What does copendency mean in patent applications?
Copendency refers to the requirement that two related patent applications must be pending at the same time for one to claim the benefit of the earlier filing date of the other. The MPEP states: Copendency between the current application and the prior application is required. This means that the later application must be filed before…
Read MoreWhat happens if copendency is not established between patent applications?
If copendency is not established between patent applications, the benefit claim to the prior-filed application becomes improper. The MPEP clearly states: Since the applications are not copending, the benefit claim to the prior-filed application is improper. Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency…
Read MoreWhich U.S. Code sections are relevant to claiming benefit of an earlier filing date?
The MPEP ¶ 2.11 mentions several U.S. Code sections relevant to claiming the benefit of an earlier filing date: This application is claiming the benefit of prior-filed application No.[1] under 35 U.S.C. 120, 121, 365(c), or 386(c). These sections cover different scenarios: 35 U.S.C. 120: Benefit of earlier filing date in the United States 35…
Read MoreDoes MPEP ¶ 2.11 apply to provisional applications?
No, MPEP ¶ 2.11 does not apply to benefit claims for provisional applications. The MPEP explicitly states: Do not use this form paragraph for benefit claims under 35 U.S.C. 119(e) to provisional applications. This means that the copendency requirements and procedures outlined in MPEP ¶ 2.11 are specifically for non-provisional applications claiming benefit under 35…
Read MoreWhat is the purpose of MPEP ¶ 2.15?
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…
Read MoreWhat action is required if a benefit claim is improper due to lack of copendency?
If a benefit claim is improper due to lack of copendency, the MPEP ¶ 2.11 outlines the required action: Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications. This means the applicant has two options: Delete the benefit claim to the prior-filed…
Read MoreWhen must the specific reference to a prior-filed application be submitted?
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…
Read MoreWhat happens if the specific reference is not submitted within the required time period?
If the specific reference to a prior-filed application is not submitted within the required time period, it is considered a waiver of any benefit claim to that prior application. The MPEP states: 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…
Read MoreHow should the specific reference to a prior-filed application be made?
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.…
Read MoreWhat is the process for submitting a late benefit claim?
If a benefit claim is not filed within the required time period, it may still be accepted through a petition process. According to MPEP ¶ 2.15: A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35…
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