benefit claims to prior applications under 35 u.s.c. §§ 119(e), 120, 121, and 365(c)

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Benefit Claims to Prior Applications under 35 U.S.C. §§ 119(e), 120, 121, and 365(c)

Prepared by:Office of Patent Legal Administration (OPLA)Robert J. Spar, Director(703) [email protected]

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• Must include a specific reference to the prior-filed nonprovisional application in– the first sentence of the specification; or – the application data sheet (ADS).

Benefit Claimsunder 35 USC §§ 120, 121, and 365(c)


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• Specific reference to a nonprovisional application requires the following:1. Identification of the prior-filed application by

application number; and2. Indication of the specific relationship (i.e.,

continuation, divisional, or continuation-in-part) of the applications;Exception: If application is a CPA, the request for CPA is the required specific reference, rule 1.53(d)(7)

• Example 1: “This application is a continuation of Application No. 10/---, filed---.”



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• Benefit Claims to Multiple Applications under 35 USC §§ 120, 121, and 365(c)

• Benefit Claims to International (PCT) Applications under 35 USC §§ 120, 121, and 365(c)

• Benefit Claims to Provisional Applications under 35 USC § 119(e)

• Benefit Claims to Provisional via Intermediate Nonprovisional Application under 35 USC §§ 120, 365(c) & 119(e)

• Benefit Claims to Provisional via Intermediate IA under 35 USC §§ 120, 365(c) & 119(e)

Types of Benefit ClaimsTypes of Benefit Claims

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• If the benefit claims involve a chain of nonprovisional applications, – the relationship must be stated for each

application (in the chain) relative to an immediate prior application, as a continuation, divisional, or continuation-in-part, to establish copendency throughout the entire chain.

Benefit Claims to Multiple Applicationsunder 35 USC §§ 120, 121, and 365(c)


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• Example 2: “This application is a continuation of Application No. C, filed ---, which is a divisional of Application No. B, filed ---, which is a continuation-in-part of Application No. A, filed ---.”

• Example 3: “This application is a continuation-in-part of Application No. C, filed ---, and also a continuation-in-part of Application No. D, filed ---.”



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• Specific reference to an international application (IA) requires:1. Identification of the prior-filed IA by – International application number and International filing date

(not the § 371(c) compliance date); and

2. Specific relationship of the applications.– Example 4: “This application is a continuation of International

Application No. PCT/US--/---, filed ---.”• This example is for a benefit claim to an IA in a “bypass” application.• A “bypass” application is a § 111(a) application claiming under § 365(c) the

benefit of an IA that did not enter the national stage under § 371.

Benefit Claims to International (PCT) Applicationsunder 35 USC §§ 120, 121, and 365(c)


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• Example 5: Specific reference to a National Stage (§ 371) Application– “This application is a continuation of Application No. 10/---,

which is the National Stage of International Application No. PCT/US--/---, filed ---.”

Note: §371(c) compliance date should NOT be given.

• Example 6: Specific reference to an IA which claims the benefit of a prior U.S. Nonprovisional Application:– “This application is a continuation of International

Application No. PCT/US--/---, filed ---, which is a continuation of U.S. Application No. 10/---, filed ---.”



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• Must include a specific reference to the prior-filed provisional application in the first sentence of the specification or an ADS.

• Specific reference requires:– Only the identification of the prior provisional

application by the application number.– No relationship between the subject nonprovisional

application and the provisional application should be specified.

– Example 7: “This application claims the benefit of U.S. Provisional Application No. 60/---, filed ---.”

Benefit Claims to Provisional Applications under 35 USC § 119(e)

Benefit Claims to Provisional Applications under 35 USC § 119(e)

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• If the subject application is not filed within 12 months from the filing date of the provisional application, the specific reference must identify: – An intermediate nonprovisional application that is

directly claiming the benefit of the provisional application; and

– The relationship between the nonprovisional applications.

– Example 8: “This application is a continuation of Application No. 10/---, filed ---, which claims the benefit of U.S. Provisional Application No. 60/---, filed ---.”

Benefit Claims to Provisional via IntermediateNonprovisional Application

under 35 USC §§ 120, 365(c) & 119(e)

Benefit Claims to Provisional via IntermediateNonprovisional Application

under 35 USC §§ 120, 365(c) & 119(e)

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• Example 9: Specific reference to claim the benefit of a provisional application via an IA.– “This application is a continuation of International

Application No. PCT/US--/---, filed ---, which claims the benefit of Provisional Application No. 60/---, filed ---.”

• Example 10: Specific reference to claim the benefit of a provisional application via a National Stage (§ 371) Application– “This application is a continuation of Application No.

10/---, which is the National Stage of International Application No. PCT/US--/---, filed ---, which claims the benefit of Provisional Application No. 60/---, filed ---.”

Benefit Claims to Provisional via Intermediate IA under 35 USC §§ 120, 365(c) & 119(e)

Benefit Claims to Provisional via Intermediate IA under 35 USC §§ 120, 365(c) & 119(e)

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• Failure to timely submit the specific reference is considered a waiver of any benefit claim unless a petition under 37 CFR 1.78(a) and surcharge are filed.

• The Office may not be able to publish applications promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought.

• The publication may not include accurate benefit claims to determine the prior art date under 35 USC § 102(e).

Impact of Failure to MakeProper Benefit Claims

Impact of Failure to MakeProper Benefit Claims

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• The Office plans to notify applicants on, or with, the filing receipt that a benefit claim may not have been recognized because it did not include the proper specific reference.

• The filing receipt is usually provided shortly after the filing of the application so applicants should have sufficient opportunity to submit the proper benefit claim within the time period set in rule 1.78(a).

• Applicants should carefully and promptly review filing receipts in order to avoid the need to submit a petition under rule 1.78(a) and surcharge under rule 1.17(t).

Notification of the Failure to MakeProper Benefit Claims

Notification of the Failure to MakeProper Benefit Claims

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• Within the time period of 37 CFR 1.78(a)*, applicant may correct benefit claims by filing:– A request for corrected filing receipt, and– The Required specific reference

• Via an amendment to the specification, or an application data sheet (ADS) (see slide 2); or

• If previously submitted, a copy of the amendment or ADS.

*The later of four months from the actual filing date or the date on which the national stage commenced, or sixteen months from the filing date of the prior-filed application.

Timely Correction of Benefit ClaimsTimely Correction of Benefit Claims

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• After the time period of rule 1.78(a) has expired, applicant may petition to correct benefit claims by filing: – A petition to accept an unintentionally delayed claim

under rule 1.78(a) and the surcharge under rule 1.17(t), and

– The required specific reference (including the relationship of the nonprovisional applications and identification of any intermediate application which directly claims the benefit of the provisional application).

– Note: any benefit claim under 35 USC § 119(e) must be submitted during the pendency of the instant nonprovisional application.

Untimely Correction of Benefit ClaimsUntimely Correction of Benefit Claims

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• Each intermediate prior application must have specific reference to other prior applications. – For example, this benefit claim, “This application is a

continuation of Application No. C, filed ---, which is a continuation of Application No. B, filed---, which claims the benefit of Provisional Application No. A, filed ---.” will only be effective if:

• Application No. C actually includes a proper benefit claim to Application No. B and Provisional Application No. A; and

• Application No. B actually includes a proper benefit claim to Provisional Application No. A.

Prior Applications Also Must Include Specific Reference

Prior Applications Also Must Include Specific Reference

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• After the filing of an application, adding an incorporation-by-reference statement in a benefit claim is not permitted.– No new matter can be added to an application after its

filing date. • See 35 USC § 132(a) and Dart Industries v. Banner, 636 F.2d

684, 207 USPQ (CADC 1980).

– The Office will not accept a specific reference that includes an incorporation-by-reference statement of a prior application, unless such statement was submitted on filing of the application.

Adding an Incorporation-By-ReferenceAdding an Incorporation-By-Reference

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• Ex. 1: Specific reference to a nonprovisional application.– “This application is a continuation of Application No. 10/---,

filed---.”• Ex. 2: Specific reference to multiple nonprovisonal

applications.– “This application is a continuation of Application No. C, filed

---, which is a divisional of Application No. B, filed ---, which is a continuation-in-part of Application No. A, filed ---.”

• Ex. 3: Specific reference to multiple nonprovisional applications.– “This application is a continuation-in-part of Application No.

C, filed ---, and also a continuation-in-part of Application No. D, filed ---.”

Examples of Benefit Claims under 35 USC §§ 120, 121, and 365(c)


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• Ex. 4: Specific reference to an IA.– “This application is a continuation of International

Application No. PCT/US--/---, filed ---.”• Ex. 5: Specific reference to a NS (§ 371) application

– “This application is a continuation of Application No. 10/---, which is the National Stage of International Application No. PCT/US--/---, filed ---.”

Note: §371(c) compliance date should NOT be given.

• Ex. 6: Specific reference to an IA which claims the benefit of a prior U.S. Nonprovisional Application:– “This application is a continuation of International

Application No. PCT/US--/---, filed ---, which is a continuation of U.S. Application No. 10/---, filed ---.”



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• Ex. 7: Specific reference to claim the benefit of a provisional application when the subject application is filed within 12 months from the filing date of the provisional application.– “This application claims the benefit of U.S. Provisional

Application No. 60/---, filed ---.”

• Ex. 8: Specific reference to claim the benefit of a provisional application via a nonprovisional application.– “This application is a continuation of Application No.

10/---, filed ---, which claims the benefit of U.S. Provisional Application No. 60/---, filed ---.”



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• Ex. 9: Specific reference to claim the benefit of a provisional application via an IA.– “This application is a continuation of International

Application No. PCT/US--/---, filed ---, which claims the benefit of Provisional Application No. 60/---, filed ---.”

• Ex. 10: Specific reference to claim the benefit of a provisional application via a National Stage (§ 371) Application– “This application is a continuation of Application No.

10/---, which is the National Stage of International Application No. PCT/US--/---, filed ---, which claims the benefit of Provisional Application No. 60/---, filed ---.”



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Rescission of non-publication requests

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• An applicant may request that an application not be published if – the applicant certifies that invention has not

been and will not be the subject of an application filed in another country (or under international agreement) that requires eighteen-month publication

• The request must be made upon filing (required by statute)

• The request must be conspicuous• See PTO form PTO/SB/35

Eighteen-Month Publication -Exceptions

Eighteen-Month Publication -Exceptions

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• The “nonpublication” request may be rescinded at any time• If an application is subsequently filed in another country (or

under international agreement) that requires eighteen-month publication– the applicant must notify the USPTO within forty-five days or

the application will become abandoned – application may be revived if the delay in providing notice

was unintentional• See

– Pre O.G. Notice “Reminder that Rescission of a Nonpublication Request is Not Itself a Notice of Foreign Filing” posted on the web at: http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/rescission.html

– Form PTO/SB/36 (10-01)

Eighteen-Month Publication –Publication after Non-publication Request

Eighteen-Month Publication –Publication after Non-publication Request

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Highlights of Recent Legislative Changes

Prepared 4-16-03

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Highlights of Recent Legislative Changes

• H.R. 2215 (Technical Amendment Act of 2002) (Conference Report 107-685)

• Date of Enactment: November 2, 2002

• § 102(e) Changes Effective: Nov. 29, 2000

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Highlights of Recent Legislative Changes (Continued)

• H.R. 2215 (Technical Amendment Act of 2002)– Authorizes appropriation of an amount equal to the fees estimated to

be collected by the USPTO– Requires development of an electronic filing and processing system

within 3 years– Requires a 5-year strategic plan for the USPTO– Permits reexamination on the basis of prior art that was previously

cited by or to the USPTO or considered by the USPTO– Permits third-party requesters in inter partes reexamination

proceedings to appeal t the U.S. Court of Appeals for the Federal Circuit

– Makes technical changes to Title 35, U.S.C. to correct errors introduced by the American Inventors Protection Act of 1999 (AIPA) – includes a correction to § 102(e) and its effective date

– Eliminates attestation requirement for patent grant copies

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• Regulatory Changes to implement H.R. 2215– Permitting reexamination on the basis of prior art that

was previously cited by or to, or considered by, the USPTO

• USPTO will publish new Reexamination (“Portola”) Guidelines in the Federal Register that supersede the Reexamination Guidelines published in March of 1999

• New guidelines will set out the conditions under which the USPTO will make a new determination in a pending reexamination to make a ground of rejection that may not have been permitted under the 1999 Reexamination Guidelines

• This change to the substantial new question of patentability applies to any determination made on/after the date of enactment

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• Prior art references now available under § 102(e) 1. U.S. Patents (formerly: could not use any IA filing date)

Now: If a U.S. patent issues from, or claims benefit of, an IA, the U.S. patent’s prior art date may now be the filing date of the IA if the following three conditions are met:

1)the IA was filed on or after 11/29/00;

2)the IA designated the US; and

3)the IA publication (by WIPO) was in English.

Note: when the three conditions are met, the IA filing date is a U.S. filing date for § 102(e) purposes.

2. U.S. Application Publications (did not exist before 11/29/00):

Now: A U.S. application publication is prior art as of the application’s U.S. effective filing date, which can include an IA filing date, if the same three conditions are met.

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• Prior art references now available under § 102(e) (cont’d)

3. WIPO Publications of IAs (formerly: A WIPO publication was not prior art under § 102(e))

Now: A WIPO publication of an IA is § 102(e) prior art as of the IA’s filing date, if the same three conditions are met; namely:

1) the IA was filed on or after 11/29/00,

2) the IA designated the US, &

3) the IA publication (by WIPO) was in English.

Sample WIPO Publication

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• Summary – Changes to § 102(e)– 35 U.S.C. 102(e) applies, as amended, to all applications under

examination and patents under reexamination, whenever filed. – Proper domestic priority claims to provisional applications under

35 U.S.C. 119(e), benefit claims to nonprovisional applications under 35 U.S.C. 120 or benefit claims to international applications under 35 U.S.C. 365(c) are considered in determining the effective U.S. filing date under 35 U.S.C. 102(e), but the relied upon application and any intermediate application must support the subject matter used in a rejection.

– An international filing date prior to 11/29/00 cannot be used as a prior art date; a patent issuing from the National Stage of an IA filed before 11/29/00 will continue to be applied as of the 35 U.S.C. 371(c)(1), (2) and (4) date.

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• Summary – Changes to § 102(e) (cont’d)

– A reference based on a foreign priority filing date claimed under 35 U.S.C. 119(a)-(d) or 365(a), in U.S. or WIPO application publications or U.S. patents is never applied as the prior art date under 35 U.S.C. 102(e).

– A reference based on the filing date of an International application (IA) when the IA did not designate the U.S. or was published in a language other than English is never applied. A published IA may be used as the reference, but under 35 U.S.C. 102(a) or (b) as of the publication date of the IA.

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Electronic Processing Changes

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• USPTO Announces Prototype of Image Processing (signed 11/19/02) 1265 OG 87 (12/17/02).

– In December 2002, The USPTO commenced a prototype of electronic image processing of patent applications. Three art units in Technology Centers 1600 and 2800 will participate in this prototype, as well as sections of the Office of Initial Patent Examination (OIPE) and other related processing divisions. This prototype program will test the use of image technology to replace the standard paper processing of patent applications currently used in the USPTO. All processing and examination will be performed with the image files, instead of the paper source documents, by the examiners, technical support staff and all other USPTO professional staff during the prototype.

Image Processing Prototype

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• Special Amendment Practice (limited to claims) begun in Prototype Electronic Image File Wrapper Program in Art Units 1634, 2827 & 2834. – See USPTO Announces Prototype of Image Processing, 1265

OG 87 (12/17/02).

• The special amendment practice has been readily accepted by prototype participants, is beneficial to examiners, and will improve patent printing process.

• Effective immediately, a voluntary revised amendment format which applies to specification and drawings in addition to claims may be used in the prototype cases, and in all applications, except reissue and reexamination.

Revised Amendment Format

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• Implementation Plan– OG Notice – announces a Revised Amendment Format

and provides waiver of 37 CFR 1.121(a)-(d).

• 1267 OG 106 (February 25, 2003) and posted at http://www.uspto.gov/web/offices/com/sol/og/2003/week08/patform.htm

– Mailing of flyer describing the revised practice with every Office action.

– Sample Revised Amendment Format and flyer are posted on website at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/moreinfoamdtprac.htm

Revised Amendment Format (Continued)

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• Implementation Plan (cont.)– Notice of Proposed Rulemaking – proposed

changes to 37 CFR 1.121 to implement electronic maintenance of official patent application records

• Changes To Implement Electronic Maintenance of Official Patent Application Records, 68 Fed. Reg.14365 (March 25, 2003).

– Final Rule – a revised amendment format will become mandatory by a final rule making notice; expected publication by June 2003.

– Training of tech support staff commenced March 2003.


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• Highlights:1. Each section of amendment paper must start on a

separate sheet. – For example, each of the following must start on a

separate sheet: Introductory comments, Amendments to the Specification, Amendments to the Claims, and Remarks.

2. Submit only one version of the replacement portion which includes strikethrough or underlining showing the changes relative to immediate prior version.

– The requirement to provide a clean version and a marked up version is waived if revised amendment format is used (§1.121(b) and (c) are waived and proposed to be eliminated).


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• Highlights:3. Amendment to claims must include a

complete listing of all claims shown in ascending order.– The listing of claims (in the current

amendment) will replace all prior versions, and listings, of claims in the application.

– The requirement of a clean version is waived and a clean version should not be submitted.

Revised Claim Amendment Format

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• The listing of claims must comply with the following:– A status identifier for each claim is required. Multiple status

identifiers must not be used for any single claim.

– The text of all claims being “currently amended” must be presented with markings to show changes (strikethrough for deleted matter and underlining for added matter) relative to immediate prior version.

• Only claims of the status “currently amended” will include markings.

– All other claims under examination must be presented in clean text (without marking).

• Any claim text presented in clean form (no markings) constitutes an assertion that it has not been changed relative to the immediate prior version.

Revised Claim Amendment Format (Continued)

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• Listing (cont.):– Canceled and withdrawn claims should only have

“canceled” or “withdrawn” status identifier following the claim number, as text should not be supplied.

– New Claims must be presented with a “new” status identifier.• Do not underline the text of the new claims.

– Grouping of Claims – consecutive canceled or withdrawn claims may be aggregated into one line (e.g., claims 1-5 (canceled).).


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• Example of a Listing of Claims:– Claims 1-5 (canceled)– Claim 6 (withdrawn)– Claim 7 (previously amended): A bucket with

a handle.– Claim 8 (currently amended): A bucket with a

blue green handle.– Claim 9 (original): The bucket of claim 8 with

a wooden handle.– Claim 10 (new): A bucket with plastic sides

and bottom.


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• Use only the following status identifiers in parentheses after claim number: 1. (Original): Claim filed with the original specification (not added by

preliminary amendment).

2. (Currently amended): Claim being amended in the current amendment. Only currently amended claims should include markings (strikethrough and underlining) to indicate changes.

3. (Previously amended): Claim not being currently amended, but which was amended in a previous amendment paper. The claim should be presented in clean text.

4. (Canceled): Claim canceled or deleted. Do not present the text of the canceled claim. Consecutive canceled claims may be grouped together (e.g., claims 1-5 (canceled)).

5. (Withdrawn): Claim still in the application, but in a non-elected status. Do not present the text of the withdrawn claim. Consecutive withdrawn claims may be grouped together (e.g., claims 6-10 (withdrawn)).


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• Permissible status identifiers (cont.):6. (Previously added): Claim added in an earlier amendment paper.

7. (New): Claim being added in the current amendment paper.

8. (Reinstated-formerly claim #__): Claim deleted in an earlier amendment paper, but re-presented verbatim with a new claim number in current amendment.

9. (Previously reinstated): Claim deleted in an earlier amendment and reinstated in an earlier amendment paper.

10. (Re-presented – formerly dependent claim # __): Dependent claim re-presented in independent form in current amendment paper. No additional (or new) subject matter may appear in these claims.

11. (Previously represented): Dependent claim re-presented in independent form in an earlier amendment, but not currently amended.


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• Amendments to the Specification: – Submit only one marked up version of any replacement

paragraphs or sections marked with strikethrough (for deleted matter) or underlining (for added matter).

– The requirement of a clean version is waived and a clean version should not be submitted.

– An amendment to the specification, once made, should not be presented in subsequent amendment papers.

– For substitute specification, no change from the current practice in § 1.125. The following are required:

• a clean version, and • a marked-up version showing the changes for

examiner use.

Revised Specification Amendment Format

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• Amendments to Drawings: – Submit only replacement figure(s) which include the changes,

without markings, on a separate sheet(s) as an attachment to the amendment paper.

• Proposed drawing correction process is eliminated.• Applicants need not submit any proposed drawing changes

marked in red (but may include markings if desirable).• Examiner may require drawing changes to be shown by

marking– The changes must be explained in the remarks or drawing

amendment section of the amendment paper.– Any replacement drawing sheet(s) including amended

figure(s) should include all of the figures appearing on the immediate prior version of the sheet.

Revised Drawing Amendment Format

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• Amendments to Drawings (continued): – Header on replacement drawing sheet should include

“Replacement Sheet”, application number, and date information.

– The replacement drawing figure should not be labeled as “amended.”

– Replacement drawing sheet with changes, accepted by examiner, unless notified by examiner. No further drawing submission is required.

– If not acceptable, applicants will be notified of any objections or additional requirements.

Revised Drawing Amendment Format (Continued)

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• Amendments to Drawings (continued): – Deletion of a figure requires the following:

• Instructions to delete the figure;

• Replacement sheet(s) which does not include the canceled figure, unless no other figure is on the same sheet as the canceled figure;

• Amendment to the specification to make corresponding changes to the description of the drawings (e.g., deletion of the description of the canceled figure); and

• If other figures need to be renumbered, those figures also need to be amended with revised figure numbers via replacement drawing sheets.

Revised Drawing Amendment Format (Continued)

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• Proposed rule change will allow the Office to promote sharing of electronic priority documents and access to examination files to counterpart offices– International agreement required.

– Written consent of applicant required before access granted (or priority document provided) prior to publication.

• Proposed rule change will permit Office to provide electronic access to Office electronic file records when the official record is electronic– Efforts to declare image file records as the Official file

records are ongoing.

Electronic Processing ChangesChanges To Implement Electronic Maintenance of Official Patent Application Records 68 Fed. Reg. 14365 ( March 25, 2003)

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Office of Patent Legal Administration – (703) 308-6906 or e-mail to Patent [email protected]

Amendment Practice – Elizabeth Dougherty 306-3156 or Joe Narcavage 305-1795Patent Term Adjustment (PTA)- Kery Fries 308-0687Eighteen-Month Publication – Mark Polutta 308-8122Provisional Applications- Fred Silverberg 305-8986Reexamination- Jerry Dost 305-8610 or Ken Schor 308-6710Reissue- Joe Narcavage 305-1795RCEs & CPAs- Gena Jones 306-5586 or Joni Chang 308-3858Sections 102(e), 102(g) and/or 103(c) - Robert Clarke 305-9177, Mark Polutta 308-8122 or Jeanne Clark 306-5603Electronic Filing, CDs – Michael Lewis 305-5585 or Jay Lucas 308-6868

For Further Information…For Further Information…

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Patents Information

Check the USPTO web site for important announcements


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http://www.uspto.gov/main/newsandnotices.htm

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http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html

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Thank You

benefit claims to prior applications under 35 u.s.c. §§ 119(e), 120, 121, and 365(c)

Documents

continuation of application

divisional of application

bypass application

applicationthis application

international application

immediate prior application

application data sheet

cbenefit claims