United States Patent and Trademark Office OG Notices: 18 March 2003
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 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-in-part) 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
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 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 co-pendency 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)
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 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 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 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-in-part), 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
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
incorporation-by-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.
February 24, 2003 STEPHEN G. KUNIN
Deputy Commissioner for
Patent Examination Policy