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

I. COPENDENCY

When a later-filed application is claiming the benefit of a prior-filed nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c), the later-filed application must be copending with the prior application or with an intermediate nonprovisional application similarly entitled to the benefit of the filing date of the prior application. Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application. If the prior application issues as a patent, it is sufficient for the later-filed application to be copending with it if the later-filed application is filed on the same date, or before the date that the patent issues on the prior application. See Immersion Corp. v. HTC Corp., 826 F.3d 1357, 1359, 119 USPQ2d 1083, 1084 (Fed. Cir. 2016), holding that a child application was entitled to the benefit of a parent application where the child application was filed on the same day that a patent issued on the parent application. Patents usually will be published within four weeks of payment of the issue fee. Applicants are encouraged to file any continuing applications no later than the date the issue fee is paid, to avoid issuance of the prior application before the continuing application is filed.

If the prior application is abandoned, the later-filed application must be filed before the abandonment in order for it to be copending with the prior application. The term “abandoned,” refers to abandonment for failure to prosecute (MPEP § 711.02), express abandonment (MPEP § 711.01), abandonment for failure to pay the issue fee (37 CFR 1.316), and abandonment for failure to notify the Office of a foreign filing after filing a nonpublication request under 35 U.S.C. 122(b)(2)(B)(iii) (MPEP § 1124). The expression “termination of proceedings” includes the situations when an application is abandoned or when a patent has been issued, and hence this expression is the broadest of the three copendency definitions.

After a decision by the Court of Appeals for the Federal Circuit in which the rejection of all claims is affirmed, the proceeding is terminated when the mandate is issued by the court. There are several other situations in which proceedings are terminated as is explained in MPEP § 711.02(c).

When proceedings in an application are terminated, the application is treated in the same manner as an abandoned application, and the term “abandoned application” may be used broadly to include such applications.

The term “continuity” is used to express the relationship of copendency of the same subject matter in two different applications naming the same inventor or at least one joint inventor in common. The later-filed application may be referred to as a continuing application when the prior application is not a provisional application. Continuing applications include divisional, continuation, and continuation-in-part applications. The statute is so worded that the prior application may disclose more than the later-filed application, or the later-filed application may disclose more than the prior application, and in either case the later-filed application is entitled to the benefit of the filing date of the prior application as to the common subject matter disclosed in compliance with 35 U.S.C. 112(a), except for the best mode requirement.

A later-filed application which is not copending with the prior application (which includes those called “substitute” applications as set forth in MPEP § 201.02) is not entitled to the benefit of the filing date of the prior application. Therefore, prior art against the claims of the later-filed application is determined based on the filing date of the later-filed application. An applicant should not refer to such prior application(s) in an application data sheet (see 37 CFR 1.76) and is not required to refer to the prior application in the specification of the later-filed application, but is required to otherwise call the examiner’s attention to the prior application if it or its contents or prosecution is material to patentability of the later-filed application as defined in 37 CFR 1.56(b).

Use form paragraphs 2.09 and 2.11 to indicate the benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) is improper because there is no copendency between the applications.

See MPEP § 711.03(c), subsection II, for a discussion of petitions to revive an abandoned application to provide copendency between the abandoned application and a subsequently filed application.

II. BENEFIT CLAIMS TO MULTIPLE PRIOR APPLICATIONS

Sometimes a pending application is one of a series of applications wherein the pending application is not copending with the first filed application but is copending with an intermediate application entitled to the benefit of the filing date of the first application. If applicant wishes that the pending application have the benefit of the filing date of the first filed application, applicant must, besides making reference to the intermediate application, also make reference to the first application. See Sticker Indus. Supply Corp. v. Blaw-Knox Co., 405 F.2d 90, 160 USPQ 177 (7th Cir. 1968) and Hovlid v. Asari, 305 F.2d 747, 134 USPQ 162 (9th Cir. 1962). The reference to the prior applications must identify all of the prior applications and indicate the relationship (i.e., continuation, divisional, or continuation-in-part) between each nonprovisional application in order to establish copendency throughout the entire chain of prior applications. Appropriate references must be made in each intermediate application in the chain of prior applications. A specific reference is required to each prior-filed application in a chain of applications and cannot be incorporated by reference from a prior application. See Droplets, Inc. v. E*TRADE Bank, 887 F.3d 1309, 126 USPQ2d 1317 (Fed. Cir. 2018)(although the patent includes a proper benefit claim to an immediate prior parent application and incorporated the immediate prior parent by reference, the patent did not itself claim benefit to each prior-filed application in the priority chain. That another patent that is incorporated by reference in its entirety in the reviewed patent makes its own specific reference to a prior application does not substitute for making the necessary specific reference in the reviewed patent or application. As only the filing date of the alleged grandparent application was within 12 months of a prior provisional application, the claim under 35 U.S.C. 119(e) made in the patent was not appropriate because the patent under review did not make a claim to the alleged grandparent application). Cf. Nat. Alts. Int’l, Inc. v. Iancu, 904 F. 3d 1375, 1380 (Fed. Cir. 2018). See MPEP § 211.02 for guidance regarding properly referencing prior applications.

There is no limit to the number of prior applications through which a chain of copendency may be traced to obtain the benefit of the filing date of the earliest of a chain of prior copending applications. See In re Henriksen, 399 F2.d 253, 158 USPQ 224 (CCPA 1968). But see MPEP § 2190 (prosecution laches).

A nonprovisional application that directly claims the benefit of a provisional application under 35 U.S.C. 119(e) must be filed within 12 months from the filing date of the provisional application unless the benefit of the provisional application has been restored. See 37 CFR 1.78(b) and MPEP § 211.01(a), subsection II. Although an application that itself directly claims the benefit of a provisional application is not required to specify the relationship to the provisional application, if the instant nonprovisional application is not filed within the 12 month period, but claims the benefit of an intermediate nonprovisional application under 35 U.S.C. 120 that was filed within 12 months from the filing date of the provisional application and claimed the benefit of the provisional application, the intermediate application must be clearly identified as claiming the benefit of the provisional application so that the Office can determine whether the intermediate nonprovisional application was filed within 12 months of the provisional application and thus, whether the claim is proper. Where the benefit of more than one provisional application is being claimed, the intermediate nonprovisional application(s) claiming the benefit of each provisional application must be indicated. See MPEP § 211.02 for guidance regarding properly referencing prior applications.

If a benefit claim to a provisional application is submitted without an indication that an intermediate application directly claims the benefit of the provisional application and the instant nonprovisional application is not filed within the 12 month period (or 14 month period if the benefit of the provisional application has been restored pursuant to 37 CFR 1.78(b)) or the relationship between each nonprovisional application is not indicated, the Office will not recognize such benefit claim and will not include the benefit claim on the filing receipt. Therefore, a petition under 37 CFR 1.78(c) and the petition fee set forth in 37 CFR 1.17(m) will be required if the intermediate application and the relationship of each nonprovisional application are not indicated within the period set forth in 37 CFR 1.78. See MPEP § 201.04.