How can a U.S. national stage application claim benefit under 35 U.S.C. 119(e) of a prior U.S. provisional application?

To claim benefit under 35 U.S.C. 119(e) of a prior U.S. provisional application in a national stage application, the following requirements must be met:

  • The national stage application must comply with 37 CFR 1.78(a).
  • The provisional application must have a filing date and the basic filing fee must have been paid within the specified time period.
  • At least one inventor named in the international application must also be named in the provisional application.
  • The provisional application must disclose the named inventor’s invention claimed in at least one claim of the national stage application.
  • The national stage application must contain a reference to the provisional application, including its application number.

The MPEP states: “The required reference to the earlier provisional application must be submitted within the time period provided by 37 CFR 1.78(a)(4). This time period is not extendable.”

If the provisional application was filed in a language other than English, an English-language translation and a statement of accuracy will be required.

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Tags: Benefit Claim, national stage application, PCT, provisional application