Patent Law FAQ

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

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

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

The benefit of a provisional application can be restored if the nonprovisional application is filed within 14 months of the provisional application filing date. To restore the benefit:

1. File a petition under 37 CFR 1.78(b) in the nonprovisional application
2. Include the reference to the provisional application in an application data sheet
3. Pay the petition fee set in 37 CFR 1.17(m)
4. Provide a statement that the delay in filing was unintentional

As stated in MPEP 211.01(a): “If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

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

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

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

The benefit of a provisional application can be restored if the nonprovisional application is filed within 14 months of the provisional application filing date. To restore the benefit:

1. File a petition under 37 CFR 1.78(b) in the nonprovisional application
2. Include the reference to the provisional application in an application data sheet
3. Pay the petition fee set in 37 CFR 1.17(m)
4. Provide a statement that the delay in filing was unintentional

As stated in MPEP 211.01(a): “If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

Color drawings or photographs are generally not allowed in patent applications without special permission. MPEP 507 states:

OPAP may object to and require corrected drawings within a set time period, if the drawings: … (G) contain color drawings or color photographs, but not a petition to accept color drawings/photographs.

If an applicant wishes to include color drawings or photographs, they must file a petition to accept them. It’s important to note that the requirement for a black and white photocopy of color drawings/photographs has been eliminated. Applicants should be prepared to justify the need for color in their drawings or photographs when filing such a petition.

Color drawings or photographs are generally not allowed in patent applications without special permission. MPEP 507 states:

OPAP may object to and require corrected drawings within a set time period, if the drawings: … (G) contain color drawings or color photographs, but not a petition to accept color drawings/photographs.

If an applicant wishes to include color drawings or photographs, they must file a petition to accept them. It’s important to note that the requirement for a black and white photocopy of color drawings/photographs has been eliminated. Applicants should be prepared to justify the need for color in their drawings or photographs when filing such a petition.

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

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

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

The benefit of a provisional application can be restored if the nonprovisional application is filed within 14 months of the provisional application filing date. To restore the benefit:

1. File a petition under 37 CFR 1.78(b) in the nonprovisional application
2. Include the reference to the provisional application in an application data sheet
3. Pay the petition fee set in 37 CFR 1.17(m)
4. Provide a statement that the delay in filing was unintentional

As stated in MPEP 211.01(a): “If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

Color drawings or photographs are generally not allowed in patent applications without special permission. MPEP 507 states:

OPAP may object to and require corrected drawings within a set time period, if the drawings: … (G) contain color drawings or color photographs, but not a petition to accept color drawings/photographs.

If an applicant wishes to include color drawings or photographs, they must file a petition to accept them. It’s important to note that the requirement for a black and white photocopy of color drawings/photographs has been eliminated. Applicants should be prepared to justify the need for color in their drawings or photographs when filing such a petition.

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

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

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

The benefit of a provisional application can be restored if the nonprovisional application is filed within 14 months of the provisional application filing date. To restore the benefit:

1. File a petition under 37 CFR 1.78(b) in the nonprovisional application
2. Include the reference to the provisional application in an application data sheet
3. Pay the petition fee set in 37 CFR 1.17(m)
4. Provide a statement that the delay in filing was unintentional

As stated in MPEP 211.01(a): “If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

Color drawings or photographs are generally not allowed in patent applications without special permission. MPEP 507 states:

OPAP may object to and require corrected drawings within a set time period, if the drawings: … (G) contain color drawings or color photographs, but not a petition to accept color drawings/photographs.

If an applicant wishes to include color drawings or photographs, they must file a petition to accept them. It’s important to note that the requirement for a black and white photocopy of color drawings/photographs has been eliminated. Applicants should be prepared to justify the need for color in their drawings or photographs when filing such a petition.