211.01(a) Claiming the Benefit of a Provisional Application [R-07.2022]

I. IN GENERAL

When a later-filed application is claiming the benefit of a prior-filed provisional application under 35 U.S.C. 119(e), the nonprovisional application must be filed not later than 12 months after the date on which the provisional application was filed, unless the benefit of the provisional application has been restored. See 37 CFR 1.78(a)(1) and (b) and subsection II, below. If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or federal holiday within the District of Columbia, the nonprovisional application may be filed on the next succeeding business day. See 35 U.S.C. 21(b), 37 CFR 1.7(b), and MPEP § 201.04 and § 505.

In addition, each prior-filed provisional application must have the same inventor or at least one joint inventor in common with the later-filed application and must be entitled to a filing date as set forth in 37 CFR 1.53(c), and the basic filing fee set forth in 37 CFR 1.16(d) must have been paid for such provisional application within the time period set forth in 37 CFR 1.53(g). See 37 CFR 1.78(a)(2) and MPEP § 211.01.

If benefit is being claimed to a provisional application which was filed in a language other than English, (A) an English language translation of the provisional application, and (B) a statement that the translation is accurate, are required to be filed in the provisional application. If the translation and statement were not filed in the provisional application, the applicant will be notified in the nonprovisional application and given a period of time within which to file the translation and statement in the provisional application, and a reply in the nonprovisional application confirming that the translation and statement were filed in the provisional application. See 37 CFR 1.78(a)(5). In the alternative, applicant may delete the benefit claim to the provisional application from the Application Data Sheet (ADS) or, for applications filed before September 16, 2012, from the ADS or the first sentence(s) of the specification, as appropriate. See MPEP § 601.05(a) or (b), as appropriate, for additional details on the requirements for a corrected or supplemental ADS. In a pending nonprovisional application, failure to timely reply to such notice will result in the abandonment of the nonprovisional application. Form paragraph 2.38 may be used to notify applicant that an English translation of the non-English language provisional application is required.

Applicant may claim the benefit of a provisional application by claiming the benefit of an intermediate copending nonprovisional application. The later-filed application must claim the benefit of the intermediate nonprovisional application under 35 U.S.C. 120, 121, or 365(c); the intermediate application must be filed not later than 12 months after the filing date of the provisional application (in which the basic filing fee was timely filed) unless the benefit of the provisional application has been restored (see 37 CFR 1.78(b) and subsection II, below); and in the later-filed application, the intermediate application must be clearly identified as claiming the benefit of the provisional application under 35 U.S.C. 119(e). See also MPEP § 211.01(b), subsection II.

Design applications may not claim the benefit of a provisional application under 35 U.S.C. 119(e). See 35 U.S.C. 172. Thus, 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 application cannot claim the benefit of the filing date of the provisional application.

II. RESTORING THE BENEFIT OF A PROVISIONAL APPLICATION

Effective December 18, 2013, title II of the Patent Law Treaties Implementation Act (PLTIA) provides for restoration of the right to claim benefit of a provisional application filed after the expiration of the twelve-month period in 35 U.S.C. 119(e). If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional. Thus, an application may now validly claim the benefit of a provisional application filed up to fourteen months earlier. As a result of the implementation of title I of the PLTIA, 37 CFR 1.78(a) and (b) were amended effective May 13, 2015, to provide that a petition filed on or after May 13, 2015 to restore the benefit of a provisional application must be filed in the subsequent application, and to clarify that the subsequent application is the application required to be filed within the period set forth in 37 CFR 1.78(a)(1)(i). For purposes of 37 CFR 1.78(a)(1)(ii), the subsequent application may be a nonprovisional application or an international application designating the United States. Where a petition under 37 CFR 1.78(b) is required in an international application that was not filed in the United States Receiving Office and is not a nonprovisional application, then the petition may be filed in the earliest nonprovisional application that claims benefit under 35 U.S.C. 120, 121, or 365(c) to the international application and will be treated as being filed in the international application. See 37 CFR 1.78(i).

A petition under 37 CFR 1.78(b) requires:

• (A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application, which must be included in application data sheet (unless previously submitted in an application data sheet);
• (B) the petition fee as set forth in 37 CFR 1.17(m); and
• (C) a statement that the delay in filing the nonprovisional application or international application designating the United States within the twelve-month period set forth in 37 CFR 1.78(a)(1)(i) was unintentional.

The Director may require additional information where there is a question whether the delay was unintentional.

If the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application is not made in the subsequent application within the period set forth in 37 CFR 1.78(a)(4), a petition to accept an unintentionally delayed claim under 37 CFR 1.78(c) must also be filed. See MPEP § 211.04 for a discussion of the requirements for a petition to accept an unintentionally delayed claim under 37 CFR 1.78(c).

If a petition under 37 CFR 1.78(b) to restore benefit of a provisional application is granted, a further petition under 37 CFR 1.78(b) is not required in an application entitled to claim benefit under 35 U.S.C. 120, 121, or 365(c) of the subsequent application (i.e., the application required to be filed within the period set forth in 37 CFR 1.78(a)(1)(i)) for which benefit of the provisional application was restored. A copy of the decision granting the petition should be filed with any application that claims the benefit of the subsequent application and the provisional application to facilitate recognition of the benefit claim to the provisional application.

Use form paragraphs 2.09 and 2.11.01 to indicate that the later-filed application must be filed not later than 12 months after the filing date of the provisional application for which a benefit is sought unless the benefit of the provisional application has been restored (37 CFR 1.78(b)).