MPEP 1504.20
Benefit Under

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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1504.20    Benefit Under 35 U.S.C. 120 [R-08.2017]

35 U.S.C. 120  Benefit of earlier filing date in the United States.

[Editor Note: Applicable to a patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note) ). See 35 U.S.C. 120 (pre-AIA) for the law otherwise applicable.]

An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385 which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this section.

35 U.S.C. 120 (pre-AIA) Benefit of earlier filing date in the United States.

An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section.

For a benefit claim under 35 U.S.C. 120, the later-filed application must contain a reference to the prior-filed copending application. For applications filed on or after September 16, 2012, the specific reference to the prior application must be in the application data sheet (37 CFR 1.76 ). For applications filed prior to September 16, 2012, the specific reference to the prior application must be in the first sentence(s) of the specification or in an application data sheet. The prior-filed application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. In addition, the prior-filed application must either be: (i) a nonprovisional application under 35 U.S.C. 111(a) that is entitled to a filing date as set forth in §§ 1.53(b) or 1.53(d) for which the basic filing fee set forth in § 1.16 has been paid within the pendency of the application, (ii) an international design application entitled to a filing date in accordance with § 1.1023 and designating the United States; or (iii) an international application entitled to a filing date in accordance with PCT Article 11 and designating the United States. See 37 CFR 1.78(d).

Except as provided for in 37 CFR 1.78(e), the failure to timely submit the reference required under 35 U.S.C. 120 and 37 CFR 1.78 in a design application during its pendency is considered a waiver of any benefit under 35 U.S.C. 120, 121, 365(c) or 386(c). See 37 CFR 1.78(d)(3)(iii).

See MPEP § 211 for additional information concerning benefit claims under 35 U.S.C. 120.

Form paragraph 15.26 may be used to remind applicant where a reference to the prior application must be included in the first sentence(s) of the specification or in an application data sheet.

¶ 15.26    Identification of Prior Application(s) in Nonprovisional Applications - Benefit Claimed

Applicant is reminded of the following requirement:

To claim the benefit of a prior-filed application, a continuation or divisional application (other than a continued prosecution application filed under 37 CFR 1.53(d) ), must include a specific reference to the prior-filed application in compliance with 37 CFR 1.78. If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet. For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

Attention is directed to the requirements for "continuing" applications set forth in MPEP §§ 201.07, 201.08, and § 2.1. Applicants are entitled to claim the benefit of the filing date of earlier applications for later claimed inventions under 35 U.S.C. 120 only when the earlier application discloses that invention in the manner required by 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first paragraph). In all continuation and divisional applications, a determination must be made by the examiner as to whether the conditions for priority under 35 U.S.C. 120 have been met. The claimed design in a continuation application and in a divisional application must be disclosed in the original application. If this condition is not met, the application is not entitled to the benefit of the earlier filing date and the examiner should notify applicant accordingly by specifying the reasons why applicant is not entitled to claim the benefit under 35 U.S.C. 120. Form paragraphs 2.09, 2.10 and 2.10.01 may be used followed by a specific explanation as to why the later filed application fails to comply with the requirements of 35 U.S.C. 120. The examiner should also require applicant to change the relationship (continuation or divisional application) to continuation-in-part or delete the benefit claim. For applications filed on or after September 16, 2012, applicant can delete or change the benefit claim by filing a corrected application data sheet in compliance with 37 CFR 1.76(c). For applications filed prior to September 16, 2012, applicant can delete or change the benefit claim by amending the specification (if the benefit claim is in the specification) or by submitting a supplemental application data sheet in compliance with pre-AIA 37 CFR 1.76(c). If applicant chooses to change the relationship (continuation or divisional application) to continuation-in-part, note that for applications filed on or after September 16, 2012, a continuing application, including a continuation-in-part application, may be filed with a copy of an oath or declaration or substitute statement from the prior nonprovisional application, provided that the oath or declaration is in compliance with 37 CFR 1.63 or the substitute statement is incompliance with 37 CFR 1.64. See 37 CFR 1.63(d)(1). See also MPEP § 602.05(a) (more information regarding the oath or declaration in continuing applications filed on or after September 16, 2012). For continuation-in-part applications filed before September 16, 2012, a newly executed oath or declaration must be filed. See pre-AIA 37 CFR 1.63(e).

In general, a mere statement that an application is a continuation or division of an earlier filed application is not an incorporation of anything into the application containing such reference for purposes of satisfying the disclosure requirements of 35 U.S.C. 112(a), (or for applications filed prior to September 16, 2012, 35 U.S.C. 112, first paragraph). See In re de Seversky, 474 F.2d 671, 177 USPQ 144 (CCPA 1973). See also MPEP § 608.01(p). However, for applications filed on or after September 21, 2004, 37 CFR 1.57(b) provides that a claim under 37 CFR 1.78 for the benefit of a prior-filed application, that was present on the filing date of the application, is considered an incorporation by reference as to inadvertently omitted material. See MPEP § 217.

A continuation-in-part application is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the earlier nonprovisional application. Only when the claim of the continuation-in-part application is disclosed in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph in the earlier non-provisional application will the claim be entitled to the benefit of the filing date of the earlier nonprovisional application. However, unless the filing date of the earlier application is needed, such as with the existence of intervening prior art, the entitlement to benefit in the continuation‐in‐part application, as based on 35 U.S.C. 120, will not be considered by the examiner. See In re Corba, 212 USPQ 825 (Comm’r Pat. 1981 ).

When the first application is found to be fatally defective under 35 U.S.C. 112 because of insufficient disclosure to support an allowable claim and such position has been made of record by the examiner, a second design patent application filed as an alleged "continuation-in-part" of the first application to supply the deficiency is not entitled to the benefit of the earlier filing date. See Hunt Co. v. Mallinckrodt Chemical Works, 177 F.2d 583, 83 USPQ 277 (2d. Cir. 1949) and cases cited therein. Also, a design application filed as a "continuation-in-part" that changes the shape or configuration of a design disclosed in an earlier application is not entitled to the benefit of the filing date of the earlier application. See In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983). However, a later filed application that changes the scope of a design claimed in an earlier filed application by reducing certain portions of the drawing to broken lines is not a change in configuration as defined by the court in Salmon. See MPEP § 1504.04, subsection II.

Form paragraph 15.74 may be used in an Office action in any application identified as a continuation-in-part which claims benefit under 35 U.S.C. 120 to a prior application and the examiner has not considered whether the application is entitled to benefit of the earlier filing date. Form paragraph 15.74.01 should be used where there is intervening prior art and the examiner has determined that the application is not entitled to benefit of the earlier filing date.

¶ 15.74    Continuation-In-Part

Reference to this design application as a continuation-in-part under 35 U.S.C. 120 is acknowledged. Unless the filing date of the earlier application is actually needed, such as to avoid intervening prior art, the entitlement to priority in this CIP application will not be considered. See In re Corba, 212 USPQ 825 (Comm’r Pat. 1981).

Examiner Note:

This form paragraph should be used to notify applicant that the C-I-P application is not entitled to the benefit of the parent application under 35 U.S.C. 120.

¶ 15.74.01    Continuation-In-Part – Not Entitled To Benefit of Earlier Filing Date

Reference to this design application as a continuation-in-part under 35 U.S.C. 120 is acknowledged. Applicant is advised that the design claimed in the present application is not disclosed in the parent application. Therefore, the parent application does not satisfy the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, under 35 U.S.C. 120 for the design claimed in the present application and the present application is not entitled to the benefit of the earlier filing date.

Examiner Note:

This form paragraph should be used to notify applicant that the C-I-P application is not entitled to the benefit of the parent application under 35 U.S.C. 120.

Where a continuation-in-part application claims benefit under 35 U.S.C. 120 of the filing date of an earlier application, and also claims priority under 35 U.S.C. 119(a) -(d) of a foreign application through the earlier application, and the conditions of 35 U.S.C. 120 are not met, e.g., insufficient disclosure under 35 U.S.C. 112, the continuation-in-part application is not entitled to the benefit of the filing date of the parent application. In this situation, a determination must be made as to whether the foreign application would qualify as prior art under pre-AIA 35 U.S.C. 102(d) /172. To qualify as prior art under pre-AIA 35 U.S.C. 102(d) /172, the foreign application (for patent or registration) must have been filed more than six months before the filing date of the U.S. (CIP) application and the foreign application for patent/registration must have matured into a form of patent protection prior to the filing date of the U.S. (CIP) application. To determine the status of the foreign application, the charts in MPEP § 1504.02 should be used. If the foreign application for patent/registration has matured into a form of patent protection, the foreign application would qualify as prior art under pre-AIA 35 U.S.C. 102(d) /172 and the examiner should consider whether the design shown in the foreign application papers would anticipate or render the claim in the CIP application obvious. If the design shown in the foreign application papers would anticipate or render the claim in the CIP application obvious, the claim should be rejected under 35 U.S.C. 102 /103 using form paragraphs 15.74.01 and 15.75.fti followed with a rejection under pre-AIA 35 U.S.C. 102(d) /pre-AIA 35 U.S.C. 103(a).

¶ 15.75.fti    Preface to Rejection in CIP Based on pre-AIA 35 U.S.C. 102(d)/35 U.S.C.172

Reference to this design application as a continuation-in-part under 35 U.S.C. 120 is acknowledged. Applicant is advised that the design disclosed in the parent application is not the same design as the design disclosed in this application. Therefore, this application does not satisfy the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, under 35 U.S.C. 120 and is not entitled to benefit of the earlier filing date.

The parent application claimed foreign priority under 35 U.S.C. 119(a) -(d), however, the present application is not entitled to the benefit of the earlier filing date of the parent application. The foreign application that the parent application has claimed priority to has matured into a patent/registration before the filing date of the present application and was filed more than six months before the filing date of the present application. Therefore, the foreign patent/registration qualifies as prior art under pre-AIA 35 U.S.C. 102(d) /35 U.S.C. 172.

Examiner Note:

This form paragraph should be followed with a rejection under pre-AIA 35 U.S.C. 102(d) / pre-AIA 35 U.S.C. 103(a) depending on the difference(s) between this claim and the design shown in the priority papers.

If the status of the foreign application cannot be determined the following form paragraph should be used instead.

¶ 15.75.01.fti    C-I-P Caution, Claim to Foreign Priority in Earlier Filed Application - Status of Foreign Application Unknown

Reference to this application as a continuation-in-part under 35 U.S.C. 120 is acknowledged. Applicant is advised that the design disclosed in the parent application is not the same design as the design disclosed in this application. Therefore, this application does not satisfy the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, under 35 U.S.C. 120 and is not entitled to benefit of the earlier filing date.

The parent application claimed foreign priority under 35 U.S.C. 119(a) -(d). Applicant is reminded that if the foreign application to which priority was claimed matured into a patent/registration before the filing of the present application and was filed more than six months before the filing date of the present application, the foreign patent/registration qualifies as prior art under pre-AIA 35 U.S.C. 102(d) /35 U.S.C. 172.

Therefore, Applicant is requested to inform the Office of the status of the foreign application to which priority is claimed.

Where the conditions of 35 U.S.C. 120 are met, a design application may be considered a continuing application of an earlier utility application. Racing Strollers Inc. v. TRI Industries Inc., 878 F.2d 1418, 11 USPQ2d 1300 (Fed. Cir. 1989). Conversely, this also applies to a utility application relying on the benefit of the filing date of an earlier filed design application. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 19 USPQ2d 1111 (Fed. Cir. 1991). In addition, a design application may claim benefit from an earlier filed PCT application under 35 U.S.C. 120 if the U.S. was designated in the PCT application. It should be noted that where a design patent application claims benefit under 35 U.S.C. 120 to an intermediate nonprovisional utility patent application that directly claims the benefit of a provisional application, the design patent application cannot claim the benefit of the filing date of the provisional application. This is because a design application may not claim the benefit of a provisional application. See 35 U.S.C. 172.

Note also In re Berkman, 642 F.2d 427, 209 USPQ 45 (CCPA 1981) where the benefit of a design patent application filing date requested under 35 U.S.C. 120 was denied in the later filed utility application of the same inventor. The Court of Customs and Patent Appeals took the position that the design application did not satisfy 35 U.S.C. 112, first paragraph, as required under 35 U.S.C. 120.