202.02 Notation in File History Regarding Prior U.S. Applications, Including Provisional Applications [R-3]
For Image File Wrapper (IFW) processing, see the IFW Manual.The front page of a printed patent identifies all prior applications for which benefits are claimed under 35 U.S.C. 119 (e), 120, 121, or 365 (c) in continuation-in-part, continuation, divisional, substitute, and reissue applications. Therefore, the identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in either the first sentence(s) of the specification or in an application data sheet. See 37 CFR 1.78 (a) and MPEP § 201.11. For example, the reference to a prior nonprovisional application must include the appropriate relationship (e.g., continuation, divisional, or continuation-in-part) between the nonprovisional applications.
The front page of a printed patent issuing on a continued prosecution application (CPA) filed under 37 CFR 1.53(d) will identify the application number and filing date of the most recent noncontinued prosecution application (but not the filing date of the CPA) as well as all prior applications from which benefit was claimed in the most recent noncontinued prosecution application.
Where prior application data, including provisional application data, is preprinted on the PALM bib-data sheet , the examiner should check that data for accuracy, including whether the application is, in fact, copending with the prior nonprovisional application or applications for which benefit is claimed. Similarly, the application number of any provisional application for which benefit is claimed should be printed on the PALM bib-data sheet. If applicant claims benefit under 35 U.S.C. 119(e) to a prior provisional application, and states that the provisional application claims priority to earlier domestic or foreign application(s), the earlier application(s) should not be reflected on the PALM bib-data sheet because a provisional application is not entitled to the right of priority of any other application. See 35 U.S.C. 111(b)(7).
Where the data is correct, the examiner should initial the PALM bib-data sheet in the provided space. Should there be error in the preprinted prior application data, the correction or entry of the data in the PALM data base can be made by technical support staff of the Technology Center. Upon entry of the data, a new PALM bib-data sheet should be printed and scanned into the file.
The inclusion of prior application information in the patent does not necessarily indicate that the claims are entitled to the benefit of the earlier filing date.
See MPEP § 306 for work done by the Assignment Division pertaining to these particular types of applications.
In the situation in which there has been no reference to a prior application because the benefit of its filing date is not desired, no notation as to the prior application is made on the PALM bib-data sheet .