Can a provisional application be used as a reference for double patenting rejections?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-27 10 Rules 5 Related FAQs 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. 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.” This is because: Provisional applications do not mature into patents They are not examined for patentability They expire after one year if not converted to a non-provisional application However, it’s important to note that while a provisional application itself cannot be used for a double patenting rejection, a non-provisional application claiming priority to that provisional may be used if it meets the criteria for a proper reference in a double patenting rejection. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Proper Reference for Obviousness-Type Double Patenting Inquiry MPEP 804 Requirement for Double Patenting Rejections in Reexamination Proceedings MPEP 804 Obviousness Analysis for Double Patenting Rejection MPEP 804 Required Provisional Double Patenting Rejection Required in Reference Application MPEP 804 Recommended Provisional Double Patenting Rejection Required in Reference Application MPEP 804 Recommended Provisional Nonstatutory Double Patenting Rejection Using Form Paragraphs MPEP 804 AIA Effective Dates for Double Patenting MPEP 804 Same Invention Type Double Patenting Rejection MPEP 804 Permitted Nonstatutory Double Patenting Rejection Cannot Use Reference Exempted Under 102(b)(2)(C) MPEP 804 Prohibited Double Patenting Rejections for Utility and Plant Patents MPEP 804 Permitted Other Related FAQs 5 FAQs Collapse How can I avoid a statutory double patenting rejection? Wha...