Patent Law FAQ

The timing for submitting a specific reference to a prior-filed application depends on the type of application:

• For utility or plant applications filed under 35 U.S.C. 111(a): The specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
• For national stage applications under 35 U.S.C. 371: The specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application.

It’s important to note that This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s).

For more information on filing deadline, visit: filing deadline.

For more information on specific reference, visit: specific reference.

For a Continued Prosecution Application (CPA), the specific reference requirement under 35 U.S.C. 120 is satisfied by the CPA request itself. According to MPEP § 201.06(d):

“As set forth in 37 CFR 1.53(d)(7), 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.”

This means that when you file a CPA request, it automatically serves as the required reference to the prior application under 35 U.S.C. 120. No additional amendments or references in the specification are necessary to establish this connection.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

For more information on specific reference, visit: specific reference.

For a Continued Prosecution Application (CPA), the specific reference required by 35 U.S.C. 120 is the CPA request itself. This is explicitly stated in 37 CFR 1.53(d)(7).

According to MPEP ¶ 2.34:

“As set forth in 37 CFR 1.53(d)(7), 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.”

This means that when you file a CPA, the request itself serves as the necessary reference to the prior application, eliminating the need for additional amendments to the specification to establish continuity.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

For more information on specific reference, visit: specific reference.

MPEP ¶ 2.15 provides guidance on how to properly claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c). It outlines the requirements for including a specific reference to the prior-filed application and the timeframes within which this reference must be submitted.

The paragraph 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. This means that applicants must explicitly reference the prior application to claim its benefits.

For more information on specific reference, visit: specific reference.

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.

The method for making a specific reference to a prior-filed application depends on when the application was filed:

• For applications filed before September 16, 2012: The specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS) in compliance with pre-AIA 37 CFR 1.76.
• For applications filed on or after September 16, 2012: The specific reference must be included in an ADS in compliance with 37 CFR 1.76.

Additionally, for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

It’s important to note that for continued prosecution applications (CPAs) filed under 37 CFR 1.53(d) (design applications under 35 U.S.C. chapter 16 only), a specific reference in the specification or ADS is not required and may not be made. For these applications, The specific reference requirement of 35 U.S.C. 120 is met by the transmittal request for the CPA which is considered to be part of the CPA.

For more information on application data sheet, visit: application data sheet.

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

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

For more information on specific reference, visit: specific reference.

The requirement for specific reference to prior applications has undergone changes due to recent legislation:

1. For applications filed before September 16, 2012: The specific reference to the prior application must be in the first sentence(s) of the specification or in an application data sheet.
2. For applications filed on or after September 16, 2012: The specific reference to the prior application must be in the application data sheet (ADS).

As stated in the MPEP: Thus for all applications filed on or after September 16, 2012, the specific reference to the prior application must be in the application data sheet; for applications filed prior to September 16, 2012, the specific reference to the prior application must be in an application data sheet or in the first sentence(s) of the specification. (MPEP 210)

This change was implemented as part of the inventor’s oath or declaration provisions of the Leahy-Smith America Invents Act, which became effective on September 16, 2012. The Office revised 37 CFR 1.78 to reflect these changes.

For more information on ADS, visit: ADS.

For more information on application data sheet, visit: application data sheet.

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

For more information on specific reference, visit: specific reference.

To properly claim the benefit of a prior application, you must include a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be included in an application data sheet (ADS). For applications filed before September 16, 2012, the reference must be in an ADS and/or in the first sentence(s) of the specification following the title.

The MPEP 211.02 states: Both 35 U.S.C. 119(e) and 120 include the requirement that the later-filed application must contain a specific reference to the prior application.

For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

For more information on ADS, visit: ADS.

For more information on divisional, visit: divisional.

For more information on specific reference, visit: specific reference.

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 § 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.

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

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

For a Continued Prosecution Application (CPA), the specific reference requirement under 35 U.S.C. 120 is satisfied by the CPA request itself. According to MPEP § 201.06(d):

“As set forth in 37 CFR 1.53(d)(7), 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.”

This means that when you file a CPA request, it automatically serves as the required reference to the prior application under 35 U.S.C. 120. No additional amendments or references in the specification are necessary to establish this connection.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

For more information on specific reference, visit: specific reference.

For a Continued Prosecution Application (CPA), the specific reference required by 35 U.S.C. 120 is the CPA request itself. This is explicitly stated in 37 CFR 1.53(d)(7).

According to MPEP ¶ 2.34:

“As set forth in 37 CFR 1.53(d)(7), 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.”

This means that when you file a CPA, the request itself serves as the necessary reference to the prior application, eliminating the need for additional amendments to the specification to establish continuity.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

For more information on specific reference, visit: specific reference.

The timing for submitting a specific reference to a prior-filed application depends on the type of application:

• For utility or plant applications filed under 35 U.S.C. 111(a): The specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
• For national stage applications under 35 U.S.C. 371: The specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application.

It’s important to note that This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s).

For more information on filing deadline, visit: filing deadline.

For more information on specific reference, visit: specific reference.

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

MPEP ¶ 2.15 provides guidance on how to properly claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c). It outlines the requirements for including a specific reference to the prior-filed application and the timeframes within which this reference must be submitted.

The paragraph 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. This means that applicants must explicitly reference the prior application to claim its benefits.

For more information on specific reference, visit: specific reference.

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

The method for making a specific reference to a prior-filed application depends on when the application was filed:

• For applications filed before September 16, 2012: The specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS) in compliance with pre-AIA 37 CFR 1.76.
• For applications filed on or after September 16, 2012: The specific reference must be included in an ADS in compliance with 37 CFR 1.76.

Additionally, for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

It’s important to note that for continued prosecution applications (CPAs) filed under 37 CFR 1.53(d) (design applications under 35 U.S.C. chapter 16 only), a specific reference in the specification or ADS is not required and may not be made. For these applications, The specific reference requirement of 35 U.S.C. 120 is met by the transmittal request for the CPA which is considered to be part of the CPA.

For more information on application data sheet, visit: application data sheet.

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

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

For more information on specific reference, visit: specific reference.

To properly claim the benefit of a prior application, you must include a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be included in an application data sheet (ADS). For applications filed before September 16, 2012, the reference must be in an ADS and/or in the first sentence(s) of the specification following the title.

The MPEP 211.02 states: Both 35 U.S.C. 119(e) and 120 include the requirement that the later-filed application must contain a specific reference to the prior application.

For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

For more information on ADS, visit: ADS.

For more information on divisional, visit: divisional.

For more information on specific reference, visit: specific reference.

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 § 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.

The timing for submitting a specific reference to a prior-filed application depends on the type of application:

• For utility or plant applications filed under 35 U.S.C. 111(a): The specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
• For national stage applications under 35 U.S.C. 371: The specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application.

It’s important to note that This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s).

For more information on filing deadline, visit: filing deadline.

For more information on specific reference, visit: specific reference.

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

For a Continued Prosecution Application (CPA), the specific reference requirement under 35 U.S.C. 120 is satisfied by the CPA request itself. According to MPEP § 201.06(d):

“As set forth in 37 CFR 1.53(d)(7), 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.”

This means that when you file a CPA request, it automatically serves as the required reference to the prior application under 35 U.S.C. 120. No additional amendments or references in the specification are necessary to establish this connection.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

For more information on specific reference, visit: specific reference.

For a Continued Prosecution Application (CPA), the specific reference required by 35 U.S.C. 120 is the CPA request itself. This is explicitly stated in 37 CFR 1.53(d)(7).

According to MPEP ¶ 2.34:

“As set forth in 37 CFR 1.53(d)(7), 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.”

This means that when you file a CPA, the request itself serves as the necessary reference to the prior application, eliminating the need for additional amendments to the specification to establish continuity.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

For more information on specific reference, visit: specific reference.

MPEP ¶ 2.15 provides guidance on how to properly claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c). It outlines the requirements for including a specific reference to the prior-filed application and the timeframes within which this reference must be submitted.

The paragraph 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. This means that applicants must explicitly reference the prior application to claim its benefits.

For more information on specific reference, visit: specific reference.

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

The method for making a specific reference to a prior-filed application depends on when the application was filed:

• For applications filed before September 16, 2012: The specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS) in compliance with pre-AIA 37 CFR 1.76.
• For applications filed on or after September 16, 2012: The specific reference must be included in an ADS in compliance with 37 CFR 1.76.

Additionally, for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

It’s important to note that for continued prosecution applications (CPAs) filed under 37 CFR 1.53(d) (design applications under 35 U.S.C. chapter 16 only), a specific reference in the specification or ADS is not required and may not be made. For these applications, The specific reference requirement of 35 U.S.C. 120 is met by the transmittal request for the CPA which is considered to be part of the CPA.

For more information on application data sheet, visit: application data sheet.

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

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

For more information on specific reference, visit: specific reference.

The requirement for specific reference to prior applications has undergone changes due to recent legislation:

1. For applications filed before September 16, 2012: The specific reference to the prior application must be in the first sentence(s) of the specification or in an application data sheet.
2. For applications filed on or after September 16, 2012: The specific reference to the prior application must be in the application data sheet (ADS).

As stated in the MPEP: Thus for all applications filed on or after September 16, 2012, the specific reference to the prior application must be in the application data sheet; for applications filed prior to September 16, 2012, the specific reference to the prior application must be in an application data sheet or in the first sentence(s) of the specification. (MPEP 210)

This change was implemented as part of the inventor’s oath or declaration provisions of the Leahy-Smith America Invents Act, which became effective on September 16, 2012. The Office revised 37 CFR 1.78 to reflect these changes.

For more information on ADS, visit: ADS.

For more information on application data sheet, visit: application data sheet.

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

For more information on specific reference, visit: specific reference.

To properly claim the benefit of a prior application, you must include a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be included in an application data sheet (ADS). For applications filed before September 16, 2012, the reference must be in an ADS and/or in the first sentence(s) of the specification following the title.

The MPEP 211.02 states: Both 35 U.S.C. 119(e) and 120 include the requirement that the later-filed application must contain a specific reference to the prior application.

For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

For more information on ADS, visit: ADS.

For more information on divisional, visit: divisional.

For more information on specific reference, visit: specific reference.

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 § 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.

The timing for submitting a specific reference to a prior-filed application depends on the type of application:

• For utility or plant applications filed under 35 U.S.C. 111(a): The specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
• For national stage applications under 35 U.S.C. 371: The specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application.

It’s important to note that This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s).

For more information on filing deadline, visit: filing deadline.

For more information on specific reference, visit: specific reference.

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

For a Continued Prosecution Application (CPA), the specific reference requirement under 35 U.S.C. 120 is satisfied by the CPA request itself. According to MPEP § 201.06(d):

“As set forth in 37 CFR 1.53(d)(7), 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.”

This means that when you file a CPA request, it automatically serves as the required reference to the prior application under 35 U.S.C. 120. No additional amendments or references in the specification are necessary to establish this connection.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

For more information on specific reference, visit: specific reference.

For a Continued Prosecution Application (CPA), the specific reference required by 35 U.S.C. 120 is the CPA request itself. This is explicitly stated in 37 CFR 1.53(d)(7).

According to MPEP ¶ 2.34:

“As set forth in 37 CFR 1.53(d)(7), 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.”

This means that when you file a CPA, the request itself serves as the necessary reference to the prior application, eliminating the need for additional amendments to the specification to establish continuity.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

For more information on specific reference, visit: specific reference.

MPEP ¶ 2.15 provides guidance on how to properly claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c). It outlines the requirements for including a specific reference to the prior-filed application and the timeframes within which this reference must be submitted.

The paragraph 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. This means that applicants must explicitly reference the prior application to claim its benefits.

For more information on specific reference, visit: specific reference.

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

The method for making a specific reference to a prior-filed application depends on when the application was filed:

• For applications filed before September 16, 2012: The specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS) in compliance with pre-AIA 37 CFR 1.76.
• For applications filed on or after September 16, 2012: The specific reference must be included in an ADS in compliance with 37 CFR 1.76.

Additionally, for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

It’s important to note that for continued prosecution applications (CPAs) filed under 37 CFR 1.53(d) (design applications under 35 U.S.C. chapter 16 only), a specific reference in the specification or ADS is not required and may not be made. For these applications, The specific reference requirement of 35 U.S.C. 120 is met by the transmittal request for the CPA which is considered to be part of the CPA.

For more information on application data sheet, visit: application data sheet.

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

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

For more information on specific reference, visit: specific reference.

The requirement for specific reference to prior applications has undergone changes due to recent legislation:

1. For applications filed before September 16, 2012: The specific reference to the prior application must be in the first sentence(s) of the specification or in an application data sheet.
2. For applications filed on or after September 16, 2012: The specific reference to the prior application must be in the application data sheet (ADS).

As stated in the MPEP: Thus for all applications filed on or after September 16, 2012, the specific reference to the prior application must be in the application data sheet; for applications filed prior to September 16, 2012, the specific reference to the prior application must be in an application data sheet or in the first sentence(s) of the specification. (MPEP 210)

This change was implemented as part of the inventor’s oath or declaration provisions of the Leahy-Smith America Invents Act, which became effective on September 16, 2012. The Office revised 37 CFR 1.78 to reflect these changes.

For more information on ADS, visit: ADS.

For more information on application data sheet, visit: application data sheet.

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

For more information on specific reference, visit: specific reference.

To properly claim the benefit of a prior application, you must include a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be included in an application data sheet (ADS). For applications filed before September 16, 2012, the reference must be in an ADS and/or in the first sentence(s) of the specification following the title.

The MPEP 211.02 states: Both 35 U.S.C. 119(e) and 120 include the requirement that the later-filed application must contain a specific reference to the prior application.

For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

For more information on ADS, visit: ADS.

For more information on divisional, visit: divisional.

For more information on specific reference, visit: specific reference.

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 § 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.