Alternative Text Version
Section
3: Benefit Claims To Prior Applications under 35 U.S.C.
§§ 119(e), 120, 121, and 365(c)
Prepared
by:
Office of Patent Legal Administration (OPLA)
Robert J. Spar, Director
Bob.Spar@USPTO.gov
(703) 308-5107
Benefit
Claims To Prior Applications under 35 U.S.C. §§
119(e), 120, 121, and 365(c)
- Must
include a specific reference to the prior-filed nonprovisional
application in
- the
first sentence of the specification; or
- the
application data sheet (ADS).
- Specific
reference to a nonprovisional application requires the
following:
- Identification
of the prior-filed application by application
number; and
- Indication
of the specific relationship (i.e., continuation,
divisional, or continuation-in-part) of the applications;
Exception: If application is a CPA, the request
for CPA is the required specific reference, rule
1.53(d)(7)
- Example
1: “This application is a continuation of Application
No. 10/---, filed---.”
Benefit
Claims to Multiple Applicationsunder 35 USC §§
120, 121, and 365(c)
- If
the benefit claims involve a chain of nonprovisional
applications,
- the
relationship must be stated for each application
(in the chain) relative to an immediate prior application,
as a continuation, divisional, or continuation-in-part,
to establish copendency throughout the entire chain.
- Example
2: “This application is a continuation of Application
No. C, filed ---, which is a divisional of Application
No. B, filed ---, which is a continuation-in-part of
Application No. A, filed ---.”
- Example
3: “This application is a continuation-in-part of Application
No. C, filed ---, and also a continuation-in-part of
Application No. D, filed ---.”
Benefit
Claims to International (PCT) Applicationsunder 35 USC
§§ 120, 121, and 365(c)
- Specific
reference to an international application (IA) requires:
- Identification
of the prior-filed IA by International application
number and International filing date (not
the § 371(c) compliance date); and
- Specific
relationship of the applications.
- Example
4: “This application is a continuation of International
Application No. PCT/US--/---,
filed ---.”
- This
example is for a benefit claim to an IA in a “bypass”
application.
- A
“bypass” application is a § 111(a) application
claiming under § 365(c) the benefit of an IA
that did not enter the national stage under §
371.
- Example
5: Specific reference to a National Stage (§ 371)
Application
- “This
application is a continuation of Application No.
10/---, which is the National Stage of International
Application No. PCT/US--/---, filed ---.”
Note: §371(c) compliance date should NOT
be given.
- Example
6: Specific reference to an IA which claims the benefit
of a prior U.S. Nonprovisional Application:
- “This
application is a continuation of International Application
No. PCT/US--/---, filed ---, which is a continuation
of U.S. Application No. 10/---, filed ---.”
Benefit
Claims to Provisional Applications under 35 USC §
119(e)
- Must
include a specific reference to the prior-filed
provisional application in the first sentence of the
specification or an ADS.
- Specific
reference requires:
- Only
the identification of the prior provisional application
by the application number.
- No
relationship between the subject nonprovisional
application and the provisional application should
be specified.
- Example
7: “This application claims the benefit of U.S. Provisional
Application No. 60/---,
filed ---.”
Benefit
Claims to Provisional via IntermediateNonprovisional
Application under
35 USC §§ 120, 365(c) & 119(e)
- If
the subject application is not filed within 12 months
from the filing date of the provisional application,
the specific reference must identify:
- An
intermediate nonprovisional application that
is directly claiming the benefit of the provisional
application; and
- The
relationship between the nonprovisional applications.
- Example
8: “This application is a continuation of Application
No. 10/---, filed ---, which claims the benefit of U.S.
Provisional Application No. 60/---, filed ---.”
Benefit
Claims to Provisional via Intermediate IA under 35 USC
§§ 120, 365(c) & 119(e)
- Example
9: Specific reference to claim the benefit of a provisional
application via an IA.
- “This
application is a continuation of International Application
No. PCT/US--/---, filed ---, which claims the benefit
of Provisional Application No. 60/---, filed ---.”
- Example
10: Specific reference to claim the benefit of a provisional
application via a National Stage (§ 371) Application
- “This
application is a continuation of Application No.
10/---, which is the National Stage of International
Application No. PCT/US--/---, filed ---, which claims
the benefit of Provisional Application No. 60/---,
filed ---.”
Impact
of Failure to MakeProper Benefit Claims
- Failure
to timely submit the specific reference
is considered a waiver of any benefit claim unless a
petition under 37 CFR 1.78(a) and surcharge are filed.
- The
Office may not be able to publish applications promptly
after the expiration of a period of eighteen months
from the earliest filing date for which a benefit is
sought.
- The
publication may not include accurate benefit claims
to determine the prior art date
under 35 USC § 102(e).
Notification
of the Failure to MakeProper Benefit Claims
- The
Office plans to notify applicants on, or with, the filing
receipt that a benefit claim may not have been recognized
because it did not include the proper specific
reference.
- The
filing receipt is usually provided shortly after
the filing of the application so applicants should have
sufficient opportunity to submit the proper benefit
claim within the time period set in rule 1.78(a).
- Applicants
should carefully and promptly review filing receipts
in order to avoid the need to submit a petition under
rule 1.78(a) and surcharge under rule 1.17(t).
Timely
Correction of Benefit Claims
- Within
the time period of 37 CFR 1.78(a)(The later of four
months from the actual filing date or the date on which
the national stage commenced, or sixteen months from
the filing date of the prior-filed application), applicant
may correct benefit claims by filing:
- A
request for corrected filing receipt, and
- The
Required specific reference
- Via
an amendment to the specification, or an application
data sheet (ADS) (see slide 2); or
- If
previously submitted, a copy of the amendment
or ADS.
Untimely
Correction of Benefit Claims
- After
the time period of rule 1.78(a) has expired, applicant
may petition to correct benefit claims by filing:
- A
petition to accept an unintentionally
delayed claim under rule 1.78(a) and the surcharge
under rule 1.17(t), and
- The
required specific reference (including the
relationship of the nonprovisional applications
and identification of any intermediate application
which directly claims the benefit of the provisional
application).
- Note:
any benefit claim under 35 USC § 119(e) must
be submitted during the pendency of the instant
nonprovisional application.
Prior
Applications Also Must Include Specific Reference
- Each
intermediate prior application must have specific
reference to other prior applications.
- For
example, this benefit claim, “This application is
a continuation of Application No. C, filed ---,
which is a continuation of Application No. B, filed---,
which claims the benefit of Provisional Application
No. A, filed ---.” will only be effective if:
- Application
No. C actually includes a proper benefit claim
to Application No. B and Provisional Application
No. A; and
- Application
No. B actually includes a proper benefit claim
to Provisional Application No. A.
Adding
an Incorporation-By-Reference
- After
the filing of an application, adding an incorporation-by-reference
statement in a benefit claim is not permitted.
- No
new matter can be added to an application after
its filing date.
- See
35 USC § 132(a) and Dart Industries
v. Banner, 636 F.2d 684, 207 USPQ (CADC
1980).
- The
Office will not accept a specific reference that
includes an incorporation-by-reference statement
of a prior application, unless such statement was
submitted on filing of the application.
Appendix:
Examples of Benefit Claims under 35 USC §§ 120,
121, and 365(c)
- Ex.
1: Specific reference to a nonprovisional application.
- “This
application is a continuation of Application No.
10/---, filed---.”
- Ex.
2: Specific reference to multiple nonprovisonal applications.
- “This
application is a continuation of Application No.
C, filed ---, which is a divisional of Application
No. B, filed ---, which is a continuation-in-part
of Application No. A, filed ---.”
- Ex.
3: Specific reference to multiple nonprovisional applications.
- “This
application is a continuation-in-part of Application
No. C, filed ---, and also a continuation-in-part
of Application No. D, filed ---.”
- Ex.
4: Specific reference to an IA.
- “This
application is a continuation of International Application
No. PCT/US--/---, filed ---.”
- Ex.
5: Specific reference to a NS (§ 371) application
- “This
application is a continuation of Application No.
10/---, which is the National Stage of International
Application No. PCT/US--/---, filed ---.” Note:
§371(c) compliance date should NOT be given.
- Ex.
6: Specific reference to an IA which claims the benefit
of a prior U.S. Nonprovisional Application:
- “This
application is a continuation of International Application
No. PCT/US--/---, filed ---, which is a continuation
of U.S. Application No. 10/---, filed ---.”
- Ex.
7: Specific reference to claim the benefit of a provisional
application when the subject application is filed within
12 months from the filing date of the provisional application.
- “This
application claims the benefit of U.S. Provisional
Application No. 60/---, filed ---.”
- Ex.
8: Specific reference to claim the benefit of a provisional
application via a nonprovisional application.
- “This
application is a continuation of Application
No. 10/---, filed ---, which claims the benefit
of U.S. Provisional Application No. 60/---, filed
---.”
- Ex.
9: Specific reference to claim the benefit of a provisional
application via an IA.
- “This
application is a continuation of International Application
No. PCT/US--/---, filed ---, which claims the benefit
of Provisional Application No. 60/---, filed ---.”
- Ex.
10: Specific reference to claim the benefit of a provisional
application via a National Stage (§ 371) Application
- “This
application is a continuation of Application No.
10/---, which is the National Stage of International
Application No. PCT/US--/---, filed ---, which claims
the benefit of Provisional Application No. 60/---,
filed ---.”
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