How can priority claims be used to overcome a pre-AIA 35 U.S.C. 102(e) rejection?
Priority claims can be an effective way to overcome a pre-AIA 35 U.S.C. 102(e) rejection. This can be done through either foreign priority claims or domestic benefit claims.
For foreign priority claims, the MPEP states: “Submitting a claim to priority under 35 U.S.C. 119(a) – (d) within the time period set in 37 CFR 1.55” can overcome the rejection. This involves filing a corrected application data sheet and establishing that the prior foreign application satisfies the enablement and written description requirements.
For domestic benefit claims, the MPEP notes: “Submitting a benefit claim under 35 U.S.C. 119(e) or 120, within the time periods set in 37 CFR 1.78” can be used. This requires filing an application data sheet with a specific reference to a prior application and establishing that the prior application satisfies the enablement and written description requirements.
It’s crucial to note that “The filing date of a prior application cannot be used to antedate a reference if the application at issue is not entitled to claim the benefit of the prior application under 35 U.S.C. 119(e), 120, 121, or 365(c).“
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