Can an international design application claim benefit of a prior U.S. patent application?
Yes, an international design application can claim benefit of a prior U.S. patent application. This is explicitly stated in MPEP 2920.05(e): “An international design application designating the United States may make a claim for benefit of an earlier filing date in accordance with the law and procedure of the United States.” Furthermore, the MPEP clarifies:…
Read MoreHow can an application identify an international design application when claiming benefit under 35 U.S.C. 386(c)?
When an application is claiming benefit under 35 U.S.C. 386(c) to an international design application designating the United States, it can identify the international design application in one of two ways: By the U.S. application number By the international registration number and U.S. filing date under 37 CFR 1.1023 This is specified in the MPEP:…
Read MoreWhat is the effective filing date for benefit claims under 35 U.S.C. 386(c) in AIA applications?
For determining the effective filing date under AIA 35 U.S.C. 100(i)(1)(B) with regard to a benefit claim under 35 U.S.C. 386(c) to a prior-filed international design application designating the United States, the U.S. filing date of the international design application should be used, rather than the international filing date, if they are different. The MPEP…
Read MoreHow is copendency determined for international design applications claiming benefit under 35 U.S.C. 386(c)?
When determining copendency for an international design application designating the United States and claiming benefit under 35 U.S.C. 386(c), it’s the U.S. filing date of the international design application that is relevant, not necessarily the international filing date. The MPEP states: In determining whether an international design application designating the United States is copending with…
Read MoreWhen can benefit under 35 U.S.C. 386(c) be claimed for international design applications?
Benefit under 35 U.S.C. 386(c) for international design applications can only be claimed in specific types of applications filed on or after May 13, 2015. The MPEP states: 37 CFR 1.78(j) provides that benefit under 35 U.S.C. 386(c) with respect to an international design application can only be claimed in nonprovisional applications, international applications, and…
Read MoreCan a continuation-in-part (CIP) application claim benefit to multiple prior applications?
Can a continuation-in-part (CIP) application claim benefit to multiple prior applications? Yes, a continuation-in-part (CIP) application can claim benefit to multiple prior applications, provided certain conditions are met. The MPEP states: “An applicant may claim the benefit of the filing date of one or more prior applications under 35 U.S.C. 120, 121, 365(c), or 386(c)…
Read MoreWhat is the benefit claim under 35 U.S.C. 386(c) for international design applications?
Under 35 U.S.C. 386(c), an international design application designating the United States can claim the benefit of the filing date of a prior nonprovisional application, international application (PCT) designating the United States, or international design application designating the United States. Conversely, a nonprovisional application can claim the benefit of a prior international design application designating…
Read MoreWhen can a benefit claim under 35 U.S.C. 386(c) be made?
According to 37 CFR 1.78(j), benefit claims under 35 U.S.C. 386(c) can only be made in specific types of applications filed on or after May 13, 2015. The MPEP states: “37 CFR 1.78(j) provides that benefit under 35 U.S.C. 386(c) with respect to an international design application can only be claimed in nonprovisional applications, international…
Read MoreHow does claiming the benefit of an international design application affect the effective filing date?
Claiming the benefit of an international design application under 35 U.S.C. 386(c) can potentially establish an earlier effective filing date for a nonprovisional application. This is significant because the effective filing date is used to determine which prior art is applicable during examination. As stated in the MPEP: “Pursuant to 35 U.S.C. 386(c), in accordance…
Read MoreWhat are the requirements for benefit claims under different U.S. Code sections?
Benefit claims can be made under various sections of the U.S. Code, each with specific requirements: 35 U.S.C. 119(e): For provisional application benefits, refer to 37 CFR 1.78(a). 35 U.S.C. 120: For benefit claims to earlier nonprovisional applications, including the relationship (continuation, divisional, or continuation-in-part). 35 U.S.C. 121: For divisional applications. 35 U.S.C. 365(c): For…
Read More