 35 U.S.C. 254, which states: ‘Every reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, but in so far as the claims of the original and reissued patents are substantially identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent, to the extent that its claims are substantially identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent.’

To learn more:

• reissue application
• patent term
• original patent
• expiration date
• patent claims

A divisional application does not extend the patent term beyond that of the parent application. The term of a patent issuing from a divisional application is calculated from the filing date of the earliest application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c), excluding any benefit claims to provisional applications.

This means that while you can pursue additional patent protection through a divisional application, you don’t get extra time beyond the original 20-year term from the earliest non-provisional filing date.

It’s important to note that patent term adjustments may apply independently to divisional applications based on delays in their own prosecution.

To learn more:

• divisional application
• patent term
• continuation applications

Filing a Continued Prosecution Application (CPA) can affect patent term because it results in a new filing date. While the CPA retains the benefit of the earlier filing date for prior art purposes, the actual filing date of the CPA is used for calculating patent term. The MPEP notes: 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). This means that the patent term for a CPA will generally be shorter than if the original application had been allowed, as the term is calculated from the CPA filing date, not the original application’s filing date.

To learn more:

• CPA
• Patent Term
• Filing Date

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.

A continuation-in-part (CIP) application can have a complex effect on patent term. The MPEP 201.08 states:

‘A continuation-in-part application is entitled to the benefit of the filing date of an earlier nonprovisional application as to common subject matter.’

This has several implications for patent term:

• 20-year term: The patent term is generally 20 years from the earliest effective U.S. filing date of the first nonprovisional application in the chain.
• New matter: Claims solely supported by new matter in the CIP do not receive the benefit of the earlier filing date, potentially extending their effective term.
• Priority claims: The ability to claim priority to earlier applications can affect the starting point of the 20-year term.
• Patent term adjustment: Delays in prosecution may lead to patent term adjustments, which can extend the term beyond 20 years.

Applicants should carefully consider the impact on patent term when deciding to file a CIP, especially for rapidly evolving technologies where a longer term might be advantageous.

For more information on new matter, visit: new matter.

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

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

A continuation application can have significant implications for the patent term. Here are key points to understand:

• Patent Term Calculation: The term of a patent stemming from a continuation application is generally calculated from the filing date of the earliest application in the chain to which priority is claimed.
• 20-Year Term: Under current U.S. law, utility and plant patents have a term of 20 years from the earliest effective U.S. filing date of the application.
• No Extension of Monopoly: As stated in MPEP 201.07, ‘The filing of a continuation application does not extend the term of the patent to be granted on the continuing application because the term of a patent issuing on a continuation application is measured from the filing date of the earliest application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c).’
• Patent Term Adjustment: While the base term is not extended, a continuation may be eligible for patent term adjustment due to delays in prosecution, which can effectively extend the term.

It’s important to note that while continuation applications don’t extend the base patent term, they can provide strategic advantages in terms of claim scope and prosecution timing.

To learn more:

• continuation application
• patent term
• patent expiration
• patent term adjustment

Claiming foreign priority under 35 U.S.C. 119(a)-(d) and claiming benefit of a U.S. provisional application under 35 U.S.C. 119(e) are similar in some ways but have important differences:

1. Time limit:
– Foreign priority: Must be claimed within 12 months (6 months for design applications)
– Provisional: Must be claimed within 12 months

2. Effective filing date:
– Both can provide an earlier effective filing date for prior art purposes

3. Patent term:
– Foreign priority: Does not affect patent term
– Provisional: The 12-month period counts towards the 20-year patent term

4. Disclosure requirements:
– Both require the earlier application to provide adequate support for the claimed invention

5. Formalities:
– Foreign priority: Requires a certified copy of the foreign application
– Provisional: No certified copy required, but the provisional must be in English

6. Inventorship:
– Foreign priority: Requires at least one common inventor
– Provisional: Requires at least one common inventor

7. International effect:
– Foreign priority: Recognized in other Paris Convention countries
– Provisional: May not be recognized in some foreign jurisdictions

Both types of priority claims can be valuable for establishing an earlier effective filing date, but they have different requirements and effects that should be considered when developing a patent strategy.

Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.

For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.

For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.

It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.

Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.

What is the significance of the filing date in a divisional application?

The filing date of a divisional application is crucial for several reasons:

• Benefit of earlier filing date: A divisional application is entitled to the benefit of the filing date of the prior-filed application, as stated in MPEP 201.06(c): ‘A divisional application is entitled to the benefit of the filing date of the prior-filed application if filed before the patenting or abandonment of or termination of proceedings on the prior-filed application.’
• Prior art considerations: The earlier filing date can be used to overcome prior art references that might otherwise be applicable.
• Patent term calculations: The filing date may affect the calculation of the patent term.
• Priority claims: It establishes the basis for any priority claims to foreign applications.

It’s important to note that the divisional application must be filed while the parent application is still pending to claim the benefit of the earlier filing date.

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

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

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

What is the effect of a continuation-in-part application on patent term?

A continuation-in-part (CIP) application can have a significant impact on patent term. According to the MPEP 201.08:

The term of a patent issuing from a continuation-in-part application may be barred or limited by any prior applications or patents from which benefit is claimed.

This means that:

• The patent term for subject matter carried over from the parent application is calculated from the filing date of the parent application.
• The patent term for new subject matter introduced in the CIP is calculated from the filing date of the CIP application.
• This can result in different expiration dates for different claims within the same patent.

It’s crucial for inventors and patent practitioners to carefully consider the timing and content of CIP applications to maximize patent protection and term.

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

Filing a provisional patent application offers several advantages, as outlined in the MPEP:

1. Establishing Priority: It allows applicants to quickly and inexpensively file provisional applications and establish a priority date for their invention.
2. Paris Convention Priority: It starts the Paris Convention priority year, allowing foreign filings within 12 months while maintaining the U.S. filing date.
3. Simplified Filing: As stated in the MPEP, No claim is required in a provisional application and No oath or declaration is required in a provisional application.
4. Patent Term: The MPEP notes, The domestic priority period will not count in the measurement of the 20-year patent term. This puts domestic applicants… on equal footing with foreign applicants with respect to the patent term.
5. Time for Development: It provides a 12-month period to further develop the invention before filing a nonprovisional application.

These advantages make provisional applications a useful tool for inventors to secure an early filing date while allowing time for further development and market assessment.

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

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

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

The filing date of a divisional application can affect the patent term in several ways:

1. 20-year term: The 20-year patent term is calculated from the earliest U.S. filing date to which the divisional application claims priority. This means that the term of a patent issued on a divisional application will generally be shorter than that of its parent application.
2. Patent Term Adjustment (PTA): The divisional application may be eligible for PTA based on delays in its own prosecution, but not for delays in the prosecution of its parent application.
3. Terminal Disclaimer: If there’s a risk of obviousness-type double patenting, a terminal disclaimer may be required, potentially limiting the term of the divisional patent to that of the parent patent.

The MPEP 201.06(c) does not directly address patent term, but it’s important to consider these factors when filing a divisional application. For more details on patent term, refer to MPEP 2701.

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

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

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

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.

The filing date of a continuation application can significantly affect its patent term. While the continuation application gets the benefit of the earlier filing date for prior art purposes, its actual filing date is used to calculate the patent term. According to MPEP 201.07:

The filing date of a continuation application is the filing date of the parent application.

However, this refers to the priority date for prior art purposes. The actual patent term is calculated from the filing date of the continuation application itself. Here’s how it works:

• The patent term is generally 20 years from the filing date of the earliest non-provisional application to which priority is claimed.
• For a continuation application, this means 20 years from the filing date of the parent non-provisional application.
• Each continuation in a chain reduces the effective patent term.

It’s crucial to consider this when deciding whether to file a continuation or a new application, as it can impact the overall protection period for your invention.

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

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

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

A terminal disclaimer filed in a parent application automatically carries over to a Continued Prosecution Application (CPA). The MPEP clearly states:

“A terminal disclaimer filed in the parent application carries over to a CPA. The terminal disclaimer filed in the parent application carries over because the CPA retains the same application number as the parent application, i.e., the application number to which the previously filed terminal disclaimer is directed.”

However, if an applicant does not want the terminal disclaimer to apply to the CPA, they must take specific action:

“If applicant does not want the terminal disclaimer to carry over to the CPA, applicant must file a petition under 37 CFR 1.182 along with the required petition fee, requesting the terminal disclaimer filed in the parent application not be carried over to the CPA.”

It’s important to note that such a petition must be filed and granted before the patent issues to be effective.

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

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

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.

A continuation-in-part (CIP) application can have a complex effect on patent term. The MPEP 201.08 states:

‘A continuation-in-part application is entitled to the benefit of the filing date of an earlier nonprovisional application as to common subject matter.’

This has several implications for patent term:

• 20-year term: The patent term is generally 20 years from the earliest effective U.S. filing date of the first nonprovisional application in the chain.
• New matter: Claims solely supported by new matter in the CIP do not receive the benefit of the earlier filing date, potentially extending their effective term.
• Priority claims: The ability to claim priority to earlier applications can affect the starting point of the 20-year term.
• Patent term adjustment: Delays in prosecution may lead to patent term adjustments, which can extend the term beyond 20 years.

Applicants should carefully consider the impact on patent term when deciding to file a CIP, especially for rapidly evolving technologies where a longer term might be advantageous.

For more information on new matter, visit: new matter.

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

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

Claiming foreign priority under 35 U.S.C. 119(a)-(d) and claiming benefit of a U.S. provisional application under 35 U.S.C. 119(e) are similar in some ways but have important differences:

1. Time limit:
– Foreign priority: Must be claimed within 12 months (6 months for design applications)
– Provisional: Must be claimed within 12 months

2. Effective filing date:
– Both can provide an earlier effective filing date for prior art purposes

3. Patent term:
– Foreign priority: Does not affect patent term
– Provisional: The 12-month period counts towards the 20-year patent term

4. Disclosure requirements:
– Both require the earlier application to provide adequate support for the claimed invention

5. Formalities:
– Foreign priority: Requires a certified copy of the foreign application
– Provisional: No certified copy required, but the provisional must be in English

6. Inventorship:
– Foreign priority: Requires at least one common inventor
– Provisional: Requires at least one common inventor

7. International effect:
– Foreign priority: Recognized in other Paris Convention countries
– Provisional: May not be recognized in some foreign jurisdictions

Both types of priority claims can be valuable for establishing an earlier effective filing date, but they have different requirements and effects that should be considered when developing a patent strategy.

Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.

For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.

For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.

It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.

Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.

What is the significance of the filing date in a divisional application?

The filing date of a divisional application is crucial for several reasons:

• Benefit of earlier filing date: A divisional application is entitled to the benefit of the filing date of the prior-filed application, as stated in MPEP 201.06(c): ‘A divisional application is entitled to the benefit of the filing date of the prior-filed application if filed before the patenting or abandonment of or termination of proceedings on the prior-filed application.’
• Prior art considerations: The earlier filing date can be used to overcome prior art references that might otherwise be applicable.
• Patent term calculations: The filing date may affect the calculation of the patent term.
• Priority claims: It establishes the basis for any priority claims to foreign applications.

It’s important to note that the divisional application must be filed while the parent application is still pending to claim the benefit of the earlier filing date.

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

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

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

The filing date of a patent application is crucial for several reasons, as outlined in MPEP 601:

• It establishes the priority date for the invention.
• It starts the clock for the patent term.
• It determines which version of the patent laws and rules apply to the application.

The MPEP emphasizes: ‘The filing date of an application is important (except for design applications) because it may affect the priority of the application relative to other applications or publications, and because many of the rules relating to patent applications use this date as a reference point.’

For nonprovisional applications, the filing date is typically the date when the USPTO receives all required elements, including the specification, at least one claim, and any necessary drawings. For provisional applications, the filing date is established when the USPTO receives the specification and any required drawings.

To learn more:

• filing date
• patent application
• priority date
• patent term

What is the effect of a continuation-in-part application on patent term?

A continuation-in-part (CIP) application can have a significant impact on patent term. According to the MPEP 201.08:

The term of a patent issuing from a continuation-in-part application may be barred or limited by any prior applications or patents from which benefit is claimed.

This means that:

• The patent term for subject matter carried over from the parent application is calculated from the filing date of the parent application.
• The patent term for new subject matter introduced in the CIP is calculated from the filing date of the CIP application.
• This can result in different expiration dates for different claims within the same patent.

It’s crucial for inventors and patent practitioners to carefully consider the timing and content of CIP applications to maximize patent protection and term.

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

Claiming foreign priority under 35 U.S.C. 119(a)-(d) and claiming benefit of a U.S. provisional application under 35 U.S.C. 119(e) are similar in some ways but have important differences:

1. Time limit:
– Foreign priority: Must be claimed within 12 months (6 months for design applications)
– Provisional: Must be claimed within 12 months

2. Effective filing date:
– Both can provide an earlier effective filing date for prior art purposes

3. Patent term:
– Foreign priority: Does not affect patent term
– Provisional: The 12-month period counts towards the 20-year patent term

4. Disclosure requirements:
– Both require the earlier application to provide adequate support for the claimed invention

5. Formalities:
– Foreign priority: Requires a certified copy of the foreign application
– Provisional: No certified copy required, but the provisional must be in English

6. Inventorship:
– Foreign priority: Requires at least one common inventor
– Provisional: Requires at least one common inventor

7. International effect:
– Foreign priority: Recognized in other Paris Convention countries
– Provisional: May not be recognized in some foreign jurisdictions

Both types of priority claims can be valuable for establishing an earlier effective filing date, but they have different requirements and effects that should be considered when developing a patent strategy.

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:

• benefit claim
• priority claim
• provisional application
• nonprovisional application
• patent term

Filing a provisional patent application offers several advantages, as outlined in the MPEP:

1. Establishing Priority: It allows applicants to quickly and inexpensively file provisional applications and establish a priority date for their invention.
2. Paris Convention Priority: It starts the Paris Convention priority year, allowing foreign filings within 12 months while maintaining the U.S. filing date.
3. Simplified Filing: As stated in the MPEP, No claim is required in a provisional application and No oath or declaration is required in a provisional application.
4. Patent Term: The MPEP notes, The domestic priority period will not count in the measurement of the 20-year patent term. This puts domestic applicants… on equal footing with foreign applicants with respect to the patent term.
5. Time for Development: It provides a 12-month period to further develop the invention before filing a nonprovisional application.

These advantages make provisional applications a useful tool for inventors to secure an early filing date while allowing time for further development and market assessment.

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

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

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

The filing date of a divisional application can affect the patent term in several ways:

1. 20-year term: The 20-year patent term is calculated from the earliest U.S. filing date to which the divisional application claims priority. This means that the term of a patent issued on a divisional application will generally be shorter than that of its parent application.
2. Patent Term Adjustment (PTA): The divisional application may be eligible for PTA based on delays in its own prosecution, but not for delays in the prosecution of its parent application.
3. Terminal Disclaimer: If there’s a risk of obviousness-type double patenting, a terminal disclaimer may be required, potentially limiting the term of the divisional patent to that of the parent patent.

The MPEP 201.06(c) does not directly address patent term, but it’s important to consider these factors when filing a divisional application. For more details on patent term, refer to MPEP 2701.

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

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

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

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.

The filing date of a continuation application can significantly affect its patent term. While the continuation application gets the benefit of the earlier filing date for prior art purposes, its actual filing date is used to calculate the patent term. According to MPEP 201.07:

The filing date of a continuation application is the filing date of the parent application.

However, this refers to the priority date for prior art purposes. The actual patent term is calculated from the filing date of the continuation application itself. Here’s how it works:

• The patent term is generally 20 years from the filing date of the earliest non-provisional application to which priority is claimed.
• For a continuation application, this means 20 years from the filing date of the parent non-provisional application.
• Each continuation in a chain reduces the effective patent term.

It’s crucial to consider this when deciding whether to file a continuation or a new application, as it can impact the overall protection period for your invention.

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

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

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

Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.

For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.

For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.

It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.

Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.

How does claiming benefit of an international application affect the patent term?

Claiming the benefit of an international application can affect the patent term in specific ways. According to MPEP 211.01(c):

It should be noted that international applications, which designate the United States, are included in the definition of ‘national application’ in pre-AIA 35 U.S.C. 154(a)(2).

This means that for patents subject to the 20-year term provision of pre-AIA 35 U.S.C. 154(a)(2), the 20-year term begins on the international filing date of the international application. However, it’s important to note that the MPEP 2701 provides more detailed information on patent term calculations, including adjustments and extensions that may apply.

To learn more:

• International application
• Patent term
• Pre-AIA 35 U.S.C. 154(a)(2)
• Patent term calculation

To learn more:

• Pre-AIA 35 U.S.C. 154(a)(2)

Claiming benefit to a prior application can affect the patent term in several ways:

1. For applications subject to the 20-year term provision:
   • The term begins from the earliest U.S. filing date to which benefit is claimed under 35 U.S.C. 120, 121, or 365(c)
   • Claiming benefit to earlier applications may reduce the effective patent term
2. For provisional applications:
   • Claiming benefit under 35 U.S.C. 119(e) does not affect the patent term
   • However, claiming benefit to a provisional under 35 U.S.C. 120 (not recommended) could reduce the term

MPEP 211.02 cautions: “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 carefully consider the implications of benefit claims on patent term when developing a patent strategy, especially for patent families with multiple related applications.

To learn more:

• patent term
• benefit claim
• priority claim
• provisional application
• patent strategy

A terminal disclaimer filed in a parent application automatically carries over to a Continued Prosecution Application (CPA). The MPEP clearly states:

“A terminal disclaimer filed in the parent application carries over to a CPA. The terminal disclaimer filed in the parent application carries over because the CPA retains the same application number as the parent application, i.e., the application number to which the previously filed terminal disclaimer is directed.”

However, if an applicant does not want the terminal disclaimer to apply to the CPA, they must take specific action:

“If applicant does not want the terminal disclaimer to carry over to the CPA, applicant must file a petition under 37 CFR 1.182 along with the required petition fee, requesting the terminal disclaimer filed in the parent application not be carried over to the CPA.”

It’s important to note that such a petition must be filed and granted before the patent issues to be effective.

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

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

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

How does a secrecy order affect patent term and maintenance fees?

A secrecy order can have significant impacts on both the patent term and maintenance fees. According to MPEP 120:

“If the application is found to be allowable during the secrecy order period, it will be passed to issue upon the removal or rescission of the secrecy order.”

This means that while under a secrecy order:

• The patent application’s examination continues, but issuance is delayed.
• The patent term may be affected, as it typically begins on the issue date.
• No maintenance fees are due until the patent is issued.

However, the law provides some compensation for these delays. “The term of the patent may be extended for the period of delay due to the secrecy order pursuant to 35 U.S.C. 154(b).” This extension helps to offset the time lost due to the secrecy order, ensuring that inventors don’t lose patent protection time unfairly.

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

A reissue application does not affect the original patent’s term. According to MPEP 201.05, ‘The reissue application is a continuation of the original application and the reissue patent will expire at the same time that the original patent would have expired.’

This means that:

• The term of the reissue patent remains the same as the original patent.
• No additional patent term is granted through the reissue process.
• The expiration date of the reissue patent will be identical to that of the original patent.

It’s important to note that while a reissue doesn’t extend the patent term, it can potentially strengthen or broaden the patent’s claims within the original term, subject to certain limitations such as the two-year rule for broadening reissues.

The patent term is governed by 35 U.S.C. 254, which states: ‘Every reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, but in so far as the claims of the original and reissued patents are substantially identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent, to the extent that its claims are substantially identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent.’

To learn more:

• reissue application
• patent term
• original patent
• expiration date
• patent claims

A divisional application does not extend the patent term beyond that of the parent application. The term of a patent issuing from a divisional application is calculated from the filing date of the earliest application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c), excluding any benefit claims to provisional applications.

This means that while you can pursue additional patent protection through a divisional application, you don’t get extra time beyond the original 20-year term from the earliest non-provisional filing date.

It’s important to note that patent term adjustments may apply independently to divisional applications based on delays in their own prosecution.

To learn more:

• divisional application
• patent term
• continuation applications

Filing a Continued Prosecution Application (CPA) can affect patent term because it results in a new filing date. While the CPA retains the benefit of the earlier filing date for prior art purposes, the actual filing date of the CPA is used for calculating patent term. The MPEP notes: 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). This means that the patent term for a CPA will generally be shorter than if the original application had been allowed, as the term is calculated from the CPA filing date, not the original application’s filing date.

To learn more:

• CPA
• Patent Term
• Filing Date

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.

A continuation-in-part (CIP) application can have a complex effect on patent term. The MPEP 201.08 states:

‘A continuation-in-part application is entitled to the benefit of the filing date of an earlier nonprovisional application as to common subject matter.’

This has several implications for patent term:

• 20-year term: The patent term is generally 20 years from the earliest effective U.S. filing date of the first nonprovisional application in the chain.
• New matter: Claims solely supported by new matter in the CIP do not receive the benefit of the earlier filing date, potentially extending their effective term.
• Priority claims: The ability to claim priority to earlier applications can affect the starting point of the 20-year term.
• Patent term adjustment: Delays in prosecution may lead to patent term adjustments, which can extend the term beyond 20 years.

Applicants should carefully consider the impact on patent term when deciding to file a CIP, especially for rapidly evolving technologies where a longer term might be advantageous.

For more information on new matter, visit: new matter.

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

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

A continuation application can have significant implications for the patent term. Here are key points to understand:

• Patent Term Calculation: The term of a patent stemming from a continuation application is generally calculated from the filing date of the earliest application in the chain to which priority is claimed.
• 20-Year Term: Under current U.S. law, utility and plant patents have a term of 20 years from the earliest effective U.S. filing date of the application.
• No Extension of Monopoly: As stated in MPEP 201.07, ‘The filing of a continuation application does not extend the term of the patent to be granted on the continuing application because the term of a patent issuing on a continuation application is measured from the filing date of the earliest application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c).’
• Patent Term Adjustment: While the base term is not extended, a continuation may be eligible for patent term adjustment due to delays in prosecution, which can effectively extend the term.

It’s important to note that while continuation applications don’t extend the base patent term, they can provide strategic advantages in terms of claim scope and prosecution timing.

To learn more:

• continuation application
• patent term
• patent expiration
• patent term adjustment

What is the significance of the filing date in a divisional application?

The filing date of a divisional application is crucial for several reasons:

• Benefit of earlier filing date: A divisional application is entitled to the benefit of the filing date of the prior-filed application, as stated in MPEP 201.06(c): ‘A divisional application is entitled to the benefit of the filing date of the prior-filed application if filed before the patenting or abandonment of or termination of proceedings on the prior-filed application.’
• Prior art considerations: The earlier filing date can be used to overcome prior art references that might otherwise be applicable.
• Patent term calculations: The filing date may affect the calculation of the patent term.
• Priority claims: It establishes the basis for any priority claims to foreign applications.

It’s important to note that the divisional application must be filed while the parent application is still pending to claim the benefit of the earlier filing date.

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

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

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

The filing date of a patent application is crucial for several reasons, as outlined in MPEP 601:

• It establishes the priority date for the invention.
• It starts the clock for the patent term.
• It determines which version of the patent laws and rules apply to the application.

The MPEP emphasizes: ‘The filing date of an application is important (except for design applications) because it may affect the priority of the application relative to other applications or publications, and because many of the rules relating to patent applications use this date as a reference point.’

For nonprovisional applications, the filing date is typically the date when the USPTO receives all required elements, including the specification, at least one claim, and any necessary drawings. For provisional applications, the filing date is established when the USPTO receives the specification and any required drawings.

To learn more:

• filing date
• patent application
• priority date
• patent term

What is the effect of a continuation-in-part application on patent term?

A continuation-in-part (CIP) application can have a significant impact on patent term. According to the MPEP 201.08:

The term of a patent issuing from a continuation-in-part application may be barred or limited by any prior applications or patents from which benefit is claimed.

This means that:

• The patent term for subject matter carried over from the parent application is calculated from the filing date of the parent application.
• The patent term for new subject matter introduced in the CIP is calculated from the filing date of the CIP application.
• This can result in different expiration dates for different claims within the same patent.

It’s crucial for inventors and patent practitioners to carefully consider the timing and content of CIP applications to maximize patent protection and term.

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

Claiming foreign priority under 35 U.S.C. 119(a)-(d) and claiming benefit of a U.S. provisional application under 35 U.S.C. 119(e) are similar in some ways but have important differences:

1. Time limit:
– Foreign priority: Must be claimed within 12 months (6 months for design applications)
– Provisional: Must be claimed within 12 months

2. Effective filing date:
– Both can provide an earlier effective filing date for prior art purposes

3. Patent term:
– Foreign priority: Does not affect patent term
– Provisional: The 12-month period counts towards the 20-year patent term

4. Disclosure requirements:
– Both require the earlier application to provide adequate support for the claimed invention

5. Formalities:
– Foreign priority: Requires a certified copy of the foreign application
– Provisional: No certified copy required, but the provisional must be in English

6. Inventorship:
– Foreign priority: Requires at least one common inventor
– Provisional: Requires at least one common inventor

7. International effect:
– Foreign priority: Recognized in other Paris Convention countries
– Provisional: May not be recognized in some foreign jurisdictions

Both types of priority claims can be valuable for establishing an earlier effective filing date, but they have different requirements and effects that should be considered when developing a patent strategy.

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:

• benefit claim
• priority claim
• provisional application
• nonprovisional application
• patent term

Filing a provisional patent application offers several advantages, as outlined in the MPEP:

1. Establishing Priority: It allows applicants to quickly and inexpensively file provisional applications and establish a priority date for their invention.
2. Paris Convention Priority: It starts the Paris Convention priority year, allowing foreign filings within 12 months while maintaining the U.S. filing date.
3. Simplified Filing: As stated in the MPEP, No claim is required in a provisional application and No oath or declaration is required in a provisional application.
4. Patent Term: The MPEP notes, The domestic priority period will not count in the measurement of the 20-year patent term. This puts domestic applicants… on equal footing with foreign applicants with respect to the patent term.
5. Time for Development: It provides a 12-month period to further develop the invention before filing a nonprovisional application.

These advantages make provisional applications a useful tool for inventors to secure an early filing date while allowing time for further development and market assessment.

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

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

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

The filing date of a divisional application can affect the patent term in several ways:

1. 20-year term: The 20-year patent term is calculated from the earliest U.S. filing date to which the divisional application claims priority. This means that the term of a patent issued on a divisional application will generally be shorter than that of its parent application.
2. Patent Term Adjustment (PTA): The divisional application may be eligible for PTA based on delays in its own prosecution, but not for delays in the prosecution of its parent application.
3. Terminal Disclaimer: If there’s a risk of obviousness-type double patenting, a terminal disclaimer may be required, potentially limiting the term of the divisional patent to that of the parent patent.

The MPEP 201.06(c) does not directly address patent term, but it’s important to consider these factors when filing a divisional application. For more details on patent term, refer to MPEP 2701.

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

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

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

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.

The filing date of a continuation application can significantly affect its patent term. While the continuation application gets the benefit of the earlier filing date for prior art purposes, its actual filing date is used to calculate the patent term. According to MPEP 201.07:

The filing date of a continuation application is the filing date of the parent application.

However, this refers to the priority date for prior art purposes. The actual patent term is calculated from the filing date of the continuation application itself. Here’s how it works:

• The patent term is generally 20 years from the filing date of the earliest non-provisional application to which priority is claimed.
• For a continuation application, this means 20 years from the filing date of the parent non-provisional application.
• Each continuation in a chain reduces the effective patent term.

It’s crucial to consider this when deciding whether to file a continuation or a new application, as it can impact the overall protection period for your invention.

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

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

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

Claiming priority to a foreign application generally does not affect the term of a U.S. patent. The patent term is typically calculated from the actual U.S. filing date, not the foreign priority date.

For utility and plant patents:
– The term is 20 years from the earliest U.S. filing date of the application or any U.S. application to which it claims benefit under 35 U.S.C. 120, 121, or 365(c).
– The foreign priority date is not used in this calculation.

For design patents:
– The term is 15 years from the date of grant.
– The filing or priority dates do not affect the term.

It’s important to note that while the foreign priority date doesn’t affect the patent term, it can affect the effective filing date for prior art purposes, which can be crucial for determining patentability.

Patent Term Adjustment (PTA) may be available to extend the term of a utility or plant patent due to delays in prosecution, but this is calculated based on the actual U.S. filing date, not the foreign priority date.

How does claiming benefit of an international application affect the patent term?

Claiming the benefit of an international application can affect the patent term in specific ways. According to MPEP 211.01(c):

It should be noted that international applications, which designate the United States, are included in the definition of ‘national application’ in pre-AIA 35 U.S.C. 154(a)(2).

This means that for patents subject to the 20-year term provision of pre-AIA 35 U.S.C. 154(a)(2), the 20-year term begins on the international filing date of the international application. However, it’s important to note that the MPEP 2701 provides more detailed information on patent term calculations, including adjustments and extensions that may apply.

To learn more:

• International application
• Patent term
• Pre-AIA 35 U.S.C. 154(a)(2)
• Patent term calculation

To learn more:

• Pre-AIA 35 U.S.C. 154(a)(2)

Claiming benefit to a prior application can affect the patent term in several ways:

1. For applications subject to the 20-year term provision:
   • The term begins from the earliest U.S. filing date to which benefit is claimed under 35 U.S.C. 120, 121, or 365(c)
   • Claiming benefit to earlier applications may reduce the effective patent term
2. For provisional applications:
   • Claiming benefit under 35 U.S.C. 119(e) does not affect the patent term
   • However, claiming benefit to a provisional under 35 U.S.C. 120 (not recommended) could reduce the term

MPEP 211.02 cautions: “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 carefully consider the implications of benefit claims on patent term when developing a patent strategy, especially for patent families with multiple related applications.

To learn more:

• patent term
• benefit claim
• priority claim
• provisional application
• patent strategy

A terminal disclaimer filed in a parent application automatically carries over to a Continued Prosecution Application (CPA). The MPEP clearly states:

“A terminal disclaimer filed in the parent application carries over to a CPA. The terminal disclaimer filed in the parent application carries over because the CPA retains the same application number as the parent application, i.e., the application number to which the previously filed terminal disclaimer is directed.”

However, if an applicant does not want the terminal disclaimer to apply to the CPA, they must take specific action:

“If applicant does not want the terminal disclaimer to carry over to the CPA, applicant must file a petition under 37 CFR 1.182 along with the required petition fee, requesting the terminal disclaimer filed in the parent application not be carried over to the CPA.”

It’s important to note that such a petition must be filed and granted before the patent issues to be effective.

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

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

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

How does a secrecy order affect patent term and maintenance fees?

A secrecy order can have significant impacts on both the patent term and maintenance fees. According to MPEP 120:

“If the application is found to be allowable during the secrecy order period, it will be passed to issue upon the removal or rescission of the secrecy order.”

This means that while under a secrecy order:

• The patent application’s examination continues, but issuance is delayed.
• The patent term may be affected, as it typically begins on the issue date.
• No maintenance fees are due until the patent is issued.

However, the law provides some compensation for these delays. “The term of the patent may be extended for the period of delay due to the secrecy order pursuant to 35 U.S.C. 154(b).” This extension helps to offset the time lost due to the secrecy order, ensuring that inventors don’t lose patent protection time unfairly.

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

A reissue application does not affect the original patent’s term. According to MPEP 201.05, ‘The reissue application is a continuation of the original application and the reissue patent will expire at the same time that the original patent would have expired.’

This means that:

• The term of the reissue patent remains the same as the original patent.
• No additional patent term is granted through the reissue process.
• The expiration date of the reissue patent will be identical to that of the original patent.

It’s important to note that while a reissue doesn’t extend the patent term, it can potentially strengthen or broaden the patent’s claims within the original term, subject to certain limitations such as the two-year rule for broadening reissues.

The patent term is governed by 35 U.S.C. 254, which states: ‘Every reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, but in so far as the claims of the original and reissued patents are substantially identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent, to the extent that its claims are substantially identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent.’

To learn more:

• reissue application
• patent term
• original patent
• expiration date
• patent claims

A divisional application does not extend the patent term beyond that of the parent application. The term of a patent issuing from a divisional application is calculated from the filing date of the earliest application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c), excluding any benefit claims to provisional applications.

This means that while you can pursue additional patent protection through a divisional application, you don’t get extra time beyond the original 20-year term from the earliest non-provisional filing date.

It’s important to note that patent term adjustments may apply independently to divisional applications based on delays in their own prosecution.

To learn more:

• divisional application
• patent term
• continuation applications

Filing a Continued Prosecution Application (CPA) can affect patent term because it results in a new filing date. While the CPA retains the benefit of the earlier filing date for prior art purposes, the actual filing date of the CPA is used for calculating patent term. The MPEP notes: 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). This means that the patent term for a CPA will generally be shorter than if the original application had been allowed, as the term is calculated from the CPA filing date, not the original application’s filing date.

To learn more:

• CPA
• Patent Term
• Filing Date

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.

A continuation-in-part (CIP) application can have a complex effect on patent term. The MPEP 201.08 states:

‘A continuation-in-part application is entitled to the benefit of the filing date of an earlier nonprovisional application as to common subject matter.’

This has several implications for patent term:

• 20-year term: The patent term is generally 20 years from the earliest effective U.S. filing date of the first nonprovisional application in the chain.
• New matter: Claims solely supported by new matter in the CIP do not receive the benefit of the earlier filing date, potentially extending their effective term.
• Priority claims: The ability to claim priority to earlier applications can affect the starting point of the 20-year term.
• Patent term adjustment: Delays in prosecution may lead to patent term adjustments, which can extend the term beyond 20 years.

Applicants should carefully consider the impact on patent term when deciding to file a CIP, especially for rapidly evolving technologies where a longer term might be advantageous.

For more information on new matter, visit: new matter.

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

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

A continuation application can have significant implications for the patent term. Here are key points to understand:

• Patent Term Calculation: The term of a patent stemming from a continuation application is generally calculated from the filing date of the earliest application in the chain to which priority is claimed.
• 20-Year Term: Under current U.S. law, utility and plant patents have a term of 20 years from the earliest effective U.S. filing date of the application.
• No Extension of Monopoly: As stated in MPEP 201.07, ‘The filing of a continuation application does not extend the term of the patent to be granted on the continuing application because the term of a patent issuing on a continuation application is measured from the filing date of the earliest application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c).’
• Patent Term Adjustment: While the base term is not extended, a continuation may be eligible for patent term adjustment due to delays in prosecution, which can effectively extend the term.

It’s important to note that while continuation applications don’t extend the base patent term, they can provide strategic advantages in terms of claim scope and prosecution timing.

To learn more:

• continuation application
• patent term
• patent expiration
• patent term adjustment