How does claiming benefit affect the patent term?

Claiming benefit to a prior application can affect the patent term in several ways:

1. For applications subject to the 20-year term provision:
   • The term begins from the earliest U.S. filing date to which benefit is claimed under 35 U.S.C. 120, 121, or 365(c)
   • Claiming benefit to earlier applications may reduce the effective patent term
2. For provisional applications:
   • Claiming benefit under 35 U.S.C. 119(e) does not affect the patent term
   • However, claiming benefit to a provisional under 35 U.S.C. 120 (not recommended) could reduce the term

MPEP 211.02 cautions: “Although 35 U.S.C. 120 does not preclude a benefit claim to a provisional application, it is not recommended that applicants claim the benefit to a provisional application under 35 U.S.C. 120 since such a claim could have the effect of reducing the patent term, as the term of a patent issuing from such an application may be measured from the filing date of the provisional application pursuant to 35 U.S.C. 154(a)(2).”

It’s important to carefully consider the implications of benefit claims on patent term when developing a patent strategy, especially for patent families with multiple related applications.

To learn more:

• patent term
• benefit claim
• priority claim
• provisional application
• patent strategy