How does submitting a benefit claim under 35 U.S.C. 119(e) help overcome a pre-AIA 35 U.S.C. 102(b) rejection?

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.

Submitting a benefit claim under 35 U.S.C. 119(e) can help overcome a pre-AIA 35 U.S.C. 102(b) rejection by potentially changing the effective filing date of your application. Here’s how it works:

1. Submit and perfect the benefit claim under 35 U.S.C. 119(e) by complying with the requirements of 37 CFR 1.78.
2. If successful, the examiner must reconsider the rejection to determine if the prior art still qualifies under pre-AIA 35 U.S.C. 102(b) or if it now falls under pre-AIA 35 U.S.C. 102(a).

As stated in MPEP 2133.02(a): “Because a provisional application could not have been filed more than one year prior to the filing of a nonprovisional application that claims benefit to the provisional application, once the benefit claim under 35 U.S.C. 119(e) is perfected, the rejection must be reconsidered to determine whether the prior art still qualifies as prior art under pre-AIA 35 U.S.C. 102(b) or whether the prior art qualifies as prior art under pre-AIA 35 U.S.C. 102(a).”