Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 200 - Types and Status of Application; Benefit and Priority (14)
New matter can have a significant impact on benefit claims in patent applications. The introduction of new matter in a later-filed application can result in the loss of the benefit claim to the prior-filed application. According to MPEP 211.05:
‘New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).’
This means that if a later-filed application includes new matter not disclosed in the prior-filed application, it cannot claim the benefit of the earlier filing date for that new matter. The new matter will only be entitled to the filing date of the later-filed application. It’s crucial for applicants to ensure that all claimed subject matter is fully supported by the prior-filed application to maintain the benefit of the earlier filing date.
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What is the impact of a terminal disclaimer on claiming benefit of a prior-filed application?
A terminal disclaimer can affect the ability to claim benefit of a prior-filed application. According to MPEP 211.01(b):
Any nonprovisional application claiming the benefit of one or more prior-filed copending nonprovisional applications or international applications designating the United States must include a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number) or international application number and international filing date and indicating the relationship of the applications.
However, if a terminal disclaimer has been filed in the prior application, it may limit the ability to claim benefit. The MPEP states:
If the prior application has been published, the validity of the patent may be affected if the continuing application is not filed within one year of the publication date of the prior-filed application. See MPEP ยง 211.05 for more information on the effects of publication of patent applications.
It’s crucial to consider the implications of terminal disclaimers when claiming benefit, as they can affect patent term and validity.
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What is the ‘specific reference’ requirement for claiming benefit of a prior-filed application?
The ‘specific reference’ requirement is a crucial aspect of claiming the benefit of a prior-filed application. According to MPEP 211.01, To claim the benefit of a prior-filed application, the later-filed application must contain a specific reference to the prior-filed application.
This means that:
- The specific reference must be made in the first sentence(s) of the specification or in an application data sheet (ADS).
- It should include the relationship between the applications (e.g., continuation, divisional, or continuation-in-part).
- The prior application’s serial number and filing date must be provided.
For example: ‘This application is a continuation of Application No. 12/345,678, filed January 1, 2020.’
Failure to provide this specific reference can result in the loss of the benefit claim. For more details, refer to MPEP 211 and 37 CFR 1.78.
If a prior-filed application lacks adequate written description for a claimed invention, the following consequences may occur:
- The claim in the later-filed application will not be entitled to the benefit of the filing date of the prior-filed application for that invention.
- The effective filing date for the claimed invention will be the filing date of the later-filed application.
- This may impact the patent’s validity if intervening prior art exists between the filing dates of the prior-filed and later-filed applications.
As stated in MPEP 211.05:
To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or earlier-filed nonprovisional application or provisional application for which benefit is claimed); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement.
This emphasizes the importance of ensuring that the prior-filed application contains a complete and detailed disclosure of the claimed invention.
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What happens if a prior-filed application is abandoned?
If a prior-filed application is abandoned, it may still be used to claim the benefit of priority for a later-filed application, provided certain conditions are met. According to MPEP 211.01:
‘An abandoned application may be used as a prior application for purposes of claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) in a later-filed application when the abandoned application discloses the invention adequately and completely.’
However, it’s important to note that the abandoned application must still meet all the requirements for claiming benefit, including:
- Adequate disclosure of the invention
- Proper copendency (if applicable)
- Specific reference to the prior application in the later-filed application
If these conditions are met, the abandoned status of the prior application does not prevent it from serving as a basis for claiming benefit in a later application.
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To incorporate material from a prior-filed application under 37 CFR 1.57(b), several requirements must be met:
- The inadvertently omitted portion must be completely contained in the prior-filed application.
- A copy of the prior-filed application must be submitted (except for applications filed under 35 U.S.C. 111).
- If the prior-filed application is in a non-English language, an English language translation must be submitted.
- The applicant must identify where the inadvertently omitted portion can be found in the prior-filed application.
The MPEP states that an amendment may not comply with 37 CFR 1.57(b) if any of these conditions are not met. For example, it notes that non-compliance may occur if the inadvertently omitted portion is not completely contained in the prior-filed application
or if applicant did not identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application
.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on incorporation by reference, visit: incorporation by reference.
For more information on patent application requirements, visit: patent application requirements.
For more information on prior-filed application, visit: prior-filed application.
To claim the benefit of a prior-filed application in a continuation-in-part (CIP), several requirements must be met as outlined in MPEP 201.08 and 35 U.S.C. 120:
- The CIP must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
- The CIP must contain or be amended to contain a specific reference to the earlier filed application.
- For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet.
- The CIP must have at least one common inventor with the prior-filed application.
Additionally, the MPEP notes:
“The continuation-in-part application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).”
It’s important to note that the USPTO does not typically scrutinize whether the earlier application fully supports the CIP’s claims unless this becomes relevant in a proceeding before the Office.
For more information on patent procedure, visit: patent procedure.
For more information on prior-filed application, visit: prior-filed application.
A later-filed application for patent in the United States may claim the benefit of, or priority to, a prior application under certain conditions. These conditions are outlined in various U.S. statutes and regulations:
- For domestic benefit claims: 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78
- For foreign priority claims: 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55
The specific requirements and time frames may vary based on the filing date of the later-filed nonprovisional application and the type of priority or benefit claim being made.
For more information on domestic benefit, visit: domestic benefit.
For more information on foreign priority, visit: foreign priority.
For more information on prior-filed application, visit: prior-filed application.
The USPTO determines if a prior-filed application provides adequate support for a later-filed application by examining whether the prior-filed application discloses the invention claimed in the later-filed application in sufficient detail. According to MPEP 211.05:
‘To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, except for the best mode requirement.’
This means that the prior-filed application must provide a written description of the invention, enable one skilled in the art to make and use the invention, and disclose the best mode (if invented prior to the AIA) for carrying out the invention.
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How does the AIA FITF system affect the prior-filed application requirements?
The America Invents Act (AIA) First Inventor to File (FITF) system has introduced some changes to the prior-filed application requirements. The MPEP explains:
“AIA 35 U.S.C. 120, 121, 365(c), and 386(c) require that the prior-filed application to which benefit is claimed must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor.”
Key points to note:
- The prior application must name at least one common inventor with the later-filed application.
- This requirement applies to applications filed on or after September 16, 2012.
- For applications filed before this date, the prior application must name the inventor(s) named in the later-filed application.
These changes ensure that the benefit claim aligns with the FITF system’s focus on the first inventor to file. For more information, refer to MPEP 211.01 and USPTO AIA FITF Guidance.
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How do I correct the filing date of a prior-filed application in a benefit claim?
To correct the filing date of a prior-filed application in a benefit claim, you need to follow specific procedures outlined in MPEP 211.02(a). The MPEP states:
“If the prior application is a provisional application, and the filing date of the provisional application in the benefit claim is incorrect, applicant should file a petition under 37 CFR 1.78 to correct the benefit claim. A petition under 37 CFR 1.78 and the petition fee are required to correct the benefit claim because the correction is considered a delayed claim as per 37 CFR 1.78.”
For non-provisional applications, a similar process applies. You must file a petition under 37 CFR 1.78 along with the required fee to correct the filing date in the benefit claim.
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To claim the benefit of a prior-filed application, you must include a specific reference to the prior-filed application in your current application. The method of including this reference depends on when your application was filed:
- For applications filed before September 16, 2012: Include the reference in the first sentence(s) of the specification following the title or in an application data sheet (ADS) compliant with pre-AIA 37 CFR 1.76.
- For applications filed on or after September 16, 2012: Include the reference in an ADS compliant with 37 CFR 1.76.
The MPEP states: If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78.
(MPEP ยง 211)
For more information on ADS, visit: ADS.
For more information on prior-filed application, visit: prior-filed application.
For more information on specific reference, visit: specific reference.
To claim the benefit of a prior-filed application in a continuation application, you must include a reference to the prior-filed application in the new application. According to 37 CFR 1.78(d)(2):
Any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under ยง1.1023.
For nonprovisional applications, this reference must be included in an application data sheet (ADS) as specified in 37 CFR 1.76(b)(5). The reference should also identify the relationship between the applications, stating whether it’s a continuation, divisional, or continuation-in-part.
For more information on continuation application, visit: continuation application.
For more information on patent procedure, visit: patent procedure.
For more information on prior-filed application, visit: prior-filed application.
Can a provisional application be used as a prior-filed application for benefit claims?
Yes, a provisional application can be used as a prior-filed application for benefit claims in certain circumstances. According to MPEP 211.01:
‘The prior application may be a provisional application under 35 U.S.C. 111(b) or a nonprovisional application under 35 U.S.C. 111(a).’
However, there are specific requirements and limitations when claiming the benefit of a provisional application:
- The nonprovisional application must be filed within 12 months of the provisional application’s filing date (or 14 months with a grantable petition under 37 CFR 1.78(b)).
- The provisional application must adequately support and enable the subject matter of the claims in the nonprovisional application.
- The specific reference to the provisional application must be included in an application data sheet (ADS) or the first sentence of the specification.
It’s important to note that while a nonprovisional application can claim the benefit of a provisional application, a provisional application cannot claim the benefit of or priority to any other application.
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MPEP 200 - Types and Status of Application; Benefit and Priority Claims (3)
To claim the benefit of a prior-filed application in a continuation or continuation-in-part application, several requirements must be met:
1. The application must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
2. The application must contain or be amended to contain a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be in an application data sheet.
3. The application must have at least one common inventor with the prior application.
4. The application must comply with the requirements of 35 U.S.C. 120 and 37 CFR 1.78.
As stated in the MPEP: “An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.”
To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:
- The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
- The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
- The later-filed application must contain a specific reference to the prior-filed application
- The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78
Failure to timely submit the reference to the prior-filed application within the time periods specified in 37 CFR 1.78 is considered a waiver of any benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application. See 37 CFR 1.78(d)(3)(iii). The time periods are not extendable.
If the reference to the prior-filed application is submitted after the time period provided by 37 CFR 1.78, a petition and the petition fee under 37 CFR 1.17(m) would be required to accept the delayed claim. The petition must be accompanied by:
- The reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior-filed application
- The petition fee
- A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional
MPEP 201 - Types of Applications (3)
To claim the benefit of a prior-filed application in a continuation-in-part (CIP), several requirements must be met as outlined in MPEP 201.08 and 35 U.S.C. 120:
- The CIP must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
- The CIP must contain or be amended to contain a specific reference to the earlier filed application.
- For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet.
- The CIP must have at least one common inventor with the prior-filed application.
Additionally, the MPEP notes:
“The continuation-in-part application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).”
It’s important to note that the USPTO does not typically scrutinize whether the earlier application fully supports the CIP’s claims unless this becomes relevant in a proceeding before the Office.
For more information on patent procedure, visit: patent procedure.
For more information on prior-filed application, visit: prior-filed application.
To claim the benefit of a prior-filed application in a continuation or continuation-in-part application, several requirements must be met:
1. The application must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
2. The application must contain or be amended to contain a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be in an application data sheet.
3. The application must have at least one common inventor with the prior application.
4. The application must comply with the requirements of 35 U.S.C. 120 and 37 CFR 1.78.
As stated in the MPEP: “An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.”
To claim the benefit of a prior-filed application in a continuation application, you must include a reference to the prior-filed application in the new application. According to 37 CFR 1.78(d)(2):
Any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under ยง1.1023.
For nonprovisional applications, this reference must be included in an application data sheet (ADS) as specified in 37 CFR 1.76(b)(5). The reference should also identify the relationship between the applications, stating whether it’s a continuation, divisional, or continuation-in-part.
For more information on continuation application, visit: continuation application.
For more information on patent procedure, visit: patent procedure.
For more information on prior-filed application, visit: prior-filed application.
MPEP 211 - Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) (4)
What is the ‘specific reference’ requirement for claiming benefit of a prior-filed application?
The ‘specific reference’ requirement is a crucial aspect of claiming the benefit of a prior-filed application. According to MPEP 211.01, To claim the benefit of a prior-filed application, the later-filed application must contain a specific reference to the prior-filed application.
This means that:
- The specific reference must be made in the first sentence(s) of the specification or in an application data sheet (ADS).
- It should include the relationship between the applications (e.g., continuation, divisional, or continuation-in-part).
- The prior application’s serial number and filing date must be provided.
For example: ‘This application is a continuation of Application No. 12/345,678, filed January 1, 2020.’
Failure to provide this specific reference can result in the loss of the benefit claim. For more details, refer to MPEP 211 and 37 CFR 1.78.
To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:
- The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
- The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
- The later-filed application must contain a specific reference to the prior-filed application
- The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78
Failure to timely submit the reference to the prior-filed application within the time periods specified in 37 CFR 1.78 is considered a waiver of any benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application. See 37 CFR 1.78(d)(3)(iii). The time periods are not extendable.
If the reference to the prior-filed application is submitted after the time period provided by 37 CFR 1.78, a petition and the petition fee under 37 CFR 1.17(m) would be required to accept the delayed claim. The petition must be accompanied by:
- The reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior-filed application
- The petition fee
- A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional
To claim the benefit of a prior-filed application, you must include a specific reference to the prior-filed application in your current application. The method of including this reference depends on when your application was filed:
- For applications filed before September 16, 2012: Include the reference in the first sentence(s) of the specification following the title or in an application data sheet (ADS) compliant with pre-AIA 37 CFR 1.76.
- For applications filed on or after September 16, 2012: Include the reference in an ADS compliant with 37 CFR 1.76.
The MPEP states: If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78.
(MPEP ยง 211)
For more information on ADS, visit: ADS.
For more information on prior-filed application, visit: prior-filed application.
For more information on specific reference, visit: specific reference.
MPEP 217-Incorporation by Reference Under 37 CFR 1.57(b) (1)
To incorporate material from a prior-filed application under 37 CFR 1.57(b), several requirements must be met:
- The inadvertently omitted portion must be completely contained in the prior-filed application.
- A copy of the prior-filed application must be submitted (except for applications filed under 35 U.S.C. 111).
- If the prior-filed application is in a non-English language, an English language translation must be submitted.
- The applicant must identify where the inadvertently omitted portion can be found in the prior-filed application.
The MPEP states that an amendment may not comply with 37 CFR 1.57(b) if any of these conditions are not met. For example, it notes that non-compliance may occur if the inadvertently omitted portion is not completely contained in the prior-filed application
or if applicant did not identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application
.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on incorporation by reference, visit: incorporation by reference.
For more information on patent application requirements, visit: patent application requirements.
For more information on prior-filed application, visit: prior-filed application.
Patent Law (17)
New matter can have a significant impact on benefit claims in patent applications. The introduction of new matter in a later-filed application can result in the loss of the benefit claim to the prior-filed application. According to MPEP 211.05:
‘New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).’
This means that if a later-filed application includes new matter not disclosed in the prior-filed application, it cannot claim the benefit of the earlier filing date for that new matter. The new matter will only be entitled to the filing date of the later-filed application. It’s crucial for applicants to ensure that all claimed subject matter is fully supported by the prior-filed application to maintain the benefit of the earlier filing date.
To learn more:
What is the impact of a terminal disclaimer on claiming benefit of a prior-filed application?
A terminal disclaimer can affect the ability to claim benefit of a prior-filed application. According to MPEP 211.01(b):
Any nonprovisional application claiming the benefit of one or more prior-filed copending nonprovisional applications or international applications designating the United States must include a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number) or international application number and international filing date and indicating the relationship of the applications.
However, if a terminal disclaimer has been filed in the prior application, it may limit the ability to claim benefit. The MPEP states:
If the prior application has been published, the validity of the patent may be affected if the continuing application is not filed within one year of the publication date of the prior-filed application. See MPEP ยง 211.05 for more information on the effects of publication of patent applications.
It’s crucial to consider the implications of terminal disclaimers when claiming benefit, as they can affect patent term and validity.
To learn more:
What is the ‘specific reference’ requirement for claiming benefit of a prior-filed application?
The ‘specific reference’ requirement is a crucial aspect of claiming the benefit of a prior-filed application. According to MPEP 211.01, To claim the benefit of a prior-filed application, the later-filed application must contain a specific reference to the prior-filed application.
This means that:
- The specific reference must be made in the first sentence(s) of the specification or in an application data sheet (ADS).
- It should include the relationship between the applications (e.g., continuation, divisional, or continuation-in-part).
- The prior application’s serial number and filing date must be provided.
For example: ‘This application is a continuation of Application No. 12/345,678, filed January 1, 2020.’
Failure to provide this specific reference can result in the loss of the benefit claim. For more details, refer to MPEP 211 and 37 CFR 1.78.
If a prior-filed application lacks adequate written description for a claimed invention, the following consequences may occur:
- The claim in the later-filed application will not be entitled to the benefit of the filing date of the prior-filed application for that invention.
- The effective filing date for the claimed invention will be the filing date of the later-filed application.
- This may impact the patent’s validity if intervening prior art exists between the filing dates of the prior-filed and later-filed applications.
As stated in MPEP 211.05:
To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or earlier-filed nonprovisional application or provisional application for which benefit is claimed); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement.
This emphasizes the importance of ensuring that the prior-filed application contains a complete and detailed disclosure of the claimed invention.
To learn more:
What happens if a prior-filed application is abandoned?
If a prior-filed application is abandoned, it may still be used to claim the benefit of priority for a later-filed application, provided certain conditions are met. According to MPEP 211.01:
‘An abandoned application may be used as a prior application for purposes of claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) in a later-filed application when the abandoned application discloses the invention adequately and completely.’
However, it’s important to note that the abandoned application must still meet all the requirements for claiming benefit, including:
- Adequate disclosure of the invention
- Proper copendency (if applicable)
- Specific reference to the prior application in the later-filed application
If these conditions are met, the abandoned status of the prior application does not prevent it from serving as a basis for claiming benefit in a later application.
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To incorporate material from a prior-filed application under 37 CFR 1.57(b), several requirements must be met:
- The inadvertently omitted portion must be completely contained in the prior-filed application.
- A copy of the prior-filed application must be submitted (except for applications filed under 35 U.S.C. 111).
- If the prior-filed application is in a non-English language, an English language translation must be submitted.
- The applicant must identify where the inadvertently omitted portion can be found in the prior-filed application.
The MPEP states that an amendment may not comply with 37 CFR 1.57(b) if any of these conditions are not met. For example, it notes that non-compliance may occur if the inadvertently omitted portion is not completely contained in the prior-filed application
or if applicant did not identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application
.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on incorporation by reference, visit: incorporation by reference.
For more information on patent application requirements, visit: patent application requirements.
For more information on prior-filed application, visit: prior-filed application.
To claim the benefit of a prior-filed application in a continuation-in-part (CIP), several requirements must be met as outlined in MPEP 201.08 and 35 U.S.C. 120:
- The CIP must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
- The CIP must contain or be amended to contain a specific reference to the earlier filed application.
- For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet.
- The CIP must have at least one common inventor with the prior-filed application.
Additionally, the MPEP notes:
“The continuation-in-part application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).”
It’s important to note that the USPTO does not typically scrutinize whether the earlier application fully supports the CIP’s claims unless this becomes relevant in a proceeding before the Office.
For more information on patent procedure, visit: patent procedure.
For more information on prior-filed application, visit: prior-filed application.
To claim the benefit of a prior-filed application in a continuation or continuation-in-part application, several requirements must be met:
1. The application must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
2. The application must contain or be amended to contain a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be in an application data sheet.
3. The application must have at least one common inventor with the prior application.
4. The application must comply with the requirements of 35 U.S.C. 120 and 37 CFR 1.78.
As stated in the MPEP: “An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.”
To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:
- The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
- The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
- The later-filed application must contain a specific reference to the prior-filed application
- The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78
Failure to timely submit the reference to the prior-filed application within the time periods specified in 37 CFR 1.78 is considered a waiver of any benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application. See 37 CFR 1.78(d)(3)(iii). The time periods are not extendable.
If the reference to the prior-filed application is submitted after the time period provided by 37 CFR 1.78, a petition and the petition fee under 37 CFR 1.17(m) would be required to accept the delayed claim. The petition must be accompanied by:
- The reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior-filed application
- The petition fee
- A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional
A later-filed application for patent in the United States may claim the benefit of, or priority to, a prior application under certain conditions. These conditions are outlined in various U.S. statutes and regulations:
- For domestic benefit claims: 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78
- For foreign priority claims: 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55
The specific requirements and time frames may vary based on the filing date of the later-filed nonprovisional application and the type of priority or benefit claim being made.
For more information on domestic benefit, visit: domestic benefit.
For more information on foreign priority, visit: foreign priority.
For more information on prior-filed application, visit: prior-filed application.
The USPTO determines if a prior-filed application provides adequate support for a later-filed application by examining whether the prior-filed application discloses the invention claimed in the later-filed application in sufficient detail. According to MPEP 211.05:
‘To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, except for the best mode requirement.’
This means that the prior-filed application must provide a written description of the invention, enable one skilled in the art to make and use the invention, and disclose the best mode (if invented prior to the AIA) for carrying out the invention.
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How does the AIA FITF system affect the prior-filed application requirements?
The America Invents Act (AIA) First Inventor to File (FITF) system has introduced some changes to the prior-filed application requirements. The MPEP explains:
“AIA 35 U.S.C. 120, 121, 365(c), and 386(c) require that the prior-filed application to which benefit is claimed must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor.”
Key points to note:
- The prior application must name at least one common inventor with the later-filed application.
- This requirement applies to applications filed on or after September 16, 2012.
- For applications filed before this date, the prior application must name the inventor(s) named in the later-filed application.
These changes ensure that the benefit claim aligns with the FITF system’s focus on the first inventor to file. For more information, refer to MPEP 211.01 and USPTO AIA FITF Guidance.
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How do I correct the filing date of a prior-filed application in a benefit claim?
To correct the filing date of a prior-filed application in a benefit claim, you need to follow specific procedures outlined in MPEP 211.02(a). The MPEP states:
“If the prior application is a provisional application, and the filing date of the provisional application in the benefit claim is incorrect, applicant should file a petition under 37 CFR 1.78 to correct the benefit claim. A petition under 37 CFR 1.78 and the petition fee are required to correct the benefit claim because the correction is considered a delayed claim as per 37 CFR 1.78.”
For non-provisional applications, a similar process applies. You must file a petition under 37 CFR 1.78 along with the required fee to correct the filing date in the benefit claim.
To learn more:
To claim the benefit of a prior-filed application, you must include a specific reference to the prior-filed application in your current application. The method of including this reference depends on when your application was filed:
- For applications filed before September 16, 2012: Include the reference in the first sentence(s) of the specification following the title or in an application data sheet (ADS) compliant with pre-AIA 37 CFR 1.76.
- For applications filed on or after September 16, 2012: Include the reference in an ADS compliant with 37 CFR 1.76.
The MPEP states: If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78.
(MPEP ยง 211)
For more information on ADS, visit: ADS.
For more information on prior-filed application, visit: prior-filed application.
For more information on specific reference, visit: specific reference.
To claim the benefit of a prior-filed application in a continuation application, you must include a reference to the prior-filed application in the new application. According to 37 CFR 1.78(d)(2):
Any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under ยง1.1023.
For nonprovisional applications, this reference must be included in an application data sheet (ADS) as specified in 37 CFR 1.76(b)(5). The reference should also identify the relationship between the applications, stating whether it’s a continuation, divisional, or continuation-in-part.
For more information on continuation application, visit: continuation application.
For more information on patent procedure, visit: patent procedure.
For more information on prior-filed application, visit: prior-filed application.
Can a provisional application be used as a prior-filed application for benefit claims?
Yes, a provisional application can be used as a prior-filed application for benefit claims in certain circumstances. According to MPEP 211.01:
‘The prior application may be a provisional application under 35 U.S.C. 111(b) or a nonprovisional application under 35 U.S.C. 111(a).’
However, there are specific requirements and limitations when claiming the benefit of a provisional application:
- The nonprovisional application must be filed within 12 months of the provisional application’s filing date (or 14 months with a grantable petition under 37 CFR 1.78(b)).
- The provisional application must adequately support and enable the subject matter of the claims in the nonprovisional application.
- The specific reference to the provisional application must be included in an application data sheet (ADS) or the first sentence of the specification.
It’s important to note that while a nonprovisional application can claim the benefit of a provisional application, a provisional application cannot claim the benefit of or priority to any other application.
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Patent Procedure (17)
New matter can have a significant impact on benefit claims in patent applications. The introduction of new matter in a later-filed application can result in the loss of the benefit claim to the prior-filed application. According to MPEP 211.05:
‘New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).’
This means that if a later-filed application includes new matter not disclosed in the prior-filed application, it cannot claim the benefit of the earlier filing date for that new matter. The new matter will only be entitled to the filing date of the later-filed application. It’s crucial for applicants to ensure that all claimed subject matter is fully supported by the prior-filed application to maintain the benefit of the earlier filing date.
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What is the impact of a terminal disclaimer on claiming benefit of a prior-filed application?
A terminal disclaimer can affect the ability to claim benefit of a prior-filed application. According to MPEP 211.01(b):
Any nonprovisional application claiming the benefit of one or more prior-filed copending nonprovisional applications or international applications designating the United States must include a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number) or international application number and international filing date and indicating the relationship of the applications.
However, if a terminal disclaimer has been filed in the prior application, it may limit the ability to claim benefit. The MPEP states:
If the prior application has been published, the validity of the patent may be affected if the continuing application is not filed within one year of the publication date of the prior-filed application. See MPEP ยง 211.05 for more information on the effects of publication of patent applications.
It’s crucial to consider the implications of terminal disclaimers when claiming benefit, as they can affect patent term and validity.
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What is the ‘specific reference’ requirement for claiming benefit of a prior-filed application?
The ‘specific reference’ requirement is a crucial aspect of claiming the benefit of a prior-filed application. According to MPEP 211.01, To claim the benefit of a prior-filed application, the later-filed application must contain a specific reference to the prior-filed application.
This means that:
- The specific reference must be made in the first sentence(s) of the specification or in an application data sheet (ADS).
- It should include the relationship between the applications (e.g., continuation, divisional, or continuation-in-part).
- The prior application’s serial number and filing date must be provided.
For example: ‘This application is a continuation of Application No. 12/345,678, filed January 1, 2020.’
Failure to provide this specific reference can result in the loss of the benefit claim. For more details, refer to MPEP 211 and 37 CFR 1.78.
If a prior-filed application lacks adequate written description for a claimed invention, the following consequences may occur:
- The claim in the later-filed application will not be entitled to the benefit of the filing date of the prior-filed application for that invention.
- The effective filing date for the claimed invention will be the filing date of the later-filed application.
- This may impact the patent’s validity if intervening prior art exists between the filing dates of the prior-filed and later-filed applications.
As stated in MPEP 211.05:
To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or earlier-filed nonprovisional application or provisional application for which benefit is claimed); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement.
This emphasizes the importance of ensuring that the prior-filed application contains a complete and detailed disclosure of the claimed invention.
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What happens if a prior-filed application is abandoned?
If a prior-filed application is abandoned, it may still be used to claim the benefit of priority for a later-filed application, provided certain conditions are met. According to MPEP 211.01:
‘An abandoned application may be used as a prior application for purposes of claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) in a later-filed application when the abandoned application discloses the invention adequately and completely.’
However, it’s important to note that the abandoned application must still meet all the requirements for claiming benefit, including:
- Adequate disclosure of the invention
- Proper copendency (if applicable)
- Specific reference to the prior application in the later-filed application
If these conditions are met, the abandoned status of the prior application does not prevent it from serving as a basis for claiming benefit in a later application.
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To incorporate material from a prior-filed application under 37 CFR 1.57(b), several requirements must be met:
- The inadvertently omitted portion must be completely contained in the prior-filed application.
- A copy of the prior-filed application must be submitted (except for applications filed under 35 U.S.C. 111).
- If the prior-filed application is in a non-English language, an English language translation must be submitted.
- The applicant must identify where the inadvertently omitted portion can be found in the prior-filed application.
The MPEP states that an amendment may not comply with 37 CFR 1.57(b) if any of these conditions are not met. For example, it notes that non-compliance may occur if the inadvertently omitted portion is not completely contained in the prior-filed application
or if applicant did not identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application
.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on incorporation by reference, visit: incorporation by reference.
For more information on patent application requirements, visit: patent application requirements.
For more information on prior-filed application, visit: prior-filed application.
To claim the benefit of a prior-filed application in a continuation-in-part (CIP), several requirements must be met as outlined in MPEP 201.08 and 35 U.S.C. 120:
- The CIP must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
- The CIP must contain or be amended to contain a specific reference to the earlier filed application.
- For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet.
- The CIP must have at least one common inventor with the prior-filed application.
Additionally, the MPEP notes:
“The continuation-in-part application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).”
It’s important to note that the USPTO does not typically scrutinize whether the earlier application fully supports the CIP’s claims unless this becomes relevant in a proceeding before the Office.
For more information on patent procedure, visit: patent procedure.
For more information on prior-filed application, visit: prior-filed application.
To claim the benefit of a prior-filed application in a continuation or continuation-in-part application, several requirements must be met:
1. The application must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
2. The application must contain or be amended to contain a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be in an application data sheet.
3. The application must have at least one common inventor with the prior application.
4. The application must comply with the requirements of 35 U.S.C. 120 and 37 CFR 1.78.
As stated in the MPEP: “An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.”
To claim the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e), a later-filed application must meet several requirements:
- The prior-filed application must name the inventor or at least one joint inventor named in the later-filed application and must be entitled to a filing date
- The prior-filed application must meet disclosure requirements under 35 U.S.C. 112(a) to support the claims in the later-filed application, except for the best mode requirement
- The later-filed application must contain a specific reference to the prior-filed application
- The reference to the prior application must be submitted within the time periods set forth in 37 CFR 1.78
Failure to timely submit the reference to the prior-filed application within the time periods specified in 37 CFR 1.78 is considered a waiver of any benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application. See 37 CFR 1.78(d)(3)(iii). The time periods are not extendable.
If the reference to the prior-filed application is submitted after the time period provided by 37 CFR 1.78, a petition and the petition fee under 37 CFR 1.17(m) would be required to accept the delayed claim. The petition must be accompanied by:
- The reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior-filed application
- The petition fee
- A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional
A later-filed application for patent in the United States may claim the benefit of, or priority to, a prior application under certain conditions. These conditions are outlined in various U.S. statutes and regulations:
- For domestic benefit claims: 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78
- For foreign priority claims: 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55
The specific requirements and time frames may vary based on the filing date of the later-filed nonprovisional application and the type of priority or benefit claim being made.
For more information on domestic benefit, visit: domestic benefit.
For more information on foreign priority, visit: foreign priority.
For more information on prior-filed application, visit: prior-filed application.
The USPTO determines if a prior-filed application provides adequate support for a later-filed application by examining whether the prior-filed application discloses the invention claimed in the later-filed application in sufficient detail. According to MPEP 211.05:
‘To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, except for the best mode requirement.’
This means that the prior-filed application must provide a written description of the invention, enable one skilled in the art to make and use the invention, and disclose the best mode (if invented prior to the AIA) for carrying out the invention.
To learn more:
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How does the AIA FITF system affect the prior-filed application requirements?
The America Invents Act (AIA) First Inventor to File (FITF) system has introduced some changes to the prior-filed application requirements. The MPEP explains:
“AIA 35 U.S.C. 120, 121, 365(c), and 386(c) require that the prior-filed application to which benefit is claimed must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor.”
Key points to note:
- The prior application must name at least one common inventor with the later-filed application.
- This requirement applies to applications filed on or after September 16, 2012.
- For applications filed before this date, the prior application must name the inventor(s) named in the later-filed application.
These changes ensure that the benefit claim aligns with the FITF system’s focus on the first inventor to file. For more information, refer to MPEP 211.01 and USPTO AIA FITF Guidance.
To learn more:
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How do I correct the filing date of a prior-filed application in a benefit claim?
To correct the filing date of a prior-filed application in a benefit claim, you need to follow specific procedures outlined in MPEP 211.02(a). The MPEP states:
“If the prior application is a provisional application, and the filing date of the provisional application in the benefit claim is incorrect, applicant should file a petition under 37 CFR 1.78 to correct the benefit claim. A petition under 37 CFR 1.78 and the petition fee are required to correct the benefit claim because the correction is considered a delayed claim as per 37 CFR 1.78.”
For non-provisional applications, a similar process applies. You must file a petition under 37 CFR 1.78 along with the required fee to correct the filing date in the benefit claim.
To learn more:
To claim the benefit of a prior-filed application, you must include a specific reference to the prior-filed application in your current application. The method of including this reference depends on when your application was filed:
- For applications filed before September 16, 2012: Include the reference in the first sentence(s) of the specification following the title or in an application data sheet (ADS) compliant with pre-AIA 37 CFR 1.76.
- For applications filed on or after September 16, 2012: Include the reference in an ADS compliant with 37 CFR 1.76.
The MPEP states: If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78.
(MPEP ยง 211)
For more information on ADS, visit: ADS.
For more information on prior-filed application, visit: prior-filed application.
For more information on specific reference, visit: specific reference.
To claim the benefit of a prior-filed application in a continuation application, you must include a reference to the prior-filed application in the new application. According to 37 CFR 1.78(d)(2):
Any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under ยง1.1023.
For nonprovisional applications, this reference must be included in an application data sheet (ADS) as specified in 37 CFR 1.76(b)(5). The reference should also identify the relationship between the applications, stating whether it’s a continuation, divisional, or continuation-in-part.
For more information on continuation application, visit: continuation application.
For more information on patent procedure, visit: patent procedure.
For more information on prior-filed application, visit: prior-filed application.
Can a provisional application be used as a prior-filed application for benefit claims?
Yes, a provisional application can be used as a prior-filed application for benefit claims in certain circumstances. According to MPEP 211.01:
‘The prior application may be a provisional application under 35 U.S.C. 111(b) or a nonprovisional application under 35 U.S.C. 111(a).’
However, there are specific requirements and limitations when claiming the benefit of a provisional application:
- The nonprovisional application must be filed within 12 months of the provisional application’s filing date (or 14 months with a grantable petition under 37 CFR 1.78(b)).
- The provisional application must adequately support and enable the subject matter of the claims in the nonprovisional application.
- The specific reference to the provisional application must be included in an application data sheet (ADS) or the first sentence of the specification.
It’s important to note that while a nonprovisional application can claim the benefit of a provisional application, a provisional application cannot claim the benefit of or priority to any other application.
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