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1504.20 Benefit Under - 1500 Design Patents
1504.20 Benefit Under 35 U.S.C. 120 [R-5]
35 U.S.C. 120 Benefit of earlier filing date in the United States.
An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section.
If applicant is entitled under 35 U.S.C. 120 to the benefit of an earlier U.S. filing date, the statement that, "This is a division [continuation] of design Application No.- - - -, filed - - -." should appear in the first sentence of the specification. As set forth in 37 CFR 1.78(a)(2), the specification must contain or be amended to contain such a reference in the first sentence>(s)< following the title unless the reference is included in an application data sheet (37 CFR 1.76). The failure to timely submit such a reference is considered a waiver of any benefit under 35 U.S.C. 120.
Form paragraph 15.26 may be used to remind applicant that a reference to the prior application must be included in the first sentence>(s)< of the specification or in an application data sheet.
**>¶ 15.26 Identification of Prior Application(s) in Nonprovisional Applications - Benefit Claimed
Applicant is reminded of the following requirement:
In a continuation or divisional application (other than a continued prosecution application filed under 37 CFR 1.53(d)), the first sentence(s) of the specification or the application data sheet ( 37 CFR 1.76) should include a reference to the prior application(s) from which benefit is sought. See 37 CFR 1.78. The following format is suggested: "This is a continuation (or division) of Application No.________, filed ________, now (abandoned, pending or U.S. Patent No.________)."
<Attention is directed to the requirements for "continuing" applications set forth in MPEP § 201.07, § 201.08, and § 201.11. Applicants are entitled to claim the benefit of the filing date of earlier applications for later claimed inventions under 35 U.S.C. 120 only when the earlier application discloses that invention in the manner required by 35 U.S.C. 112, first paragraph. In all continuation and divisional applications, a determination must be made by the examiner as to whether the conditions for priority under 35 U.S.C. 120 have been met. **>The claimed design in a continuation application and in a divisional application must be disclosed in< the original application. If this condition is not met, the application is not entitled to the benefit of the earlier filing date and the examiner should notify applicant accordingly by specifying the reasons why applicant is not entitled to claim the benefit under 35 U.S.C. 120. Form paragraphs 2.09 and 2.10 may be used followed by a specific explanation as to why the later filed application fails to comply with the requirements of 35 U.S.C 120. The examiner should also require applicant to cancel the claim for *>benefit< in the first sentence>(s)< of the specification >or submit a supplemental application data sheet, where appropriate<.
*>For applications filed prior to September 21, 2004, in< the absence of a statement in the application as originally filed incorporating by reference the disclosure of an earlier filed application, the disclosure in a continuing application may not be amended to conform to that of the earlier filed application for which priority is claimed. A mere statement that an application is a continuation or division of an earlier filed application is not an incorporation of anything into the application containing such reference for purposes of satisfying the disclosure requirements of 35 U.S.C. 112, first paragraph. In re de Seversky, 474 F.2d 671, 177 USPQ 144 (CCPA 1973). See also MPEP 608.01(p). >For applications filed on or after September 21, 2004, 37 CFR 1.57(a) provides that a claim under 37 CFR 1.78 for the benefit of a prior-filed application, that was present on the filing date of the application, is considered an incorporation by reference as to inadvertently omitted material. See MPEP § 201.17.<
When the first application is found to be fatally defective under 35 U.S.C. 112 because of insufficient disclosure to support an allowable claim and such position has been made of record by the examiner, a second design patent application filed as an alleged "continuation-in-part" of the first application to supply the deficiency is not entitled to the benefit of the earlier filing date. See Hunt Co. v. Mallinckrodt Chemical Works, 177 F.2d 583, 83 USPQ 277 (F2d Cir. 1949) and cases cited therein. Also, a design application filed as a "continuation-in-part" that changes the shape or configuration of a design disclosed in an earlier application is not entitled to the benefit of the filing date of the earlier application. See In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983). However, a later filed application that changes the scope of a design claimed in an earlier filed application by reducing certain portions of the drawing to broken lines is not a change in configuration as defined by the court in Salmon. See MPEP § 1504.04, subsection II.
Unless the filing date of an earlier application is actually needed, for example, in the case of an interference or to avoid an intervening reference, there is no need for the examiner to make a determination in a continuation-in-part application as to whether the requirement of 35 U.S.C. 120 is met. Note the holdings in In re Corba, 212 USPQ 825 (Comm'r Pat. 1981).
Form paragraph 15.74 may be used in a first Office action on the merits in any application identified as a continuation-in-part which claims *>benefit< under 35 U.S.C. 120 to a prior application.
**>¶ 15.74 Continuation-In-Part
Reference to this design application as a continuation-in-part under 35 U.S.C. 120 is acknowledged. Applicant is advised that the design disclosed in the parent application is not the same design as the design disclosed in this application. Therefore, this application does not satisfy the written description requirement of 35 U.S.C. 112, first paragraph, under 35 U.S.C. 120 and is not entitled to benefit of the earlier filing date. However, unless the filing date of the earlier application is actually needed, such as to avoid intervening prior art, the entitlement to priority in this CIP application will not be considered. See In re Corba, 212 USPQ 825 (Comm'r Pat. 1981).
Examiner Note
This form paragraph should be used to notify applicant that the C-I-P application is not entitled to the benefit of the parent application under 35 U.S.C. 120.
<Where a continuation-in-part application claims benefit under 35 U.S.C. 120 of the filing date of an earlier application, **>which in turn claims the priority under 35 U.S.C. 119(a)-(d) of a foreign application, and the conditions of 35 U.S.C. 120 are not met, a determination as to whether the foreign application for patent/registration has matured into a form of patent protection must be made.< To determine the status of the foreign application, the charts in MPEP § 1504.02 should be used. ** If the foreign application for patent/registration has matured into a form of patent protection and would anticipate or render the claim in the alleged CIP application obvious, the design shown in the foreign application papers would qualify as prior art under 35 U.S.C. 102(d)/ 172 and the claim should be rejected under 35 U.S.C. 102/103. >The claim for the benefit of the earlier filing date under 35 U.S.C. 120 as a continuation-in-part should be denied and the claim for priority under 35 U.S.C. 119(a)-(d) should also be denied.< Form paragraph 15.75 may be used.
**>¶ 15.75 Preface to Rejection in Alleged CIP Based on 35 U.S.C. 102(d)/ 172
Reference to this design application as a continuation-in-part under 35 U.S.C. 120 is acknowledged. Applicant is advised that the design disclosed in the parent application is not the same design as the design disclosed in this application. Therefore, this application does not satisfy the written description requirement of 35 U.S.C. 112, first paragraph, under 35 U.S.C. 120 and is not entitled to benefit of the earlier filing date.
The parent application claimed foreign priority under 35 U.S.C. 119(a) - (d). Insofar as the foreign application has matured into a patent/registration more than six months before the filing date of the present application, it qualifies as prior art under 35 U.S.C. 102(d)/ 172.
Examiner Note
This form paragraph should be followed with a rejection under 35 U.S.C. 102 or 103(a) depending on the difference(s) between this claim and the design shown in the priority papers.
<If the status of the foreign application cannot be determined the following form paragraph should be used instead.
**>¶ 15.75.01 C-I-P Caution, Claim to Foreign Priority in Earlier Filed Application
Reference to this application as a continuation-in-part under 35 U.S.C. 120 is acknowledged. Applicant is advised that the design disclosed in the parent application is not the same design as the design disclosed in this applicatoin. Therefore, this application does not satisfy the written description requirement of 35 U.S.C. 112, first paragraph, under 35 U.S.C. 120 and is not entitled to benefit of the earlier filing date.
However, unless the filing date of the earlier application is actually needed, such as to avoid intervening prior art, entitlement to priority in this CIP application will not be considered. See In re Corba, 212 USPQ 825 (Comm'r Pat. 1981).
The parent application claimed foreign priority under 35 U.S.C. 119(a) - (d). Applicant is reminded that if the foreign application to which priority was claimed matured into a form of patent protection prior to the filing of this application it qualifies as prior art under 35 U.S.C. 102(d)/ 172.
<Where the conditions of 35 U.S.C. 120 are met, a design application may be considered a continuing application of an earlier utility application. Conversely, this also applies to a utility application relying on the benefit of the filing date of an earlier filed design application. See In re Chu, 66 F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995); In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983). In addition, a design application may claim benefit from an earlier filed PCT application under 35 U.S.C. 120 if the U.S. was designated in the PCT application.
Note also In re Berkman, 642 F.2d 427, 209 USPQ 45 (CCPA 1981) where the benefit of a design patent application filing date requested under 35 U.S.C. 120 was denied in the later filed utility application of the same inventor. The Court of Customs and Patent Appeals took the position that the design application did not satisfy 35 U.S.C. 112, first paragraph, as required under 35 U.S.C. 120.
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