Can a design patent application claim benefit from a PCT application under 35 U.S.C. 120?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Yes, a design patent application can claim benefit from a PCT application under 35 U.S.C. 120, provided certain conditions are met:

• The PCT application must have designated the United States.
• The design must be fully disclosed in the PCT application in compliance with 35 U.S.C. 112(a).
• All other requirements for a proper benefit claim under 35 U.S.C. 120 must be satisfied.

The MPEP explicitly states: “In addition, a design application may claim benefit from an earlier filed PCT application under 35 U.S.C. 120 if the U.S. was designated in the PCT application.“

It’s important to note that while a design application can claim benefit from a PCT application, it cannot claim benefit from a provisional application. The MPEP clarifies: “It should be noted that where a design patent application claims benefit under 35 U.S.C. 120 to an intermediate nonprovisional utility patent application that directly claims the benefit of a provisional application, the design patent application cannot claim the benefit of the filing date of the provisional application. This is because a design application may not claim the benefit of a provisional application. See 35 U.S.C. 172.“