202 Cross-Noting [R-01.2024]

I. NOTATION IN FILE HISTORY REGARDING PRIOR U.S. APPLICATIONS, INCLUDING PROVISIONAL APPLICATIONS

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, 365(c), or 386(c) in continuation-in-part, continuation, divisional, 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 an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012. See 37 CFR 1.78(a)(3) and (d)(2) and MPEP § 211et seq. 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 included on the 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 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 the benefit of, or priority to, earlier domestic or foreign application(s), the earlier application(s) should not be reflected on the bib-data sheet because a provisional application is not entitled to the benefit of, or right of priority to, any other application. See 35 U.S.C. 111(b)(7).

Should there be an error in the preprinted prior application data, the correction or entry of the data in the Patent Data Portal data base can be made by technical support staff of the Technology Center, if appropriate. Upon entry of the data, a new bib-data sheet should be printed and scanned into the file. If the error was an applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate. See MPEP § 601.05et seq. and MPEP § 211.02(a). A petition for an unintentionally delayed benefit claim may also be required. See MPEP § 211.04.

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 § 2136.03 and MPEP § 2154.01(b) for additional information. See MPEP § 306 for information pertaining to the assignment of applications claiming a benefit under 35 U.S.C. 119(e) or 120 to the filing date of an earlier filed application. 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 bib-data sheet.

II. NOTATION IN FILE HISTORY REGARDING FOREIGN PRIORITY APPLICATION

If a foreign application listed on the oath or declaration (for applications filed prior to September 16, 2012) or application data sheet is not listed on the bib-data sheet and the foreign priority claim is proper (e.g., the foreign priority claim was timely made ), the examiner should provide the information regarding the foreign application number, the country, and the filing date to the Legal Instrument Examiner for correction. If applications are listed on the bib-data sheet but filed in countries not qualifying for benefits under 35 U.S.C. 119(a)-(d), the examiner should request that a Legal Instrument Examiner or other technical support staff remove reference to the applications. A listing of countries qualifying for benefits under 35 U.S.C. 119(a)-(d) appears at MPEP § 213.01.

Where foreign applications are listed on the pre‑AIA 37 CFR 1.63 oath or declaration (for applications filed prior to September 16, 2012) or application data sheet, the examiner should check that such foreign applications are properly listed on the bib-data sheet. A bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application that the U.S. application is claiming the priority of. The examiner should check this information for accuracy. Should there be an error on the oath or declaration, or application data sheet itself, the examiner should require a new oath or declaration, or application data sheet, where appropriate. A petition for an unintentionally delayed claim for priority may also be required. See MPEP § 214.02. However, the examiner should acknowledge on the bib-data sheet if foreign priority is claimed and must indicate in the Office action and on the bib-data sheet whether the conditions of 35 U.S.C. 119(a)-(d) have been met.

If the filing dates of several foreign applications are claimed, information regarding each of the foreign applications is to be entered on the bib-data sheet.

The front page of the patent when it is issued, and the listing in the Official Gazette, will refer to the claim of priority, giving the country, the filing date, and the number of the foreign application in those applications in which the bib-data sheet has been endorsed.

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