Patent Law FAQ

Can a continuation-in-part (CIP) application claim benefit to a provisional application?

Yes, a continuation-in-part (CIP) application can claim benefit to a provisional application, but there are important considerations regarding the disclosure and priority dates. The MPEP provides guidance on this:

“An applicant may claim the benefit of the filing date of a provisional application in a subsequent nonprovisional application or international application designating the United States if the nonprovisional application or international application designating the United States is filed within 12 months from the filing date of the provisional application.”

However, it’s crucial to understand that:

• Only the subject matter that was disclosed in the provisional application will receive the benefit of the provisional filing date.
• New matter added in the CIP will have the filing date of the CIP application itself.
• The applicant must comply with the requirements of 35 U.S.C. 119(e) and 37 CFR 1.78.

For more details on claiming benefit of provisional applications, see MPEP 211.

To learn more:

• continuation-in-part application
• provisional application
• benefit claim
• priority date