Can a provisional application be used as a prior-filed application for benefit claims?

Can a provisional application be used as a prior-filed application for benefit claims?

Yes, a provisional application can be used as a prior-filed application for benefit claims in certain circumstances. According to MPEP 211.01:

‘The prior application may be a provisional application under 35 U.S.C. 111(b) or a nonprovisional application under 35 U.S.C. 111(a).’

However, there are specific requirements and limitations when claiming the benefit of a provisional application:

• The nonprovisional application must be filed within 12 months of the provisional application’s filing date (or 14 months with a grantable petition under 37 CFR 1.78(b)).
• The provisional application must adequately support and enable the subject matter of the claims in the nonprovisional application.
• The specific reference to the provisional application must be included in an application data sheet (ADS) or the first sentence of the specification.

It’s important to note that while a nonprovisional application can claim the benefit of a provisional application, a provisional application cannot claim the benefit of or priority to any other application.

To learn more:

• provisional application
• priority claim
• benefit claim
• prior-filed application