What are the requirements for claiming benefit of a provisional application?

Claiming the benefit of a provisional application has specific requirements, as outlined in MPEP 211.01(b):

“A nonprovisional application that directly claims the benefit of a provisional application under 35 U.S.C. 119(e) must be filed within 12 months from the filing date of the provisional application unless the benefit of the provisional application has been restored.”

Key points to remember:

• The nonprovisional application must be filed within 12 months of the provisional application’s filing date.
• If filed after 12 months, the benefit of the provisional application must be restored (see 37 CFR 1.78(b)).
• For indirect benefit claims through intermediate applications, the relationship between each application must be clearly identified.
• Failure to properly indicate relationships may result in the benefit claim not being recognized, requiring a petition under 37 CFR 1.78(c) and payment of a fee.

Proper referencing and timing are crucial when claiming the benefit of provisional applications to ensure the desired priority date is secured.

To learn more:

• provisional application
• benefit claim
• 12-month period
• restoration of benefit