Can a design patent application claim benefit from a utility patent application under 35 U.S.C. 120?
Yes, a design patent application can claim benefit from a utility patent application under 35 U.S.C. 120, provided certain conditions are met:
- The design must be fully disclosed in the earlier utility application in compliance with 35 U.S.C. 112(a).
- The utility application must meet all the requirements for a proper benefit claim under 35 U.S.C. 120.
- The design application must be filed before the patenting, abandonment, or termination of proceedings on the utility application.
The MPEP cites relevant case law: “Where the conditions of 35 U.S.C. 120 are met, a design application may be considered a continuing application of an earlier utility application. Racing Strollers Inc. v. TRI Industries Inc., 878 F.2d 1418, 11 USPQ2d 1300 (Fed. Cir. 1989). Conversely, this also applies to a utility application relying on the benefit of the filing date of an earlier filed design application. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 19 USPQ2d 1111 (Fed. Cir. 1991).“
It’s important to note that while a design application can claim benefit from a utility application, it cannot claim benefit from a provisional application, as stated in 35 U.S.C. 172.
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