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) 308-5107
Bob.Spar@USPTO.gov
1
Benefit Claims
under 35 USC §§ 120, 121, and 365(c)
• Must include a specific reference to
the prior-filed nonprovisional
application in
– the first sentence of the specification; or
– the application data sheet (ADS).
2
Benefit Claims
under 35 USC §§ 120, 121, and 365(c)
•
Specific reference to a nonprovisional
application requires the following:
1. Identification of the prior-filed application by
application number; and
2. 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---.”
3
Types of Benefit Claims
• 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)
4
Benefit Claims to Multiple Applications
under 35 USC §§ 120, 121, and 365(c)
• 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 continuationin-part, to establish copendency throughout
the entire chain.
5
Benefit Claims to Multiple Applications
under 35 USC §§ 120, 121, and 365(c)
• 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 continuationin-part of Application No. C, filed ---, and also a
continuation-in-part of Application No. D, filed --.”
6
Benefit Claims to International (PCT) Applications
under 35 USC §§ 120, 121, and 365(c)
•
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.
7
Benefit Claims to International (PCT) Applications
under 35 USC §§ 120, 121, and 365(c)
• 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 ---.”
8
Benefit Claims to Provisional Applications
under 35 USC § 119(e)
• Must include a specific reference to the priorfiled 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 ---.”
9
Benefit Claims to Provisional via Intermediate
Nonprovisional Application
under 35 USC §§ 120, 365(c) & 119(e)
• 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 --.”
10
Benefit Claims to Provisional via Intermediate IA
under 35 USC §§ 120, 365(c) & 119(e)
• 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 ---.”
11
Impact of Failure to Make
Proper Benefit Claims
• 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).
12
Notification of the Failure to Make
Proper Benefit Claims
• 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).
13
Timely Correction of Benefit Claims
• 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.
14
Untimely Correction of Benefit Claims
• 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.
15
Prior Applications Also Must Include
Specific Reference
• 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.
16
Adding an Incorporation-By-Reference
• 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.
17
Examples of Benefit Claims under 35 USC
§§ 120, 121, and 365(c)
• 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 ---.”
18
Examples of Benefit Claims under 35 USC
§§ 120, 121, and 365(c)
• 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 ---.”
19
Examples of Benefit Claims under 35 USC
§§ 120, 121, and 365(c)
• 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 ---.”
20
Examples of Benefit Claims under 35 USC
§§ 120, 121, and 365(c)
• 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 ---.”
21
Rescission of non-publication requests
22
Eighteen-Month Publication -
Exceptions
• 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 eighteenmonth publication
• The request must be made upon filing (required by
statute)
• The request must be conspicuous
• See PTO form PTO/SB/35
23
Eighteen-Month Publication –
Publication after Non-publication Request
• 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/rescissio
n.html
– Form PTO/SB/36 (10-01)
24
Highlights of
Recent Legislative Changes
25
Prepared 4-16-03
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
26
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
27
Highlights of
Recent Legislative Changes (Continued)
• 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
28
Highlights of
Recent Legislative Changes (Continued)
• 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.
29
Highlights of
Recent Legislative Changes (Continued)
• 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
30
Highlights of
Recent Legislative Changes (Continued)
• 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.
31
Highlights of
Recent Legislative Changes (Continued)
• 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.
32
Electronic Processing Changes
33
Image Processing Prototype
• 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.
34
Revised Amendment Format
• 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.
35
Revised Amendment Format (Continued)
• 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/preo
gnotice/moreinfoamdtprac.htm
36
Revised Amendment Format (Continued)
• 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.
37
Revised Amendment Format (Continued)
•
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).
38
Revised Claim Amendment Format
• 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.
39
Revised Claim Amendment Format (Continued)
• 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.
40
Revised Claim Amendment Format (Continued)
• 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).).
41
Revised Claim Amendment Format (Continued)
• 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.
42
Revised Claim Amendment Format (Continued)
• 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)).
43
Revised Claim Amendment Format (Continued)
• 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.
44
Revised Specification Amendment Format
• 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.
45
Revised Drawing Amendment Format
• 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.
46
Revised Drawing Amendment Format
(Continued)
• 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.
47
Revised Drawing Amendment Format
(Continued)
• 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.
48
Electronic Processing Changes
Changes To Implement Electronic Maintenance of Official
Patent Application Records 68 Fed. Reg. 14365 ( March 25,
2003)
•
•
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.
49
For Further Information…
Office of Patent Legal Administration – (703) 308-6906 or
e-mail to Patent Practice@USPTO.gov
Amendment Practice – Elizabeth Dougherty 306-3156 or Joe
Narcavage 305-1795
Patent Term Adjustment (PTA)- Kery Fries 308-0687
Eighteen-Month Publication – Mark Polutta 308-8122
Provisional Applications- Fred Silverberg 305-8986
Reexamination- Jerry Dost 305-8610 or Ken Schor 308-6710
Reissue- Joe Narcavage 305-1795
RCEs & CPAs- Gena Jones 306-5586 or Joni Chang 308-3858
Sections 102(e), 102(g) and/or 103(c) - Robert Clarke 305-9177,
Mark Polutta 308-8122 or Jeanne Clark 306-5603
Electronic Filing, CDs – Michael Lewis 305-5585 or Jay Lucas
308-6868
50
Check the USPTO web site for
important announcements
Patents
Information
51
Check the USPTO web site for
important announcements
http://www.uspto.gov/main/newsandnotices.htm
52
Check the USPTO web site for important
announcements
http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html
5353
Thank You
54