How 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 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 MoreCan a provisional application be used as a reference for double patenting rejections?
Can a provisional application be used as a reference for double patenting rejections? No, a provisional application cannot be used as a reference for double patenting rejections. The MPEP 804.02 clearly states: “A provisional application, which is a nonprovisional application under 35 U.S.C. 111(a), cannot be used as a reference in a double patenting rejection.”…
Read MoreHow can I convert a provisional patent application to a nonprovisional application?
The USPTO allows for the conversion of a provisional patent application to a nonprovisional application under specific circumstances. The MPEP states: “Requests to convert a provisional application filed under 37 CFR 1.53(c) to a nonprovisional application under 37 CFR 1.53(b) where the provisional application is before the Office of Patent Application Processing.“ This conversion process…
Read MoreCan a nonprovisional patent application be converted to a provisional application?
Yes, it is possible to convert a nonprovisional patent application to a provisional application under certain circumstances. The MPEP states: “Petitions to convert a nonprovisional application filed under 37 CFR 1.53(b) to a provisional application under 37 CFR 1.53(c) where the nonprovisional application is before the Office of Initial Patent Examination or where the nonprovisional…
Read MoreHow can a U.S. national stage application claim benefit under 35 U.S.C. 119(e) of a prior U.S. provisional application?
To claim benefit under 35 U.S.C. 119(e) of a prior U.S. provisional application in a national stage application, the following requirements must be met: The national stage application must comply with 37 CFR 1.78(a). The provisional application must have a filing date and the basic filing fee must have been paid within the specified time…
Read MoreHow can I add or delete an inventor’s name in a provisional patent application?
The USPTO provides two separate procedures for adding or deleting an inventor’s name in a provisional patent application: To add an inventor: 37 CFR 1.48(d) To delete an erroneously named inventor: 37 CFR 1.48(e) The MPEP states: “Requests under 37 CFR 1.48(d) to add the name of an inventor in a provisional application.“ “Requests under…
Read MoreCan a provisional application be revived after it has been abandoned?
Yes, a provisional application can be revived, but with limitations: A provisional application abandoned for failure to reply to an Office requirement may be revived under 37 CFR 1.137 The revival can only extend the pendency up to 12 months from the filing date of the provisional application After 12 months from its filing date,…
Read MoreCan a provisional application be revived after 12 months from its filing date?
A provisional application cannot be revived to be pending after 12 months from its filing date. Key points about reviving provisional applications: A petition to revive can be filed for a provisional application abandoned for failure to respond to an Office requirement The revival can only make the application pending up to the 12-month point…
Read MoreHow does claiming benefit affect the patent term?
Claiming benefit to a prior application can affect the patent term in several ways: For applications subject to the 20-year term provision: The term begins from the earliest U.S. filing date to which benefit is claimed under 35 U.S.C. 120, 121, or 365(c) Claiming benefit to earlier applications may reduce the effective patent term For…
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