Claiming the Benefit of a Prior-Filed Application under 35 U.S.C. §§ 119(e), 120,
121, and 365(c)
Summary: This notice clarifies how benefit claims under 35 U.S.C. §§ 119(e), 120, 121
and 365(c) must be presented in applications in order to be in compliance with the
relevant statute and patent regulations, and accepted by the United States Patent and
Trademark Office (Office).
35 U.S.C. § 120 Benefit Claims
Benefit claims under 35 U.S.C. § 120 must include a specific reference to the
earlier filed (nonprovisional) application for which a benefit is sought. A “specific
reference” requires: (1) the identification of the prior (nonprovisional) application by
application number; and (2) an indication of the relationship between the
nonprovisional applications, except for the benefit claim to the prior application in a
continued prosecution application (CPA). The relationship between any two
nonprovisional applications will be an indication that the later-filed nonprovisional
application is either a continuation, divisional, or continuation-in-part of the prior-filed
nonprovisional application. When there are benefit claims to multiple prior
nonprovisional applications (e.g., a string of prior nonprovisional applications), the
relationship must include an identification of each nonprovisional application as either a
continuation, divisional, or continuation-in-part application of a specific prior
nonprovisional application for which a benefit is claimed. The identification is needed in
order to be able to verify if copendency exists throughout the entire chain of prior
nonprovisional applications.
35 U.S.C. § 119(e) Benefit Claims
Benefit claims under 35 U.S.C. § 119(e) must include a specific reference to the
earlier filed provisional application for which a benefit is sought. A specific reference in
this situation, however, only requires identification of the prior provisional application by
the application number. No relationship between the subject nonprovisional application
and the prior provisional application should be specified. If the subject nonprovisional
application was not filed within twelve months of the filing date of the provisional
application, the subject application must also include a benefit claim under 35 U.S.C. §
120 to an intermediate prior nonprovisional application that was filed within twelve
months of the filing date of the provisional application. Therefore, in addition to the
identification of the provisional application, the proper benefit claim for this situation
must also identify the intermediate prior nonprovisional application that is directly
claiming the benefit of the provisional application, and indicate the relationship between
the nonprovisional applications (e.g., an indication that the subject application is a
continuation of the intermediate prior nonprovisional application).
Statement of the Problem
Background: Some applicants have been submitting patent applications which include,
or are amended to include, at the beginning of the specification, a statement that benefits
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are claimed under 35 U.S.C. §§ 119(e) and/or 120 to prior applications, followed by a
listing of many prior nonprovisional and provisional applications. The listings do not
indicate: (1) the specific relationship (i.e., continuation, divisional, or continuation-inpart) between the nonprovisional applications, as required by 37 CFR 1.78(a)(2)(i);
and/or (2) each nonprovisional application which is directly claiming priority to a
provisional application. Without such information, the Office does not have sufficient
information to enter the benefit claims into the Office’s computer database.
When entering benefit claims for an application into the Office’s database, the
relationship (i.e., continuation, divisional or continuation-in-part) between the
nonprovisional applications is required. Further, the system will not accept any benefit
claim to a provisional application if the provisional application was filed more than
twelve months prior to the filing date of the subject application, unless the applicant
clearly identifies, and claims the benefit of, a prior nonprovisional application that was
filed within twelve months of the filing date of the provisional application. Accordingly,
if benefit claims are presented without all the required information, the Office will not be
able to enter such benefit claims into the Office’s database, the filing receipt will not
reflect the prior application(s), and the projected publication date will not be calculated as
a function of an earlier application’s filing date.
The specific relationships between (each of) the nonprovisional applications in a
chain of nonprovisional applications are also important because such information will be
printed in the application publication, and/or patent. Furthermore, the designation of an
application as a continuation (rather than as a continuation-in-part) is an indication that
the entire invention claimed in an application has support in the prior application,
whereas the designation of an application as a continuation-in-part is an indication that
the claimed invention is not entirely supported by the prior application. Thus, the
specific relationship between nonprovisional applications in a chain of benefit claims,
and the indication of the specific nonprovisional application(s) that is directly claiming
the benefit of a provisional application, will provide the information that is needed by
examiners and the public in order to determine the effective prior art date of the
application publication, or patent, under 35 U.S.C. § 102(e).
When benefit claims are required to, but do not, include: (1) an identification of
(all) intermediate benefit claims, and/or (2) the relationship between nonprovisional
applications, 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 under title 35, United States Code (eighteen-month publication), nor have the
accuracy desired of such benefit claims in application publications. Further, the objection
(by the Office), correction (by applicant), and review/entry of changes (by the Office)
cycle for non-compliant benefit claims is a burdensome effort on both applicants and the
Office that can be totally avoided if such benefit claims are properly submitted the first
time. Accordingly, it is hoped that applicants will submit benefit claims with all the
required information as set forth in this notice and, correspondingly, avoid submitting
non-compliant benefit claims that leads to extra work for both the Office and applicants.
Procedures for Making Proper Benefit Claims
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Part I:
Reference to Prior Nonprovisional Application(s) Per
37 CFR 1.78(a)(2)(i) Must Include Identification of, and Relationship Between,
Applications
35 U.S.C. § 120 provides that no application shall be entitled to the benefit of an
earlier filed application unless it contains, or is amended to contain, a specific reference
to the earlier filed application. The specific reference required by 35 U.S.C. § 120 is the
reference required by 37 CFR 1.78(a)(2). 37 CFR 1.78(a)(2)(i) requires that any
nonprovisional application that claims the benefit of one or more prior-filed copending
nonprovisional applications, or international applications designating the United States,
must contain, or be amended to contain, a reference to each such prior-filed
application, identifying it by application number (consisting of the series code and
serial number), or international application number and international filing date, and
indicating the relationship of the applications. 37 CFR 1.78(a)(2)(iv) also provides
that a request for a continued prosecution application (CPA) under 37 CFR 1.53(d) is the
specific reference required under 35 U.S.C. § 120 to the prior-filed application.
Therefore, except for the benefit claim to the prior-filed application in a CPA, benefit
claims under 35 U.S.C. § 120, including claims under 35 U.S.C. §§ 121 and 365(c), must
not only identify the earlier application by application number, or by international
application number and international filing date, but they must also indicate the
relationship between the applications.
Examples
The relationship between the applications is whether the subject application is a
continuation, divisional, or continuation-in-part of a prior-filed nonprovisional
application. An example of a proper benefit claim is: “This application is a continuation
of Application No. 10/---, filed ---.” A benefit claim that merely states: “This application
claims the benefit of Application No. 10/---, filed ---.” does not comply with 37 CFR
1.78(a)(2)(i), since the relationship between the applications is not stated. In addition, a
benefit claim that merely states: “This application is a continuing application of
Application No. 10/---, filed ---.” does not comply with 37 CFR 1.78(a)(2)(i) since the
proper relationship, which includes the type of continuing application, is not stated. It
is also noted that the status of each nonprovisional parent application (if it is patented or
abandoned) should also be indicated, following the filing date of the parent
nonprovisional application. An example of a proper benefit claim of a prior national
stage of an international application is “This application is a continuation of U.S.
Application No. X, which is the National Stage of International Application No.
PCT/US--/---, filed ---.” For additional examples of proper benefit claims, see Manual of
Patent Examining Procedure (8th ed., August 2001)(MPEP), Section 201.11, Reference to
First Application. Section 201.11 of the MPEP will be revised in the upcoming revision
to reflect the clarification made in this notice about the required manner of making proper
claims for the benefit of prior nonprovisional and provisional applications.
As stated previously, to specify the relationship between the nonprovisional
applications, applicant must specify whether the subject application is a continuation,
divisional, or continuation-in-part of the prior nonprovisional application. Note that the
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terms are exclusive. An application cannot be, for example, both a continuation and a
divisional, or a continuation and a continuation-in-part, of the same parent application.
Moreover, if the benefit of more than one nonprovisional parent application is claimed,
the relationship must include an identification of each nonprovisional application as a
continuation, divisional, or continuation-in-part application of the immediate prior
nonprovisional application for which a benefit is claimed in order to establish copendency throughout the entire chain of prior-filed parent nonprovisional applications.
For example, the following two statements are improper: “This application claims the
benefit of Application Nos. C, B, and A.” and “This application is a continuing
application of Application Nos. C, B, and A.” On the other hand, the following statement
is proper and acceptable: “This application is a continuation of Application No. C, filed --, which is a continuation of Application No. B, filed ---, which is a continuation of
Application No. A, filed ---.”
Sanctions for Making Improper Benefit Claims to Nonprovisional
Applications
Any benefit claim under 35 U.S.C. § 120, 121 or 365(c) that does not identify a
prior application and also specify a relationship between each of the applications will
not be in compliance with 37 CFR 1.78(a)(2)(i), and will not be considered to contain a
specific reference to a prior application as required by 35 U.S.C. § 120. Such a benefit
claim will not be recognized by the Office and will not be included on the filing receipt
for the application, even if the claim appears in the first sentence of the specification or
an application data sheet (37 CFR 1.76), because the Office does not have sufficient
information to enter the benefit claim into the Office’s database. As a result, publication
of the application will not be scheduled as a function of the prior application’s filing date.
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 reference.
Applicants are advised that only the benefit claims that are listed on the filing receipt
have been recognized by the Office. Since the filing receipt and the notification will
usually be provided to the applicant shortly after the filing of the application, applicants
should have sufficient opportunity to submit the proper benefit claims within the time
period set in 37 CFR 1.78(a)(2)(ii) and thus avoid the need to submit a petition under 37
CFR 1.78(a)(3) and the surcharge set forth in 37 CFR 1.17(t). Failure to timely submit
the reference required by 37 CFR 1.78(a)(2)(i) is considered a waiver of any benefit
claim under 35 U.S.C. § 120, 121 or 365(c) unless a petition to accept an unintentionally
delayed claim under 37 CFR 1.78(a)(3), the surcharge set forth in 37 CFR 1.17(t), and the
required reference, including the relationship of the applications (unless previously
submitted) are filed. For example, if a benefit claim is submitted without the specific
relationship between the nonprovisional applications before the expiration of the period,
and the specific relationship between the nonprovisional applications is subsequently
submitted after the expiration of the period, a petition and the surcharge would be
required.
Part II:
Reference to Prior Provisional Application(s) Per 37 CFR 1.78(a)(5)(i)
Should Only Include Identification of Prior Provisional Application(s)
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When the domestic benefit of a prior provisional application is being claimed
under 35 U.S.C. § 119(e), however, the relationship between the two applications should
not be specified. 35 U.S.C. § 119(e) provides that a nonprovisional application claiming
the benefit of a provisional application must be filed within twelve months of the
provisional application and must contain, or be amended to contain, a specific reference
to the provisional application. The specific reference required by 35 U.S.C. § 119(e) is
the reference required by 37 CFR 1.78(a)(5). 37 CFR 1.78(a)(5)(i) requires that any
nonprovisional application, or international application designating the United States,
claiming the benefit of one or more prior-filed provisional applications must contain, or
be amended to contain, a reference to each such prior-filed provisional application
identifying it by provisional application number. No relationship should be specified
whenever a claim for the benefit of a provisional application under 35 U.S.C. §
119(e) is made.
If a relationship between a nonprovisional application and a prior provisional
application is submitted, however, it may be unclear whether applicant wishes to claim
the domestic benefit of the provisional application under 35 U.S.C. § 119(e), or the
benefit of an earlier application’s filing date under 35 U.S.C. §120. Thus, applicants
seeking to claim the domestic benefit of a provisional application under 35 U.S.C. §
119(e) should not state that the application is a “continuation” of a provisional
application, nor should it be stated that the application claims benefit under 35 U.S.C. §
120 of a provisional application. If such a claim is submitted in an application
transmitted to the Office other than through the Electronic Filing System, it will be
entered into the Office computer system as a claim to the “benefit” of the provisional
application. Although 35 U.S.C. § 120 does not preclude a benefit claim to a provisional
application (that is, one could obtain the benefit under 35 U.S.C. § 120 of a prior filed
provisional application), such a benefit claim under 35 U.S.C. § 120 is not recommended
as such a claim may have the effect of reducing the patent term, as the term of a patent
issuing from such an application may be measured from the filing date of the provisional
application pursuant to 35 U.S.C. § 154(a)(2). Instead, applicants should state “This
application claims the benefit of U.S. Provisional Application No. 60/---, filed ---”, or
“This application claims the benefit of U.S. Provisional Application No. 60/---, filed ---,
and U.S. Provisional Application 60/---, filed ---." See MPEP § 201.11, Reference to
First Application (8th ed., August 2001).
Part III:
If Benefit is Claimed of a Prior Provisional Application Which was
Filed More Than One Year Before the Subject Application, Then Each Prior
Nonprovisional Application(s) Claiming Benefit of the Provisional Must be Specified
Any nonprovisional application that directly claims the benefit of a provisional
application under 35 U.S.C. § 119(e) must be filed within twelve months from the filing
date of the provisional application. As noted above, an application that itself directly
claims the benefit of a provisional application should identify, but not specify the
relationship to, the provisional application. If the subject nonprovisional application is
not filed within the twelve month period, however, it still may claim the benefit of the
provisional application via an intermediate nonprovisional application under 35 U.S.C.
§ 120. The intermediate nonprovisional application must have been filed within twelve
months from the filing date of the provisional application and the intermediate
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nonprovisional application must have claimed the benefit of the provisional application.
Further, it must be clearly indicated that the intermediate nonprovisional application is
claiming the benefit under 35 U.S.C. § 119(e) of the provisional application. This
identification of the intermediate nonprovisional application is necessary so that the
Office can determine whether the intermediate nonprovisional application was filed
within twelve months of the filing date of the provisional application, and thus, whether
the benefit claim is proper.
Examples
Applicant should state such a benefit claim as follows: “This application is a
continuation of Application No. C, filed ---, which is a continuation of Application No.
B, filed ---, which claims the benefit of U.S. Provisional Application No. A, filed ---.” A
benefit claim that merely states “This application claims the benefit of nonprovisional
Application No. C, filed ---, nonprovisional Application No. B, filed ---, and provisional
application No. A, filed ---” would be improper where the subject application was not
filed within twelve months of the provisional application.
Where the benefit of more than one provisional application is being claimed, the
intermediate nonprovisional application(s) claiming the benefit of each provisional
application must be clearly indicated. Applicant should state, for example, “This
application is continuation of Application No. D, filed ---, which is a continuation-in-part
of Application No. C, filed ---, Application No. D claims the benefit of U.S. Provisional
Application No. B, filed ---, and Application No. C claims the benefit of U.S. Provisional
Application No. A, filed ---.” An example of a proper benefit claim of a prior national
stage of an international application, which claims the priority to a provisional
application, is “This application is a continuation of U.S. Application No. Y, which is the
National Stage of International Application No. PCT/US--/---, filed ---, which claims the
benefit under 35 U.S.C. § 119(e) of U.S. Provisional Application X, filed ---.”
Sanctions for Making Improper Benefit Claims to Provisional Applications
If a benefit claim to a provisional application is submitted without an indication
that an intermediate nonprovisional application directly claims the benefit of the
provisional application and the instant nonprovisional application is not filed within the
twelve month period, or the relationship between nonprovisional applications is not
indicated, the Office will not have sufficient information to enter the benefit claim into
the computer database. Therefore, the Office will not recognize such a benefit claim, and
will not include the benefit claim on the filing receipt. The Office plans to notify
applicants on, or with, the filing receipt that a benefit claim may not have been
recognized because information regarding the intermediate nonprovisional application(s)
and/or the relationship between each nonprovisional application have not been provided.
Applicants are advised that only the benefit claims that are listed on the filing receipt
have been recognized by the Office. Since the filing receipt and the notification will
usually be provided to the applicant shortly after the filing of the application, applicants
should have sufficient opportunity to submit the proper benefit claims within the time
period set in 37 CFR 1.78(a) and thus avoid the need to submit a petition under 37 CFR
1.78(a) and the surcharge set forth in 37 CFR 1.17(t). Failure to timely submit the
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reference required by 37 CFR 1.78(a) is considered a waiver of any benefit claim under
35 U.S.C. § 119(e), 120, 121 or 365(c) unless a petition under 37 CFR 1.78(a), the
surcharge set forth in 37 CFR 1.17(t), identification of the intermediate nonprovisional
application which claims the benefit to the provisional application, and the relationship
between each nonprovisional application are filed.
Part IV:
Office Practice to Not Require Petition and Surcharge if Benefit
Claim is Not Present in the Proper Place But is Recognized By Office Continues But
Applicants Are Advised That Proper Reference Must be Presented
The reference required by 37 CFR 1.78(a)(2) or (a)(5) must be included in an
application data sheet (37 CFR 1.76), or the specification must contain, or be amended to
contain, such reference in the first sentence following the title. Previously, the Office
indicated that if an applicant includes a benefit claim in the application but not in the
manner specified by 37 CFR 1.78(a) (e.g., if the claim is included in an oath or
declaration or the application transmittal letter) within the time period set forth in 37 CFR
1.78(a), the Office will not require a petition under 37 CFR 1.78(a) and the surcharge
under 37 CFR 1.17(t) to correct the claim if the information concerning the claim was
recognized by the Office as shown by its inclusion on the filing receipt. If, however, a
claim is included elsewhere in the application and not recognized by the Office as shown
by its absence on the filing receipt, the Office will require a petition and the surcharge to
correct the claim. See Requirements for Claiming the Benefit of Prior-Filed Applications
Under Eighteen-Month Publication Provisions, 66 Fed. Reg. 67087, 67089-90 (Dec. 28,
2001). The Office will continue to follow this practice.
Sanctions for Making Improper Benefit Claims
Applicants are simply being advised by this notice that the Office will not
recognize any benefit claim where there is no indication of the relationship between the
nonprovisional applications, or no indication of the intermediate nonprovisional
application that is directly claiming the benefit of a provisional application. Applicants
are also reminded that, even if the Office has recognized a benefit claim that includes the
proper reference by entering it into the Office’s database and including it on applicant’s
filing receipt, the benefit claim is not a proper benefit claim under 35 U.S.C. § 119(e)
and/or 35 U.S.C. § 120, and 37 CFR 1.78, unless the reference is included in an
application data sheet, or the first sentence of the specification, and all other requirements
are met.
Part V:
Correcting or Adding a Benefit Claim After Filing
The Office will not grant a request for a corrected filing receipt to include a
benefit claim unless a proper reference to the prior application(s) is included in the first
sentence of the specification, or an application data sheet, within the time period required
by 37 CFR 1.78(a). Any request for corrected filing receipt to include a corrected or
added benefit claim must be submitted within the time period required by 37 CFR 1.78(a)
and be accompanied by an amendment to the specification, or an application data sheet.
If the proper reference was previously submitted, a copy of the amendment, the first page
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of the specification, or the application data sheet, containing the claim should be included
with the request for corrected filing receipt. 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 reference. Applicants are advised that only the benefit claims that
are listed on the filing receipt have been recognized by the Office. Since the filing
receipt and the notification will usually be provided shortly after the filing of the
application, applicants should have sufficient opportunity to submit the proper benefit
claims within the time period set in 37 CFR 1.78(a) and thus avoid the need to submit a
petition under 37 CFR 1.78(a) and the surcharge set forth in 37 CFR 1.17(t). Therefore,
applicants should carefully and promptly review their filing receipts in order to
avoid the need for a petition and the surcharge.
When an unintentionally delayed benefit claim is submitted with a petition under
37 CFR 1.78(a) and the surcharge set forth in 37 CFR 1.17(t), the benefit claim must
include a proper reference to the prior application(s) in order for the petition to be
granted. The reference to the prior application(s) must include: (1) the relationship
between nonprovisional applications (i.e., continuation, divisional, or continuation-inpart), and (2) the indication of any intermediate application that is directly claiming the
benefit of a provisional application, in order to establish copendency throughout the
entire chain of prior applications.
Applicants are also reminded that, if an amendment to the specification, or an
application data sheet (ADS), is submitted in an application under final rejection, the
amendment or ADS must be in compliance with 37 CFR 1.116. The amendment or ADS
filed in an application under final rejection will not be entered as a matter of right. See
MPEP §§ 714.12 and 714.13. Therefore, applicants should consider filing a request for
continued examination (RCE) (including fee and submission) under 37 CFR 1.114 with
the petition to accept an unintentionally delayed benefit claim, the surcharge, and an
amendment that adds the proper reference to the first sentence of the specification or an
ADS.
Part VI:
Each Intermediate Prior Application Must Have Proper Reference
If the benefit of more than one prior application is claimed, applicant should also
make sure that the proper references are made in each intermediate nonprovisional
application in the chain of prior applications. If an applicant desires, for example, the
following 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 U.S.
Provisional Application No. A, filed ---,” then Application No. C must include a benefit
claim containing a reference to Application No. B and provisional Application No. A,
and Application No. B must include a benefit claim containing a reference to provisional
Application No. A.
Part VII:
Adding an Incorporation-By-Reference Statement in a Benefit Claim
is Not Permitted After Filing
An incorporation-by-reference statement added after the filing date of an
application is not permitted because no new matter can be added to an application after
its filing date. See 35 U.S.C. § 132(a). If an incorporation-by-reference statement is
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included in an amendment to the specification to add a benefit claim after the filing date
of the application, the amendment would not be proper. When a benefit claim is
submitted after the filing of an application, the reference to the prior application cannot
include an incorporation-by-reference statement of the prior application. See Dart
Industries v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980). Therefore, the
Office will not grant a petition to accept a benefit claim that includes an incorporationby-reference statement of a prior application, unless the incorporation-by-reference
statement was submitted on filing of the application.
Inquiries regarding this notice should be directed to Eugenia A. Jones or
Joni Y. Chang, Legal Advisors, Office of Patent Legal Administration, by telephone at
(703) 305-1622.
Date: _2/24/03_______
Stephen G. Kunin
Deputy Commissioner for Patent Examination Policy
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