Can a design patent application claim benefit from a utility patent 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 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.