Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 200 – Types and Status of Application; Benefit and Priority (3)
What happens if I miss the 12-month deadline for filing a nonprovisional application after a provisional application?
If you miss the 12-month deadline for filing a nonprovisional application claiming the benefit of a provisional application, you lose the right to claim that benefit. The MPEP states: A provisional application is not entitled to the right of priority under 35 U.S.C. 119(e) unless the full fee set forth in 37 CFR 1.16(d) has been paid and the basic filing fee set forth in 37 CFR 1.16(a) has been paid on or before the date the provisional application was filed.
(MPEP 201.04) Additionally, you cannot extend this 12-month period. However, you may still file a nonprovisional application; it just won’t have the earlier priority date of the provisional application.
To learn more:
To learn more:
The main differences between claiming benefit under 35 U.S.C. 119(e) and 35 U.S.C. 120 are:
- 35 U.S.C. 119(e):
- Used for claiming benefit of a provisional application
- Does not require specifying the relationship between applications
- Example: “This application claims the benefit of U.S. Provisional Application No. 61/123,456, filed January 1, 2020.”
- 35 U.S.C. 120:
- Used for claiming benefit of a nonprovisional application
- Requires specifying the relationship (continuation, divisional, or continuation-in-part)
- Example: “This application is a continuation of U.S. Application No. 12/345,678, filed January 1, 2020.”
MPEP 211.02 advises: “Although 35 U.S.C. 120 does not preclude a benefit claim to a provisional application, it is not recommended that applicants claim the benefit to a provisional application under 35 U.S.C. 120 since such a claim could have the effect of reducing the patent term, as the term of a patent issuing from such an application may be measured from the filing date of the provisional application pursuant to 35 U.S.C. 154(a)(2).”
It’s important to use the correct statute when making benefit claims to ensure proper recognition and avoid potential issues with patent term calculations.
To learn more:
No, a provisional patent application cannot claim priority to or benefit from other applications. The MPEP 201.04 clearly states:
“A provisional application is not entitled to the right of priority under 35 U.S.C. 119, 365(a), or 386(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) or § 1.78 of any other application.”
This means that a provisional application stands alone and cannot claim the filing date of any earlier U.S. or foreign application. However, it’s important to note that while a provisional application cannot claim priority, it can serve as a priority document for later-filed nonprovisional or foreign applications, provided they are filed within 12 months of the provisional application’s filing date.
To learn more:
Patent Law (3)
What happens if I miss the 12-month deadline for filing a nonprovisional application after a provisional application?
If you miss the 12-month deadline for filing a nonprovisional application claiming the benefit of a provisional application, you lose the right to claim that benefit. The MPEP states: A provisional application is not entitled to the right of priority under 35 U.S.C. 119(e) unless the full fee set forth in 37 CFR 1.16(d) has been paid and the basic filing fee set forth in 37 CFR 1.16(a) has been paid on or before the date the provisional application was filed.
(MPEP 201.04) Additionally, you cannot extend this 12-month period. However, you may still file a nonprovisional application; it just won’t have the earlier priority date of the provisional application.
To learn more:
To learn more:
The main differences between claiming benefit under 35 U.S.C. 119(e) and 35 U.S.C. 120 are:
- 35 U.S.C. 119(e):
- Used for claiming benefit of a provisional application
- Does not require specifying the relationship between applications
- Example: “This application claims the benefit of U.S. Provisional Application No. 61/123,456, filed January 1, 2020.”
- 35 U.S.C. 120:
- Used for claiming benefit of a nonprovisional application
- Requires specifying the relationship (continuation, divisional, or continuation-in-part)
- Example: “This application is a continuation of U.S. Application No. 12/345,678, filed January 1, 2020.”
MPEP 211.02 advises: “Although 35 U.S.C. 120 does not preclude a benefit claim to a provisional application, it is not recommended that applicants claim the benefit to a provisional application under 35 U.S.C. 120 since such a claim could have the effect of reducing the patent term, as the term of a patent issuing from such an application may be measured from the filing date of the provisional application pursuant to 35 U.S.C. 154(a)(2).”
It’s important to use the correct statute when making benefit claims to ensure proper recognition and avoid potential issues with patent term calculations.
To learn more:
No, a provisional patent application cannot claim priority to or benefit from other applications. The MPEP 201.04 clearly states:
“A provisional application is not entitled to the right of priority under 35 U.S.C. 119, 365(a), or 386(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) or § 1.78 of any other application.”
This means that a provisional application stands alone and cannot claim the filing date of any earlier U.S. or foreign application. However, it’s important to note that while a provisional application cannot claim priority, it can serve as a priority document for later-filed nonprovisional or foreign applications, provided they are filed within 12 months of the provisional application’s filing date.
To learn more:
Patent Procedure (3)
What happens if I miss the 12-month deadline for filing a nonprovisional application after a provisional application?
If you miss the 12-month deadline for filing a nonprovisional application claiming the benefit of a provisional application, you lose the right to claim that benefit. The MPEP states: A provisional application is not entitled to the right of priority under 35 U.S.C. 119(e) unless the full fee set forth in 37 CFR 1.16(d) has been paid and the basic filing fee set forth in 37 CFR 1.16(a) has been paid on or before the date the provisional application was filed.
(MPEP 201.04) Additionally, you cannot extend this 12-month period. However, you may still file a nonprovisional application; it just won’t have the earlier priority date of the provisional application.
To learn more:
To learn more:
The main differences between claiming benefit under 35 U.S.C. 119(e) and 35 U.S.C. 120 are:
- 35 U.S.C. 119(e):
- Used for claiming benefit of a provisional application
- Does not require specifying the relationship between applications
- Example: “This application claims the benefit of U.S. Provisional Application No. 61/123,456, filed January 1, 2020.”
- 35 U.S.C. 120:
- Used for claiming benefit of a nonprovisional application
- Requires specifying the relationship (continuation, divisional, or continuation-in-part)
- Example: “This application is a continuation of U.S. Application No. 12/345,678, filed January 1, 2020.”
MPEP 211.02 advises: “Although 35 U.S.C. 120 does not preclude a benefit claim to a provisional application, it is not recommended that applicants claim the benefit to a provisional application under 35 U.S.C. 120 since such a claim could have the effect of reducing the patent term, as the term of a patent issuing from such an application may be measured from the filing date of the provisional application pursuant to 35 U.S.C. 154(a)(2).”
It’s important to use the correct statute when making benefit claims to ensure proper recognition and avoid potential issues with patent term calculations.
To learn more:
No, a provisional patent application cannot claim priority to or benefit from other applications. The MPEP 201.04 clearly states:
“A provisional application is not entitled to the right of priority under 35 U.S.C. 119, 365(a), or 386(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) or § 1.78 of any other application.”
This means that a provisional application stands alone and cannot claim the filing date of any earlier U.S. or foreign application. However, it’s important to note that while a provisional application cannot claim priority, it can serve as a priority document for later-filed nonprovisional or foreign applications, provided they are filed within 12 months of the provisional application’s filing date.
To learn more: