1504.20 Benefit Under 35 U.S.C. 120 [R-10.2019]

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.

Attention is directed to the requirements for “continuing” applications set forth in MPEP §§ 201.07, 201.08, and § 211. 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, pre-AIA 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, pre-AIA 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.

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).

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

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.