What is the time limit for claiming benefit of a prior-filed application in an international design application?
The time limit for claiming benefit of a prior-filed application in an international design application is specified in MPEP 2920.05(e): “The right of priority may be restored where the international design application is filed after the expiration of the priority period but within a period of two months from the expiration of the priority period.”…
Read MoreWhat is the process for submitting a benefit claim under 35 U.S.C. 120 to overcome a pre-AIA 35 U.S.C. 102(b) rejection?
To submit a benefit claim under 35 U.S.C. 120 to overcome a pre-AIA 35 U.S.C. 102(b) rejection, you must: File a corrected application data sheet (ADS) or amend the specification, depending on the application filing date: For applications filed on or after September 16, 2012: File a corrected ADS under 37 CFR 1.76 with a…
Read MoreWhat are the requirements for a U.S. patent document to claim priority or benefit under AIA 35 U.S.C. 102(d)?
For a U.S. patent document to be “entitled to claim” priority or benefit of a prior-filed application under AIA 35 U.S.C. 102(d), it must meet three ministerial requirements: Contain a priority or benefit claim to the prior-filed application Be filed within the applicable filing period requirement Have a common inventor or be by the same…
Read MoreHow does the Patent Law Treaties Implementation Act (PLTIA) affect provisional application benefits?
The Patent Law Treaties Implementation Act (PLTIA) has introduced important changes regarding the benefit claims for provisional applications. According to MPEP 2133.02(a): “Effective December 18, 2013, title II of the Patent Law Treaties Implementation Act (PLTIA) provides for restoration of the right to claim benefit of a provisional application filed after the expiration of the…
Read MoreWhat is the Patent Law Treaties Implementation Act (PLTIA) and how does it affect benefit claims?
The Patent Law Treaties Implementation Act (PLTIA) is legislation that affects benefit claims, particularly those related to provisional applications. Key points include: Effective from December 18, 2013 Provides for restoration of the right to claim benefit of a provisional application filed after the expiration of the twelve-month period in 35 U.S.C. 119(e) May allow applicants…
Read MoreHow can I overcome a pre-AIA 35 U.S.C. 102(b) rejection based on a printed publication or patent?
There are several ways to overcome a pre-AIA 35 U.S.C. 102(b) rejection based on a printed publication or patent: Persuasively argue that the claims are patentably distinguishable from the prior art Amend the claims to patentably distinguish over the prior art Submit and perfect a benefit claim under 35 U.S.C. 120 Submit and perfect a…
Read MoreHow can I overcome a pre-AIA 35 U.S.C. 102(e) rejection?
There are two main ways to overcome a pre-AIA 35 U.S.C. 102(e) rejection: Antedating the filing date of the reference: This can be done by submitting an affidavit or declaration under 37 CFR 1.131. As stated in the MPEP, “An affidavit or declaration under 37 CFR 1.131(a) can overcome a prior art rejection under pre‑AIA…
Read MoreWhat are the main ways to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection?
There are several ways to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection, as outlined in MPEP 2152.06: Submitting a benefit claim under 35 U.S.C. 120 or 119(e) Submitting a claim to priority under 35 U.S.C. 119(a)-(d) Filing an affidavit or declaration under 37 CFR 1.130 Establishing common ownership or evidence of a Joint Research…
Read MoreDoes AIA 35 U.S.C. 102(d) require evaluation of actual entitlement to priority or benefit?
No, AIA 35 U.S.C. 102(d) does not require evaluation of actual entitlement to priority or benefit when determining the effective filing date for prior art purposes. The MPEP clearly states: “As a result of this distinction, the question of whether a patent or published application is actually entitled to priority or benefit with respect to…
Read MoreCan an international design application claim benefit to a provisional application?
No, an international design application designating the United States cannot claim benefit to a provisional application. This is explicitly stated in the MPEP: An international design application designating the United States may not claim benefit to a provisional application. See 37 CFR 1.78(a). This restriction is important for applicants to understand when considering their filing…
Read More