Title: 35 USC
1Benefit 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_at_USPTO.gov
2Benefit Claimsunder 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).
3Benefit Claimsunder 35 USC 120, 121, and
365(c)
- Specific reference to a nonprovisional
application requires the following - Identification of the prior-filed application by
application number and - 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---.
4Types 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)
5Benefit Claims to Multiple Applicationsunder 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 continuation-in-part, to establish
copendency throughout the entire chain.
6Benefit Claims to Multiple Applicationsunder 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
continuation-in-part of Application No. C, filed
---, and also a continuation-in-part of
Application No. D, filed ---.
7Benefit Claims to International (PCT)
Applicationsunder 35 USC 120, 121, and 365(c)
- Specific reference to an international
application (IA) requires - Identification of the prior-filed IA by
- International application number and
International filing date - (not the 371(c) compliance date) and
- 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.
8Benefit Claims to International (PCT)
Applicationsunder 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 ---.
9Benefit Claims to Provisional Applications under
35 USC 119(e)
- 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
---.
10Benefit Claims to Provisional via
IntermediateNonprovisional 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 ---.
11Benefit 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 ---.
12Impact of Failure to MakeProper 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).
13Notification of the Failure to MakeProper
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).
14Timely 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.
15Untimely 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.
16Prior 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.
17Adding 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.
18Examples 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
---.
19Examples 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 ---.
20Examples 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 ---.
21Examples 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 ---.
22Rescission of non-publication requests
23Eighteen-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
eighteen-month publication - The request must be made upon filing (required by
statute) - The request must be conspicuous
- See PTO form PTO/SB/35
24Eighteen-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/pr
eognotice/rescission.html - Form PTO/SB/36 (10-01)
25Highlights of Recent Legislative Changes
Prepared 4-16-03
26Highlights 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
27Highlights 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
28Highlights 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
29Highlights 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. patents prior art
date may now be the filing date of the IA if the
following three conditions are met - the IA was filed on or after 11/29/00
- the IA designated the US and
- 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 applications U.S. effective filing
date, which can include an IA filing date, if the
same three conditions are met.
30Highlights of Recent Legislative Changes
(Continued)
- Prior art references now available under 102(e)
(contd)
- 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 IAs filing date, if the same
three conditions are met namely - the IA was filed on or after 11/29/00,
- the IA designated the US,
- the IA publication (by WIPO) was in English.
31Highlights 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.
32Highlights of Recent Legislative Changes
(Continued)
- Summary Changes to 102(e) (contd)
- 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.
33Electronic Processing Changes
34Image 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.
35Revised 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.
36Revised 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/w
eek08/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/offi
ces/pac/dapp/opla/preognotice/moreinfoamdtprac.htm
37Revised 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.
38Revised Amendment Format (Continued)
- Highlights
- 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. - 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).
39Revised Claim Amendment Format
- Highlights
- 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.
40Revised 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.
41Revised 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).).
42Revised 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.
43Revised Claim Amendment Format (Continued)
- Use only the following status identifiers in
parentheses after claim number - (Original) Claim filed with the original
specification (not added by preliminary
amendment). - (Currently amended) Claim being amended in the
current amendment. Only currently amended claims
should include markings (strikethrough and
underlining) to indicate changes. - (Previously amended) Claim not being currently
amended, but which was amended in a previous
amendment paper. The claim should be presented
in clean text. - (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)). - (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)).
44Revised Claim Amendment Format (Continued)
- Permissible status identifiers (cont.)
- (Previously added) Claim added in an earlier
amendment paper. - (New) Claim being added in the current
amendment paper. - (Reinstated-formerly claim __) Claim deleted
in an earlier amendment paper, but re-presented
verbatim with a new claim number in current
amendment. - (Previously reinstated) Claim deleted in an
earlier amendment and reinstated in an earlier
amendment paper. - (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. - (Previously represented) Dependent claim
re-presented in independent form in an earlier
amendment, but not currently amended.
45Revised 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.
46Revised 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.
47Revised 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.
48Revised 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.
49Electronic 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.
50For Further Information
- Office of Patent Legal Administration (703)
308-6906 or e-mail to Patent Practice_at_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
51Check the USPTO web site for important
announcements
Patents Information
52Check the USPTO web site for important
announcements
http//www.uspto.gov/main/newsandnotices.htm
53Check the USPTO web site for important
announcements
http//www.uspto.gov/web/offices/pac/dapp/ogsheet.
html
53
54Thank You