What 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 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 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 MoreWhat options are available if I miss the 12-month deadline for claiming provisional application benefit?
If you miss the 12-month deadline for claiming the benefit of a provisional application, you have two main options: Delete the claim to the benefit of the prior-filed provisional application. File a petition to restore the benefit of the provisional application. The MPEP states: “Alternatively, applicant may wish to file a petition to restore the…
Read MoreWhat are the requirements for filing a petition to restore the benefit of a provisional application?
According to MPEP 211, a petition to restore the benefit of a provisional application under 37 CFR 1.78(b) must include: The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application (unless previously submitted) The petition fee set forth in 37 CFR 1.17(m) A statement that the delay in filing…
Read MoreIs there a time limit for filing a petition to restore the benefit of a provisional application?
Yes, there is a time limit for filing a petition to restore the benefit of a provisional application. According to MPEP 211: “Applicant may wish to file a petition to restore the benefit of the provisional application under 37 CFR 1.78 in the subsequent nonprovisional application or international application designating the United States if the…
Read MoreWhere should I send a petition to restore the benefit of a provisional application?
According to the MPEP, a petition to restore the benefit of a provisional application should be addressed to: “Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.” It’s important to note that this petition must be filed in the subsequent nonprovisional application or international application designating the United States, not in the…
Read MoreWhat does ‘unintentional delay’ mean in the context of restoring provisional application benefit?
‘Unintentional delay’ is a crucial concept when seeking to restore the benefit of a provisional application. The MPEP requires: “A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional.” While the MPEP doesn’t provide a specific definition of ‘unintentional delay’, it…
Read MoreWhat happens if I don’t file a petition to restore the benefit of a provisional application?
If you don’t file a petition to restore the benefit of a provisional application after missing the 12-month deadline, you will lose the right to claim the earlier filing date of the provisional application. The MPEP states: “Applicant is required to delete the claim to the benefit of the prior-filed provisional application, unless applicant can…
Read MoreCan I file a petition to restore the benefit of a provisional application in the provisional application itself?
No, you cannot file a petition to restore the benefit of a provisional application in the provisional application itself. According to the MPEP: “A petition to restore the benefit of a provisional application must be filed in the subsequent application.” This means you must file the petition in the nonprovisional application or the international application…
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