Claiming The Benefit Of Priority, Examples Of How To Do It, And How To Correct A Failure To Make A Claim

November 13, 2009

in Practice Suggestions,Useful Information

This post discusses some of the mechanics involved in securing a right of priority to an earlier filed application, provides some examples of acceptable claims of priority, and ways to correct a failure to make the required claim.

 

BACKGROUND

When certain conditions are satisfied, a patent application is entitled to the benefit of the filing date of an earlier filed application.These specific conditions are set forth in 35 U.S.C. § 120 and 37 CFR1.78(a)(1) – (a)(3) for prior nonprovisional applications and 35 U.S.C.119(e) and 37 CFR1.78(a)(4) – (a)(6) for provisional applications.

Generally, the Rules require that an Applicant make a “specific” reference to the prior-filed application in either:

1. the specification; or

2. an application data sheet (ADS).

The Rules do not articulate any particular form of the required “specific” reference.They do, however, dictate that the “specific” reference:

1.  identify the prior-filed application by application number; and

2. identify the specific relationship of the applications (i.e., continuation, divisional, or continuation-in-part).

Also, when there is a claim to a chain of applications, the relationship must be stated for each application, to establish the required co-pendency throughout the chain.

 

EXAMPLES

Example #1 – Benefit Claim to a Nonprovisional Application

CROSS-REFERENCE TO RELATED APPLICATION

This application is a continuation of U.S. patent application no. 12/123,456, filed December 12, 2007.

Example #2 – Benefit Claim to Nonprovisional Applications

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation-in-part of Application No. 12/123,456, filed 21 March 2007, and is also a continuation-in-part of Application No. 12/234,567, filed 31 March 2007.

Example #3 – Benefit Claim to Chain of Nonprovisional Applications

If the benefit claim involves a chain of nonprovisional applications, then the specific reference must also include the interrelationships of the applications relative to each other, as a continuation, divisional, or continuation-in-part, to establish co-pendency throughout the entire chain.

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation of Application No. 12/123,456, filed 21 March 2007, which is a divisional of Application No. 11/123,456, filed 21 March 2006, which is a continuation-in-part of Application No. 10/123,456, filed 1 January 2006.

 

Benefit Claims to International (PCT) Applications

When the specific reference is to an international application, an Applicant is required to:

1. Identify the International application by International application number and International filing date (not the § 371(c) compliance date); and

2. provide any specific interrelationship of multiple applications, when present.

Example #4 – Benefit Claim to a National Stage (§ 371) application

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation of Application No. 10/123,456, which is the National Stage of International Application No. PCT/US2007/000004, filed January 1, 2007.

Example #5 – Benefit Claim to a Bypass Application

CROSS-REFERENCE TO RELATED APPLICATION

This application is a continuation of International Application No. PCT/US2008/00050, filed January 1, 2008.

Note: do not use the §371(c) compliance date for bypass applications.

Example #6 – Benefit Claim to an International Application (Benefiting From an Earlier Nonprovisional)

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation of International Application No. PCT/US2008/00050, filed January 1, 2008, which is a continuation of U.S. Application No. 10/123,456, filed February 1, 2006.

Example #7 – Benefit Claim to Provisional Applications

Here again, a specific reference to the prior-filed application is required in the first sentence of the specification or an ADS.This specific reference need not state the relationship between the nonprovisional application and the provisional application.

CROSS-REFERENCE TO RELATED APPLICATION

This application claims the benefit of U.S. Provisional Application No. 60/123,456, filed March 1, 2008.

 

THE TIME LIMITS AND CORRECTION

The Rules limit the time in which an Applicant may make a benefit claim.37 CFR. 1.78(a) requires that any claim of priority must be made before the later of four months from the actual filing date or the date on which the national stage commenced, or sixteen months from the filing date of the prior-filed application.

 

The Impact of Failure To Make A Timely Benefit Claim

The failure to timely submit the “specific” reference is considered a waiver of any benefit claim.The failure to make a timely claim is correctable, but this correction can be relatively expensive.

 

How Do You Know If A Claim Has Been Correctly Acknowledged by the USPTO?

The Office, via the Official Filing Receipt, notifies Applicants that a benefit claim may not have been recognized or was not accurately recognized.For this reason, it is important to review every Official Filing Receipt, which is usually provided shortly after the filing of an application so as to provide sufficient opportunity to make/correct a benefit claim within the specified time.

Timely Correction

During the time period set forth in 37 CFR 1.78(a), an Applicant may correct a benefit claim by:

1. filing a request for corrected filing receipt, and

2. making the required “specific” reference.

Here, the required “specific: reference can be made either:

by filing an amendment to the specification or by filing an ADS; or

by submitting a copy of the amendment or ADS, if the claim was previously submitted.

Note – There is an important departure from standard USPTO practice here.A preliminary amendment to merely add a claim of priority does not require a substitute specification.See MPEP 714.01(e).The Office would prefer that claims are made via an ADS, however.

 

Untimely Correction

After the time period set forth in 37 CFR 1.78(a), an Applicant may correct a benefit claim by:

1. filing a petition to accept an unintentionally delayed claim under rule 1.78(a) and the surcharge under rule 1.17(t) (presently 1500.00 USD); and

2.making the required specific reference (including the relationship of the non-provisional applications and identification of any intermediate application which directly claims the benefit of the provisional application).

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© 2009, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

{ 5 comments… read them below or add one }

Itzhak Yogev November 15, 2009 at 9:41 am

Michael, You relatd only to claiming the benefit of an earlier US (or PCT) application.
Claiming foreing priority has other requirements.
We look forward to the next post in this regard
Itzik

Feigin, Patent Attorney November 17, 2009 at 5:02 pm

… you can also specify priority claims in an Application Data Sheet and you don’t need to put it in the specification, though I still do just in case.

mike November 20, 2009 at 4:53 pm

Dear Feigin,

Thank you for your comment. You are correct. I touched on this point briefly in the “BACKGROUND” section. I also prefer the backup of doing it both ways.

Bill January 13, 2012 at 9:28 pm

Thank you, this information is very useful. My question is, can I claim the benefit of a provisional application for a single claim in a non-provisional application which contains new matter over the provisional? At least one of the claims of the non-provisional speaks to the matter disclosed in the provisional.

mike January 25, 2012 at 1:32 pm

Dear Bill, I believe that the short answer is yes. However, only the subject matter that finds support in the provisional will enjoy the benefit of the earlier filing date. The rest will only enjoy the filing date of the nonprovisional.

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