211.02 Reference to Prior Application(s) [R-07.2022]

I. APPLICATION DATA SHEET

Both 35 U.S.C. 119(e) and 120 include the requirement that the later-filed application must contain a specific reference to the prior application.

For applications filed on or after September 16, 2012, the specific reference to the prior application must be included in an 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 an application data sheet (37 CFR 1.76(a)) and/or in the first sentence(s) of the specification following the title, although the Office prefers the use of an application data sheet. If applicant is claiming the benefit of multiple prior applications, and the reference to the prior applications is in the specification, the reference may be in a continuous string of multiple sentences at the beginning of the specification. The multiple sentences must begin as the first sentence after the title, and any additional sentence(s) including a benefit claim must follow the first sentence and not be separated from the first sentence by any other sentence not making a benefit claim. If the specific reference is only contained in the application data sheet, then the benefit claim information will be included on the front page of any patent or patent application publication, but will not be included in the first sentence(s) of the specification.

For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 119(e) or 120 and 37 CFR 1.78 for benefit of a prior-filed provisional application, nonprovisional application, international application designating the United States, or international design application designating the United States that was present on the filing date of the continuation or divisional application, or the nonprovisional application claiming benefit of a prior-filed provisional application, is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b). The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when all or a portion of the specification and/or drawing(s) is (are) inadvertently omitted from an application. See MPEP § 201.06 and 217. However, applicants are encouraged to provide in the specification an explicit incorporation by reference statement to the prior-filed application(s) for which benefit is claimed under 35 U.S.C. 119(e) or 120 if applicants do not wish the incorporation by reference to be limited to inadvertently omitted material pursuant to 37 CFR 1.57(b). See 37 CFR 1.57(c). See also MPEP §§ 217 and MPEP § 608.01(p).

When a benefit claim is submitted after the filing of an application, and the later-filed application as filed did not incorporate the prior-filed application by reference, applicant cannot add an incorporation by reference statement of the prior application. An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)). See Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980). See also 37 CFR 1.57(b).

If an applicant includes a benefit claim elsewhere in the application but not in the manner specified by 37 CFR 1.78 (e.g., if the claim is not present in the proper place but is included in an oath or declaration or the application transmittal letter) within the time period set forth in 37 CFR 1.78, the Office will not require a petition under 37 CFR 1.78 and the petition fee under 37 CFR 1.17(m) to correct the claim if the information concerning the claim was recognized by the Office as shown by its inclusion on the first filing receipt. If, however, a claim is not included in an ADS in compliance with 37 CFR 1.76 (or for applications filed prior to September 16, 2012 in the first sentence(s) of the specification or in an ADS in compliance with pre-AIA 37 CFR 1.76) and is not recognized by the Office as shown by its absence on the first filing receipt, the Office will require a petition under 37 CFR 1.78 and the petition fee to correct the claim if the correction is sought after expiration of the time period set in 37 CFR 1.78. The Office may not recognize any benefit claim where, for example, there is no indication of the relationship between the nonprovisional applications, or no indication of an intermediate nonprovisional application that is directly claiming the benefit of a provisional application. See subsection II, below. Even if the Office has recognized a benefit claim by entering it into the Office’s database and including it on any of applicant’s filing receipts, the benefit claim is not a proper benefit claim under 35 U.S.C. 119(e) or 35 U.S.C. 120 and 37 CFR 1.78 unless the reference is included in an ADS in compliance with 37 CFR 1.76 or, for applications filed prior to September 16, 2012, included in an ADS in compliance with pre-AIA 37 CFR 1.76 or in the first sentence(s) of the specification, and all other requirements are met.

In view of this requirement for a specific reference in the later-filed application, the right to rely on a prior application may be waived by an applicant if a proper reference to the prior application is not included in the later-filed application. If the examiner is aware of the fact that an application may be entitled to claim the benefit of a prior application or the applicant fails to submit the reference to the prior application in compliance with 37 CFR 1.78 (e.g., the reference was submitted in the transmittal letter but not in an ADS in compliance with 37 CFR 1.76 (or for applications filed prior to September 16, 2012 in the first sentence(s) of the specification or an ADS in compliance with pre-AIA 37 CFR 1.76)), the examiner should merely call attention to this in an Office action by using the wording of form paragraph 2.15.

If the examiner is aware of a prior application, the examiner should note it in an Office action, as indicated above, but should not require the applicant to call attention to the prior application.

For notations to be placed in the file history in the case of continuing applications, see MPEP § 202 and § 1302.09.

II. REFERENCE TO PRIOR NONPROVISIONAL APPLICATIONS

Except for benefit claims to the prior application in a continued prosecution application (CPA), benefit claims under 35 U.S.C. 120, 121, 365(c), and 386(c) must identify the prior application by application number, by international application number and international filing date, or by international registration number and international filing date under 37 CFR 1.1023, and indicate the relationship between the applications. See 37 CFR 1.78. The relationship between the applications is whether the instant application is a continuation, divisional, or continuation-in-part of the prior nonprovisional application. For international design applications, the required reference can identify the nonprovisional application number instead of the international registration number and filing date under 37 CFR 1.1023 once the international design application becomes a nonprovisional application. Identifying the prior international design application by the nonprovisional application number is preferable to the Office.

Where the reference to a prior nonprovisional application appears in the specification of an application as permitted for applications filed before September 16, 2012, an example of a proper benefit claim is “this application is a continuation of prior Application No. —, filed —.” A benefit claim that merely states that “this application claims the benefit of Application No. —, filed —” does not comply with 35 U.S.C. 120 and 37 CFR 1.78, since the relationship between the applications is not stated. In addition, a benefit claim that merely states that “this application is a continuing application of Application No. —, filed —” does not comply with 35 U.S.C. 120 and 37 CFR 1.78 since the proper relationship, which includes the type of continuing (i.e., continuation, divisional, or continuation-in-part) application, is not stated.

A request for a CPA filed under 37 CFR 1.53(d) (available only for design applications, but not international design applications) is itself the specific reference required by 35 U.S.C. 120 and 37 CFR 1.78 to every application assigned the same application number identified in the request. (Note: The CPA is assigned the same application number as the prior application.) In a CPA, a specific reference in the first sentence(s) of the specification following the title, or in an application data sheet, to a prior application assigned the same application number is not required and may not be made. Any such reference should be deleted. No amendment in a CPA may delete the specific reference to the prior application assigned the same application number. A specific reference to an application not assigned the same application number, but relied on for benefit under 35 U.S.C. 120 and 37 CFR 1.78 is required. Cross references to other related applications not assigned the same application as the CPA may be made when appropriate.

When a nonprovisional application (other than a CPA) filed on or after September 16, 2012 is entitled under 35 U.S.C. 120 to an earlier U.S. effective filing date, the reference must be included in an application data sheet. For applications filed prior to September 16, 2012, the benefit claim must appear either in the application data sheet, or as a statement in the first sentence(s) of the specification. An example of such a statement is “This is a divisional (or continuation, or continuation-in-part, as appropriate) application of Application No. —, filed —.” In the case of a design application filed under 37 CFR 1.53(b) as a divisional, continuation or continuation-in-part of a CPA, there should be only one reference to the series of applications assigned the same application number, with the filing date cited being that of the original non-continued application. See MPEP § 1504.20 for additional information pertaining to benefit claims in design applications.

Where a nonprovisional application is claiming the benefit under 35 U.S.C. 120 of a prior national stage application under 35 U.S.C. 371, the appropriate relationship must be indicated on an application data sheet for applications filed on or after September 16, 2012. For applications filed prior to September 16, 2012, the specific reference to the prior application must be in an application data sheet (pre-AIA 37 CFR 1.76) and/or in the first sentence(s) specification. Where the reference to the prior-filed national stage application appears in the specification, a suitable reference would read “This application is a continuation of U.S. Application No. 08/—, which was the National Stage of International Application No. PCT/DE95/—, filed —.”

Any benefit claim that does not both identify a prior application by its application number and specify a relationship between the applications will not be considered to contain a specific reference to a prior application as required by 35 U.S.C. 120. Such benefit claim may not be recognized by the Office and may not be included on the filing receipt even if the claim appears in an application data sheet (for an application filed on or after September 16, 2012), or in the application data sheet or the first sentence(s) of the specification (for an application filed prior to September 16, 2012). As a result, publication of the application may not be scheduled on the basis of the prior application’s filing date. If the Office does not recognize a benefit claim under 35 U.S.C. 120 because it does not contain the required reference and the time period set forth in 37 CFR 1.78 for submitting the required reference has expired, applicant must submit a petition under 37 CFR 1.78 and the petition fee set forth in 37 CFR 1.17(m) in order for the Office to accept the unintentionally delayed claim under 35 U.S.C. 120 because the application will not have been scheduled for publication on the basis of the prior application’s filing date.

To specify the relationship between the applications, applicant must specify whether the application is a continuation, divisional, or continuation-in-part of the prior application. Note that the terms are exclusive. An application cannot be, for example, both a continuation and a divisional or a continuation and a continuation-in-part of the same application. Moreover, if the benefit of more than one nonprovisional application is claimed, then the relationship between each application (i.e., continuation, divisional, or continuation-in-part) must be specified in order to establish copendency throughout the entire chain of prior-filed applications. For example, where the reference to a prior nonprovisional application appears in the specification of an application as permitted for applications filed before September 16, 2012, a statement that “this application claims the benefit of Application Nos. C, B, and A” or “this application is a continuing application of Application Nos. C, B, and A” is improper. Applicant instead must state, for example, that “this application is a continuation of Application No. C, filed —, which is a continuation of Application No. B, filed —, which is a continuation of Application No. A, filed —.

III. REFERENCE TO PRIOR PROVISIONAL APPLICATIONS

When a nonprovisional application filed on or after September 16, 2012 is entitled to an earlier U.S. effective filing date of one or more provisional applications under 35 U.S.C. 119(e), the reference must be included in an application data sheet. For applications filed prior to September 16, 2012, the reference to the provisional application must be in an application data sheet (37 CFR 1.76(a)) and/or in the first sentence(s) specification. Where the reference to a prior provisional application appears in the first sentence(s) of the specification a statement such as “This application claims the benefit of U.S. Provisional Application No. 60/—, filed —, and U.S. Provisional Application No. 60/ —, filed —.” should appear as the first sentence(s) of the description. In addition, where a nonprovisional application benefit claim appears in the specification of an application filed before September 16, 2012 and the application is claiming the benefit under 35 U.S.C. 120 of a prior application, which in turn claims the benefit of a provisional application under 35 U.S.C. 119(e), a suitable reference would read, “This application is a continuation of U.S. Application No. 10/—, filed —, which claims the benefit of U.S. Provisional Application No. 60/—, filed —.”. Note that a design application cannot claim the benefit of a provisional application. See MPEP § 1504.20 for benefit information specific to design applications and MPEP § 2920.05(e) for benefit information specific to international design applications.

The relationship, continuation, divisional, or continuation-in-part, is not required and should not be specified when the benefit of a prior provisional application is being claimed under 35 U.S.C. 119(e). If such a relationship between a prior provisional application and the nonprovisional application is submitted, it may be unclear whether the applicant wishes to claim the benefit of the filing date of the provisional application under 35 U.S.C. 119(e) or 120. Thus, applicants seeking to claim the benefit of a provisional application under 35 U.S.C. 119(e) should not state that the application is a “continuation” of a provisional application or that the application claims 35 U.S.C. 120 benefit to a provisional application. Although 35 U.S.C. 120 does not preclude a benefit claim to a provisional application, it is not recommended that applicants claim the benefit to a provisional application under 35 U.S.C. 120 since such a claim could have the effect of reducing the patent term, as the term of a patent issuing from such an application may be measured from the filing date of the provisional application pursuant to 35 U.S.C. 154(a)(2).