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 MoreHow can I establish priority to an earlier filing date to overcome a pre-AIA 35 U.S.C. 102(e) rejection?
To establish priority to an earlier filing date and overcome a pre-AIA 35 U.S.C. 102(e) rejection, you can take the following steps: For foreign priority under 35 U.S.C. 119(a)-(d): File a claim to priority within the time period set in 37 CFR 1.55. For applications filed on or after September 16, 2012, file a corrected…
Read MoreWhat is the effective filing date under AIA 35 U.S.C. 102(d)?
Under AIA 35 U.S.C. 102(d), a U.S. patent document is considered prior art as of either: Its actual filing date (AIA 35 U.S.C. 102(d)(1)), or The filing date of a prior application to which there is a priority or benefit claim (AIA 35 U.S.C. 102(d)(2)) The MPEP states: “AIA 35 U.S.C. 102(d) provides that a…
Read MoreHow can applicants claim benefit of earlier filing dates in international design applications?
Applicants can claim the benefit of earlier filing dates in international design applications designating the United States under certain conditions: Claims can be made under 35 U.S.C. 386(c) to prior nonprovisional applications, international applications (PCT) designating the US, or international design applications designating the US. The international design application must be entitled to a filing…
Read MoreHow can I use a benefit claim to overcome a 35 U.S.C. 102 rejection?
To overcome a 35 U.S.C. 102 rejection using a benefit claim, you can: Submit a benefit claim under 35 U.S.C. 120 within the time period set in 37 CFR 1.78 Submit a benefit claim under 35 U.S.C. 119(e) for a provisional application According to MPEP 2152.06: “Submitting a benefit claim under 35 U.S.C. 120 within…
Read MoreHow does claiming benefit to an earlier application affect AIA status?
Claiming benefit to an earlier application can affect the AIA status of a patent application. According to MPEP 2159.02: “If a patent application (1) contains or contained at any time a claim to a claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013…
Read MoreHow does submitting a benefit claim under 35 U.S.C. 119(e) help overcome a pre-AIA 35 U.S.C. 102(b) rejection?
Submitting a benefit claim under 35 U.S.C. 119(e) can help overcome a pre-AIA 35 U.S.C. 102(b) rejection by potentially changing the effective filing date of your application. Here’s how it works: Submit and perfect the benefit claim under 35 U.S.C. 119(e) by complying with the requirements of 37 CFR 1.78. If successful, the examiner must…
Read MoreWhat happens if the only error identified in a reissue declaration is to delete a 35 U.S.C. 120 benefit claim?
If the only error identified in the reissue declaration is the need to delete a 35 U.S.C. 120 benefit claim, and there’s no mention of increasing the patent term, the examiner should not reject the application under 35 U.S.C. 251. According to MPEP 1405: “If the only error identified in the reissue declaration is the…
Read MoreWhat if a reissue declaration aims to correct the patent term by deleting a 35 U.S.C. 120 benefit claim?
If the only error identified in the reissue declaration is stated to be the correction or adjustment of the patent term by deleting the 35 U.S.C. 120 benefit claim, the application will be rejected. According to MPEP 1405: “If the only error identified in the reissue declaration is stated to be the correction or adjustment…
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