211.01 Requirements Related to the Prior-Filed Application [R-11.2013]
I. THE PRIOR-FILED APPLICATION MUST BE ENTITLED TO A FILING DATE
If the prior-filed application is a nonprovisional application filed under 35 U.S.C. 111(a), the application must be entitled to a filing date as set forth in 35 CFR 1.53(b) or (d), and the basic filing fee as set forth in 37 CFR 1.16 must have been paid within the pendency of the application. See 37 CFR 1.78. If the prior-filed application is an international application designating the United States of America, the prior-filed application must be entitled to a filing date in accordance with PCT Article 11. If the prior-filed application is a provisional application, the provisional application must be entitled to a filing date as set forth in 37 CFR 1.53(c) and the basic filing fee of the provisional application must have been paid within the time period set in 37 CFR 1.53(g) (the filing fee is paid within the time period set in 37 CFR 1.53(g) if an extension of time was filed to make a response to a notice to file missing parts requiring the filing fee timely).
Form paragraph 2.40 may be used to notify applicant that the application is not entitled to the benefit of the prior-filed application because the prior-filed application was not entitled to a filing date and/or did not include the basic filing fee.
¶ 2.40 Prior-Filed Application Not Entitled to a Filing Date or Basic Filing Fee Was Not Paid
This application claims the benefit of prior-filed application No. [1] under 120, 121, or 365(c) or under 35 U.S.C. 119(e). If the prior-filed application is an international application designating the United States of America, it must be entitled to a filing date in accordance with PCT Article 11. See 37 CFR 1.78. If the prior-filed application is a nonprovisional application, the prior-filed application must be entitled to a filing date as set forth in 37 CFR 1.53(b) or 1.53(d) and include the basic filing fee set forth in 37 CFR 1.16. See 37 CFR 1.78. If the prior-filed application is a provisional application, the prior-filed application must be entitled to a filing date as set forth in 37 CFR 1.53(c) and the basic filing fee must be paid within the time period set forth in 37 CFR 1.53(g). See 37 CFR 1.78.
This application is not entitled to the benefit of the prior-filed application because the prior-filed application [2]. Applicant is required to delete the reference to the prior-filed application.
Examiner Note:
1. Use this form paragraph to notify applicant that the application is not entitled to the benefit of the prior-filed application because the prior-filed application was not entitled to a filing date and/or did not include the basic filing fee.
2. In bracket 1, insert the application number of the prior-filed application.
3. In bracket 2, insert "was not entitled to a filing date"; "did not include the basic filing fee"; or "was not entitled to a filing date and did not include the basic filing fee".
II. SAME INVENTOR OR A COMMON JOINT INVENTOR
The statute requires that applications claiming benefit of the earlier filing date under 35 U.S.C. 119(e) or 120 name the inventor or at least one joint inventor named in the previously filed application or provisional application. Note that to be entitled to the benefit of any prior-filed application(s), in addition to naming the inventor or at least one common joint inventor, the invention claimed in the later-filed application must be supported in the manner provided by the 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, except for the best mode requirement. See MPEP § 211.04.
III. TRANSITION APPLICATION STATEMENT
If a nonprovisional application filed on or after March 16, 2013, claims the benefit of the filing date of a provisional or nonprovisional application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect within a specified time period. See 37 CFR 1.78(a)(6) and (c)(6) and MPEP § 210, subsection III.
IV. ADDITIONAL REQUIREMENTS
See MPEP § 211.01(a) for additional information and requirements specific to claiming the benefit of a provisional application.
See MPEP § 211.01(b) for additional information and requirements specific to claiming the benefit of an earlier-filed nonprovisional application.
211.01(a) Claiming the Benefit of a Provisional Application [R-11.2013]
When a later-filed application is claiming the benefit of a prior-filed provisional application under 35 U.S.C. 119(e), the nonprovisional application must be filed not later than 12 months after the date on which the provisional application was filed. If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the nonprovisional application may be filed on the next succeeding business day. See 35 U.S.C. 21(b), 37 CFR 1.7(b), and MPEP § 201.04 and § 505.
In addition, each prior-filed provisional application must have the same inventor or at least one joint inventor in common with the later-filed application and must be entitled to a filing date as set forth in 37 CFR 1.53(c), and the basic filing fee set forth in 37 CFR 1.16(d) must have been paid for such provisional application within the time period set forth in 37 CFR 1.53(g). See MPEP § 211.01.
If benefit is being claimed to a provisional application which was filed in a language other than English, (A) an English language translation of the provisional application, and (B) a statement that the translation is accurate, are required to be filed in the provisional application. If the translation and statement were not filed in the provisional application, the applicant will be notified in the nonprovisional application and given a period of time within which to file the translation and statement in the provisional application, and a reply in the nonprovisional application confirming that the translation and statement were filed in the provisional application. In the alternative, for applications filed on or after September 16, 2012, applicant may reply to the notice by filing a corrected application data sheet in compliance with 37 CFR 1.76(c) deleting the reference to the prior-filed provisional application. For applications filed prior to September 16, 2012, applicant has the option of filing an amendment or a supplemental application data sheet in compliance with 37 CFR 1.76(c) (pre-AIA) deleting the benefit claim. In a pending nonprovisional application, failure to timely reply to such notice will result in the abandonment of the nonprovisional application. Form paragraph 2.38 may be used to notify applicant that an English translation of the non-English language provisional application is required.
¶ 2.38 Claiming Benefit to a Non-English Language Provisional Application
This application claims benefit to provisional application No. [1], filed on [2], in a language other than English. An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No. [3]. See 37 CFR 1.78. The [4] required by 37 CFR 1.78 is missing. Accordingly, applicant must supply 1) the missing [5] in provisional application No. [6] and 2) in the present application, a confirmation that the translation and statement were filed in the provisional application. If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned. See 37 CFR 1.78.
Examiner Note:
1. Use this form paragraph to notify applicant that an English translation of the non-English language provisional application and/or a statement that the translation is accurate is required. Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.
2. In brackets 1 and 3, insert the application number of the non-English language provisional application.
3. In bracket 2, insert the filing date of the prior provisional application.
4. In brackets 4 and 5, insert --English translation and a statement that the translation is accurate-- or --statement that the translation is accurate--, where appropriate.
Applicant may claim the benefit of a provisional application by claiming the benefit of an intermediate copending nonprovisional application. The later-filed application must claim the benefit of the intermediate nonprovisional application under 35 U.S.C. 120, 121, or 365(c); the intermediate application must be filed not later than 12 months after the filing date of the provisional application (in which the basic filing fee was timely filed); and both the later-filed application and the intermediate application must claim the benefit of the provisional application under 35 U.S.C. 119(e).
211.01(b) Claiming the Benefit of a Nonprovisional Application [R-11.2013]
I. COPENDENCY
When a later-filed application is claiming the benefit of a prior-filed nonprovisional application under 35 U.S.C. 120, 121, or 365(c), the later-filed application must be copending with the prior application or with an intermediate nonprovisional application similarly entitled to the benefit of the filing date of the prior application. Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application. If the prior application issues as a patent, it is sufficient for the later-filed application to be copending with it if the later-filed application is filed on the same date, or before the date that the patent issues on the prior application. Thus, the later-filed application may be filed under 37 CFR 1.53(b) while the prior application is still pending before the examiner, or is in issue, or even between the time the issue fee is paid and the patent issues. Patents usually will be published within four weeks of payment of the issue fee. Applicants are encouraged to file any continuing applications no later than the date the issue fee is paid, to avoid issuance of the prior application before the continuing application is filed.
If the prior application is abandoned, the later-filed application must be filed before the abandonment in order for it to be copending with the prior application. The term "abandoned," refers to abandonment for failure to prosecute (MPEP § 711.02), express abandonment (MPEP § 711.01), abandonment for failure to pay the issue fee (37 CFR 1.316), and abandonment for failure to notify the Office of a foreign filing after filing a nonpublication request under 35 U.S.C. 122(b)(2)(B)(iii) (MPEP § 1124). The expression "termination of proceedings" includes the situations when an application is abandoned or when a patent has been issued, and hence this expression is the broadest of the three copendency definitions.
After a decision by the Court of Appeals for the Federal Circuit in which the rejection of all claims is affirmed, the proceeding is terminated when the mandate is issued by the Court. There are several other situations in which proceedings are terminated as is explained in MPEP § 711.02(c).
When proceedings in an application are terminated, the application is treated in the same manner as an abandoned application, and the term "abandoned application" may be used broadly to include such applications.
The term "continuity" is used to express the relationship of copendency of the same subject matter in two different applications naming the same inventor or at least one joint inventor in common. The later-filed application may be referred to as a continuing application when the prior application is not a provisional application. Continuing applications include those applications which are called divisions, continuations, and continuations-in-part. The statute is so worded that the prior application may disclose more than the later-filed application, or the later-filed application maydisclose more than the prior application, and in either case the later-filed application is entitled to the benefit of the filing date of the prior application as to the common subject matter disclosed in compliance with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, except for the best mode requirement.
A later-filed application which is not copending with the prior application (which includes those called "substitute" applications as set forth in MPEP § 201.02) is not entitled to the benefit of the filing date of the prior application. Therefore, prior art against the claims of the later-filed application is determined based on the filing date of the later-filed application. An applicant should not refer to such prior application(s) in an application data sheet (see 37 CFR 1.76) and is not required to refer to the prior application in the specification of the later-filed application, but is required to otherwise call the examiner’s attention to the prior application if it or its contents or prosecution is material to patentability of the later-filed application as defined in 37 CFR 1.56(b).
Use form paragraphs 2.09 and 2.11 to indicate the benefit claim under 35 U.S.C. 120, 121, or 365(c) is improper because there is no copendency between the applications.
¶ 2.11 Application Must Be Copending With Parent
This application is claiming the benefit of prior-filed nonprovisional application No. [1] under 35 U.S.C. 120, 121, or 365(c). Copendency between the current application and the prior application is required. Since the applications are not copending, the benefit claim to the prior-filed nonprovisional application is improper. Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications.
Examiner Note:
1. This form paragraph must be preceded by heading form paragraph 2.09.
2. Do not use this form paragraph for benefit claims under 35 U.S.C. 119(e) to provisional applications.
3. In bracket 1, insert the application number of the prior-filed nonprovisional application.
Use form paragraphs 2.09 and 2.11.01 to indicate that the later-filed application must be filed not later than 12 months after the filing date of the provisional application for which a benefit is sought.
¶ 2.11.01 Application Must Be Filed Within 12 Months From the Provisional Application
This application is claiming the benefit of provisional application No. [1] under 35 U.S.C. 119(e). However, this application was not filed within twelve months from the filing date of the provisional application, and there is no indication of an intermediate nonprovisional application that is directly claiming the benefit of the provisional application and filed within 12 months of the filing date of the provisional application.
Note: If the day that is 12 months after the filing date of the provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the nonprovisional application claiming the benefit of the provisional application may be filed on the next succeeding business day.
Applicant is required to delete the claim to the benefit of the prior-filed provisional application, unless applicant can establish that this application, or an intermediate nonprovisional application, was filed within 12 months of the filing date of the provisional application.
II. BENEFIT CLAIMS TO MULTIPLE PRIOR APPLICATIONS
Sometimes a pending application is one of a series of applications wherein the pending application is not copending with the first filed application but is copending with an intermediate application entitled to the benefit of the filing date of the first application. If applicant wishes that the pending application have the benefit of the filing date of the first filed application, applicant must, besides making reference to the intermediate application, also make reference to the first application. See Sticker Indus. Supply Corp. v. Blaw-Knox Co., 405 F.2d 90, 160 USPQ 177 (7th Cir. 1968) and Hovlid v. Asari, 305 F. 2d 747, 134 USPQ 162 (9th Cir. 1962). The reference to the prior applications must identify all of the prior applications and indicate the relationship (i.e., continuation, divisional, or continuation-in-part) between each nonprovisional application in order to establish copendency throughout the entire chain of prior applications. Appropriate references must be made in each intermediate application in the chain of prior applications. See MPEP § 211.02 for guidance regarding properly referencing prior applications.
There is no limit to the number of prior applications through which a chain of copendency may be traced to obtain the benefit of the filing date of the earliest of a chain of prior copending applications. See In re Henriksen, 399 F2.d 253, 158 USPQ 224 (CCPA 1968). But see MPEP § 2190 (prosecution laches).
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. Although an application that itself directly claims the benefit of a provisional application is not required to specify the relationship to the provisional application, if the instant nonprovisional application is not filed within the 12 month period, but claims the benefit of an intermediate nonprovisional application under 35 U.S.C. 120 that was filed within 12 months from the filing date of the provisional application and claimed the benefit of the provisional application, the intermediate application must be clearly identified as claiming the benefit of the provisional application so that the Office can determine whether the intermediate nonprovisional application was filed within 12 months of the provisional application and thus, whether the claim is proper. 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 indicated. See MPEP § 211.02 for guidance regarding properly referencing prior applications.
If a benefit claim to a provisional application is submitted without an indication that an intermediate application directly claims the benefit of the provisional application and the instant nonprovisional application is not filed within the 12 month period or the relationship between each nonprovisional application is not indicated, the Office will not recognize such benefit claim and will not include the benefit claim on the filing receipt. Therefore, a petition under 37 CFR 1.78 and the surcharge set forth in 37 CFR 1.17(t) will be required if the intermediate application and the relationship of each nonprovisional application are not indicated within the period set forth in 37 CFR 1.78.
211.01(c) Claiming the Benefit of a International Application Designating the United States
Pursuant to 35 U.S.C. 365(c), a regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b) may claim benefit of the filing date of an international application which designates the United States without completing the requirements for entering the national stage under 35 U.S.C. 371. See MPEP §§ 1895 and 1895.01. Thus, rather than submitting a national stage application under 35 U.S.C. 371, applicant may file a continuation, divisional, or continuation-in-part of an international (PCT) application under 35 U.S.C. 111(a). Such applications are often referred to as "bypass" applications. To claim the benefit of the filing date of an international application, the international application must designate the United States and be entitled to a filing date in accordance with PCT Article 11, and the later-filed application must be filed during the pendency (e.g., prior to the abandonment) of the international application.
The ability to take such action is based on provisions of the United States patent law. 35 U.S.C. 363 provides that "An international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office." 35 U.S.C. 371(d) indicates that failure to timely comply with the requirements of 35 U.S.C. 371(c) "shall be regarded as abandonment by the parties thereof...." It is therefore clear that an international application which designates the United States has the effect of a pending U.S. application from the international application filing date until its abandonment as to the United States. The first sentence of 35 U.S.C. 365(c) specifically provides that "In accordance with the conditions and requirements of section 120 of this title,... a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States." The condition of 35 U.S.C. 120 relating to the time of filing requires the later application to be "filed before the patenting or abandonment of or termination of proceedings on the first application...."