How does the disclosure requirement differ for provisional and nonprovisional applications when claiming benefit?
The disclosure requirements for claiming the benefit of provisional and nonprovisional applications differ in some aspects:
Provisional Applications (35 U.S.C. 119(e)):
For a nonprovisional application to claim the benefit of a provisional application:
- The written description and drawings (if any) of the provisional application must adequately support and enable the subject matter claimed in the nonprovisional application.
- A claim is not required in the provisional application.
Nonprovisional Applications (35 U.S.C. 120, 121, 365(c), or 386(c)):
For continuation and divisional applications:
- The disclosure must be the same as the prior-filed application.
- No new matter can be added.
For continuation-in-part applications:
- New matter may be included.
- Only claims supported by the prior-filed application are entitled to the earlier filing date.
As stated in MPEP 211.05:
“Under 35 U.S.C. 120, a claim in a U.S. application is entitled to the benefit of the filing date of an earlier filed U.S. application if the subject matter of the claim is disclosed in the manner provided by 35 U.S.C. 112(a) except for the best mode requirement, in the earlier filed application.”
This requirement applies to both provisional and nonprovisional applications, ensuring that the earlier application provides proper support for the claimed invention.
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