MPEP § 211 — MPEP § 211
Current through: 2022-07-01

211-Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

 Skip over navigation 
 
 
 
 
 
 
 
 search for patents | search for trademarks 

 
 
 
 
 
 
 
 
 
 
 
 Search 
 
 
 

 
 

 
 
 
 
 
 PATENTS 
 
 Patent Search 

 
 Patent Process 

 
 Patent Classification 

 
 Patent Forms 

 
 Statistics 

 
 Electronic Business Center 

 
 Patent Laws, Regulations, Policies & Procedures 

 
 Resources and Guidance 

 
 Office of Data Management 

 
 Announcements 

 
 Initiatives & Events 

 
 International Protection 

 
 Employee Locator 

 
 Contact Patents 

 

 

 
 TRADEMARKS 
 
 Trademark Search 

 
 Trademarks Process 

 
 News & Notices 

 
 Manuals, Guides, Official Gazette 

 
 Laws & Regulations 

 
 Online Filing 

 
 Contact Trademarks 

 

 

 
 IP LAW & POLICY 
 
 Rulemaking 

 
 IP Policy and Enforcement 

 
 Protecting IP Overseas 

 
 Training and Education 

 
 Training Programs & Conferences 

 
 Office of Governmental Affairs 

 
 Office of Chief Economist 

 
 Boards and Counsel 

 

 

 
 PRODUCTS & SERVICES 
 
 Electronic Data Products 

 
 XML Resources 

 
 XML Resources - Retrospective 

 
 USPTO Contact Center Order Form 

 
 Services 

 
 Locate Libraries 

 
 Training/Events 

 
 Online Services Hub 

 

 

 
 INVENTORS 
 
 Patents for Inventors 

 
 Trademarks for Inventors 

 
 Inventors Assistance 

 
 Education and Information 

 
 Scam Prevention 

 
 Pro Se and Pro Bono 

 
 Current Events 

 
 State Resources 

 
 InventorsEye Newsletter 

 

 

 
 NEWS & NOTICES 
 
 Subscription Center 

 
 Press Releases 

 
 Testimony and Speeches 

 
 Director's Forum 

 
 Systems Status 

 
 Emergency Notices 

 
 USPTO Videos 

 
 Official Gazette 

 
 Federal Register Notices 

 
 Event Calendar 

 

 

 
 FAQs 
 
 Patents FAQs 

 
 Trademarks FAQs 

 
 Assignments 

 
 Security 

 
 Musicians and Artists 

 
 Browser Plugins 

 
 Other Web Resources 

 

 

 
 ABOUT US 
 
 USPTO Leadership 

 
 USPTO Organization 

 
 USPTO Offices 

 
 Careers 

 
 Budget, Performance, and Planning 

 
 Statistics 

 
 Vendor Information 

 
 Public Advisory Committees 

 
 National Medal of Technology and Innovation 

 
 IP in Motion 

 
 Contact Us 

 

 

 
 
 

 

 
 

 
 
 
 
 Home Page 

 
 Patents 

 
 Patent Laws, Regulations, Policies & Procedures 

 
 Manual of Patent Examining Procedure 

 Chapter 0200 

 Section 211 
 

 
 
 
 
 
 211 Claiming the Benefit of an Earlier Filing Date Under
 35 U.S.C. 120 and 119(e) [R-07.2015]
 

 
 35 U.S.C. 120 
 Benefit of earlier filing date in the United
 States. 

 An application for patent for an invention disclosed in
 the manner provided by section 112(a) (other than the
 requirement to disclose the best mode) in an application previously filed in the United
 States, or as provided by section 363 or 385 
 which names an inventor or joint inventor in the previously filed application shall have
 the same effect, as to such invention, as though filed on the date of the prior
 application, if filed before the patenting or abandonment of or termination of
 proceedings on the first application or on an application similarly entitled to the
 benefit of the filing date of the first application and if it contains or is amended to
 contain a specific reference to the earlier filed application. No application shall be
 entitled to the benefit of an earlier filed application under this section unless an
 amendment containing the specific reference to the earlier filed application is
 submitted at such time during the pendency of the application as required by the
 Director. The Director may consider the failure to submit such an amendment within that
 time period as a waiver of any benefit under this section. The Director may establish
 procedures, including the requirement for payment of the fee specified in section
 41(a)(7) , to accept an unintentionally delayed submission of an
 amendment under this section.
 

 

 
 35 U.S.C. 119 
 Benefit of earlier filing date; right of
 priority. 

 *****

 
 (e)
 
 (1) An application for patent filed under
 section 111(a) or section
 363 for an invention disclosed in the manner provided
 by section 112(a) (other than the requirement to
 disclose the best mode) in a provisional application filed under
 section 111(b) , by an inventor or inventors named in
 the provisional application, shall have the same effect, as to such
 invention, as though filed on the date of the provisional application filed
 under section 111(b) , if the
 application for patent filed under section 111(a) or
 section 363 is filed not later than 12 months after
 the date on which the provisional application was filed and if it contains
 or is amended to contain a specific reference to the provisional
 application. The Director may prescribe regulations, including the
 requirement for payment of the fee specified in section 41(a)(7) , pursuant to which the 12-month period set
 forth in this subsection may be extended by an additional 2 months if the
 delay in filing the application under section 111(a) or section 363 
 within the 12-month period was unintentional. No application shall be
 entitled to the benefit of an earlier filed provisional application under
 this subsection unless an amendment containing the specific reference to the
 earlier filed provisional application is submitted at such time during the
 pendency of the application as required by the Director. The Director may
 consider the failure to submit such an amendment within that time period as
 a waiver of any benefit under this subsection. The Director may establish
 procedures, including the payment of the fee specified in section
 41(a)(7) , to accept an unintentionally delayed
 submission of an amendment under this subsection. 
 

 (2) A provisional application filed under
 section 111(b) may not be relied upon in any
 proceeding in the Patent and Trademark Office unless the fee set forth in
 subparagraph (A) or (C) of section 41(a)(1) has
 been paid. 
 

 (3) If the day that is 12 months after the filing
 date of a provisional application falls on a Saturday, Sunday, or Federal
 holiday within the District of Columbia, the period of pendency of the
 provisional application shall be extended to the next succeeding secular or
 business day. For an application for patent filed under section
 363 in a Receiving Office other than the Patent and
 Trademark Office, the 12-month and additional 2-month period set forth in
 this subsection shall be extended as provided under the treaty and
 Regulations as defined in section 351 .
 

 
 

 
 *****

 

 
 37 CFR 1.78 Claiming benefit of earlier filing date and
 cross-references to other applications. 

 
 (a) Claims under 35 U.S.C. 119(e) for the
 benefit of a prior-filed provisional application. An applicant in a
 nonprovisional application, other than for a design patent, or an international
 application designating the United States may claim the benefit of one or more
 prior-filed provisional applications under the conditions set forth in
 35 U.S.C.
 119(e) and this section.
 
 (1) The nonprovisional application or international
 application designating the United States must be:
 
 (i) Filed not later than twelve months
 after the date on which the provisional application was filed, subject
 to paragraph (b) of this section (a subsequent application); or
 

 (ii) Entitled to claim the benefit under
 35 U.S.C. 120 ,
 121 , or
 365(c) of a subsequent application that was
 filed within the period set forth in paragraph (a)(1)(i) of this
 section.
 

 
 

 (2) Each prior-filed provisional application
 must name the inventor or a joint inventor named in the later-filed
 application as the inventor or a joint inventor. In addition, each
 prior-filed provisional application must be entitled to a filing date as set
 forth in § 1.53(c) , and the basic
 filing fee set forth in § 1.16(d) must have been
 paid for such provisional application within the time period set forth in §
 1.53(g) .
 

 (3) Any nonprovisional application or international
 application designating the United States that claims the benefit of one or
 more prior-filed provisional applications must contain, or be amended to
 contain, a reference to each such prior-filed provisional application,
 identifying it by the provisional application number (consisting of series
 code and serial number). If the later-filed application is a nonprovisional
 application, the reference required by this paragraph must be included in an
 application data sheet (§ 1.76(b)(5) ).
 

 (4) The reference required by paragraph (a)(3) of this
 section must be submitted during the pendency of the later-filed
 application. If the later-filed application is an application filed under
 35 U.S.C. 111(a) , this reference must also be
 submitted within the later of four months from the actual filing date of the
 later-filed application or sixteen months from the filing date of the
 prior-filed provisional application. If the later-filed application is a
 nonprovisional application entering the national stage from an international
 application under 35 U.S.C. 371 , this
 reference must also be submitted within the later of four months from the
 date on which the national stage commenced under 35 U.S.C.
 371(b) or (f) (§ 1.491(a) ), four months from the date of the initial
 submission under 35 U.S.C. 371 to enter
 the national stage, or sixteen months from the filing date of the
 prior-filed provisional application. Except as provided in paragraph (c) of
 this section, failure to timely submit the reference is considered a waiver
 of any benefit under 35 U.S.C. 119(e) of the
 prior-filed provisional application. The time periods in this paragraph do
 not apply if the later-filed application is:
 
 (i) An application filed under
 35 U.S.C. 111(a) 
 before November 29, 2000; or
 

 (ii) An international application filed
 under 35 U.S.C. 363 
 before November 29, 2000.
 

 
 

 (5) If the prior-filed provisional application
 was filed in a language other than English and both an English-language
 translation of the prior-filed provisional application and a statement that
 the translation is accurate were not previously filed in the prior-filed
 provisional application, the applicant will be notified and given a period
 of time within which to file, in the prior-filed provisional application,
 the translation and the statement. If the notice is mailed in a pending
 nonprovisional application, a timely reply to such a notice must include the
 filing in the nonprovisional application of either a confirmation that the
 translation and statement were filed in the provisional application, or an
 application data sheet (§ 1.76(b)(5) ) eliminating
 the reference under paragraph (a)(3) of this section to the prior-filed
 provisional application, or the nonprovisional application will be
 abandoned. The translation and statement may be filed in the provisional
 application, even if the provisional application has become abandoned.
 

 (6) If a nonprovisional application filed on or after
 March 16, 2013, claims the benefit of the filing date of a provisional
 application filed prior to March 16, 2013, and also contains, or contained
 at any time, a claim to a claimed invention that has an effective filing
 date as defined in § 1.109 that is on or
 after March 16, 2013, the applicant must provide a statement to that effect
 within the later of four months from the actual filing date of the
 nonprovisional application, four months from the date of entry into the
 national stage as set forth in § 1.491 in an
 international application, sixteen months from the filing date of the
 prior-filed provisional application, or the date that a first claim to a
 claimed invention that has an effective filing date on or after March 16,
 2013, is presented in the nonprovisional application. An applicant is not
 required to provide such a statement if the applicant reasonably believes on
 the basis of information already known to the individuals designated in §
 1.56(c) that the nonprovisional application does not,
 and did not at any time, contain a claim to a claimed invention that has an
 effective filing date on or after March 16, 2013.
 

 
 

 (b) Delayed filing of the subsequent nonprovisional application or
 international application designating the United States. If the
 subsequent nonprovisional application or international application designating the
 United States has a filing date which is after the expiration of the twelve-month
 period set forth in paragraph (a)(1)(i) of this section but within two months from
 the expiration of the period set forth in paragraph (a)(1)(i) of this section, the
 benefit of the provisional application may be restored under PCT Rule
 26bis.3 for an international
 application, or upon petition pursuant to this paragraph, if the delay in filing
 the subsequent nonprovisional application or international application designating
 the United States within the period set forth in paragraph (a)(1)(i) of this
 section was unintentional.
 
 (1) A petition to restore the benefit of a
 provisional application under this paragraph filed on or after May 13, 2015,
 must be filed in the subsequent application, and any petition to restore the
 benefit of a provisional application under this paragraph must include:
 
 (i) The reference required by
 35 U.S.C. 119(e) to the prior-filed provisional
 application in an application data sheet (§ 1.76(b)(5) ) identifying it by provisional
 application number (consisting of series code and serial number),
 unless previously submitted;
 

 (ii) The petition fee as set forth in §
 1.17(m) ; and 
 

 (iii) A statement that the delay in filing
 the subsequent nonprovisional application or international application
 designating the United States within the twelve-month period set forth
 in paragraph (a)(1)(i) of this section was unintentional. The Director
 may require additional information where there is a question whether
 the delay was unintentional.
 

 
 

 (2) The restoration of the right of priority
 under PCT
 Rule 26bis.3 to a provisional
 application does not affect the requirement to include the reference
 required by paragraph (a)(3) of this section to the provisional application
 in a national stage application under 35 U.S.C. 371 within the
 time period provided by paragraph (a)(4) of this section to avoid the
 benefit claim being considered waived.
 

 
 

 (c) Delayed claims under 35 U.S.C. 119(e) for the
 benefit of a prior-filed provisional application. If the reference
 required by 35
 U.S.C. 119(e) and paragraph (a)(3) of this section is
 presented in an application after the time period provided by paragraph (a)(4) of
 this section, the claim under 35 U.S.C. 119(e) for the
 benefit of a prior-filed provisional application may be accepted if the reference
 identifying the prior-filed application by provisional application number was
 unintentionally delayed. A petition to accept an unintentionally delayed claim
 under 35 U.S.C.
 119(e) for the benefit of a prior-filed provisional
 application must be accompanied by:
 
 (1) The reference required by 35 U.S.C.
 119(e) and paragraph (a)(3) of this section to the
 prior-filed provisional application, unless previously submitted;
 

 (2) The petition fee as set forth in §
 1.17(m) ; and
 

 (3) A statement that the entire delay between
 the date the benefit claim was due under paragraph (a)(4) of this section
 and the date the benefit claim was filed was unintentional. The Director may
 require additional information where there is a question whether the delay
 was unintentional.
 

 
 

 (d) Claims under 35 U.S.C. 120 ,
 121 , 365(c) , or
 386(c) for the benefit of a prior-filed nonprovisional
 application, international application, or international design
 application. An applicant in a nonprovisional application (including
 a nonprovisional application resulting from an international application or
 international design application), an international application designating the
 United States, or an international design application designating the United
 States may claim the benefit of one or more prior-filed copending nonprovisional
 applications, international applications designating the United States, or
 international design applications designating the United States under the
 conditions set forth in 35 U.S.C. 120 ,
 121 , 365(c) , or 386(c) and this section.
 
 (1) Each prior-filed application must name the
 inventor or a joint inventor named in the later-filed application as the
 inventor or a joint inventor. In addition, each prior-filed application must
 either be:
 
 (i) An international application entitled
 to a filing date in accordance with PCT Article
 11 and designating the United States;
 

 (ii) An international design application
 entitled to a filing date in accordance with § 1.1023 and designating the United States;
 or
 

 (iii) A nonprovisional application under
 35 U.S.C. 111(a) 
 that is entitled to a filing date as set forth in § 1.53(b) or (d) for which the basic filing fee set forth in
 § 1.16 has been paid within the pendency of the
 application.
 

 
 

 (2) Except for a continued prosecution
 application filed under § 1.53(d) , any
 nonprovisional application, international application designating the United
 States, or international design application designating the United States
 that claims the benefit of one or more prior-filed nonprovisional
 applications, international applications designating the United States, or
 international design applications designating the United States must contain
 or be amended to contain a reference to each such prior-filed application,
 identifying it by application number (consisting of the series code and
 serial number), international application number and international filing
 date, or international registration number and filing date under §
 1.1023 . If the
 later-filed application is a nonprovisional application, the reference
 required by this paragraph must be included in an application data sheet (§
 1.76(b)(5) ). The reference also must identify the
 relationship of the applications, namely, whether the later-filed
 application is a continuation, divisional, or continuation-in-part of the
 prior-filed nonprovisional application, international application, or
 international design application.
 

 (3) 
 
 (i) The reference required by
 35 U.S.C. 120 and
 paragraph (d)(2) of this section must be submitted during the pendency
 of the later-filed application.
 

 (ii) If the later-filed application is an
 application filed under 35 U.S.C. 111(a) ,
 this reference must also be submitted within the later of four months
 from the actual filing date of the later-filed application or sixteen
 months from the filing date of the prior-filed application. If the
 later-filed application is a nonprovisional application entering the
 national stage from an international application under
 35 U.S.C. 371 , this reference must also be
 submitted within the later of four months from the date on which the
 national stage commenced under 35 U.S.C. 371(b) 
 or (f) (§ 1.491(a) ), four
 months from the date of the initial submission under 35 U.S.C.
 371 to enter the national stage, or sixteen
 months from the filing date of the prior-filed application. The time
 periods in this paragraph do not apply if the later-filed application
 is:
 
 (A) An application for a design
 patent;
 

 (B) An application filed under
 35 U.S.C.
 111(a) before November 29, 2000; or
 

 (C) An international application
 filed under 35 U.S.C.
 363 before November 29, 2000.
 

 
 

 (iii) Except as provided in paragraph (e) of
 this section, failure to timely submit the reference required by
 35 U.S.C. 120 and
 paragraph (d)(2) of this section is considered a waiver of any benefit
 under 35 U.S.C. 120 ,
 121 ,
 365(c) , or 386(c) to the prior-filed application.
 

 
 

 (4) The request for a continued prosecution
 application under § 1.53(d) is the specific
 reference required by 35 U.S.C. 120 to the
 prior-filed application. The identification of an application by application
 number under this section is the identification of every application
 assigned that application number necessary for a specific reference required
 by 35
 U.S.C. 120 to every such application assigned that
 application number.
 

 (5) Cross-references to other related
 applications may be made when appropriate (see § 1.14 ), but cross-references to applications for which
 a benefit is not claimed under title 35, United States Code, must not be
 included in an application data sheet (§ 1.76(b)(5) ).
 

 (6) If a nonprovisional application filed on or
 after March 16, 2013, other than a nonprovisional international design
 application, claims the benefit of the filing date of a nonprovisional
 application or an international application designating the United States
 filed prior to March 16, 2013, and also contains, or contained at any time,
 a claim to a claimed invention that has an effective filing date as defined
 in § 1.109 that is on or after March 16, 2013, the
 applicant must provide a statement to that effect within the later of four
 months from the actual filing date of the later-filed application, four
 months from the date of entry into the national stage as set forth in §
 1.491 in an international application, sixteen months
 from the filing date of the prior-filed application, or the date that a
 first claim to a claimed invention that has an effective filing date on or
 after March 16, 2013, is presented in the later-filed application. An
 applicant is not required to provide such a statement if either:
 
 (i) The application claims the benefit of
 a nonprovisional application in which a statement under §
 1.55(k) , paragraph
 (a)(6) of this section, or this paragraph that the application
 contains, or contained at any time, a claim to a claimed invention
 that has an effective filing date on or after March 16, 2013 has been
 filed; or
 

 (ii) The applicant reasonably believes on
 the basis of information already known to the individuals designated
 in § 1.56(c) that the
 later filed application does not, and did not at any time, contain a
 claim to a claimed invention that has an effective filing date on or
 after March 16, 2013.
 

 
 

 (7) Where benefit is claimed under
 35
 U.S.C. 120 , 121 , 365(c) , or 386(c) to an
 international application or an international design application which
 designates but did not originate in the United States, the Office may
 require a certified copy of such application together with an English
 translation thereof if filed in another language.
 

 
 

 (e) Delayed claims under 35 U.S.C. 120 ,
 121 , 365(c) , or
 386(c) for the benefit of a prior-filed nonprovisional
 application, international application, or international design
 application. If the reference required by 35 U.S.C.
 120 and paragraph (d)(2) of this section is presented after
 the time period provided by paragraph (d)(3) of this section, the claim under
 35 U.S.C.
 120 , 121 , 365(c) , or
 386(c) for the benefit of a prior-filed copending
 nonprovisional application, international application designating the United
 States, or international design application designating the United States may be
 accepted if the reference required by paragraph (d)(2) of this section was
 unintentionally delayed. A petition to accept an unintentionally delayed claim
 under 35
 U.S.C. 120 , 121 , 365(c) , or
 386(c) for the benefit of a prior-filed application must be
 accompanied by:
 
 (1) The reference required by 35 U.S.C.
 120 and paragraph (d)(2) of this section to the
 prior-filed application, unless previously submitted;
 

 (2) The petition fee as set forth in §
 1.17(m) ; and
 

 (3) A statement that the entire delay between
 the date the benefit claim was due under paragraph (d)(3) of this section
 and the date the benefit claim was filed was unintentional. The Director may
 require additional information where there is a question whether the delay
 was unintentional.
 

 
 

 (f) Applications containing patentably indistinct claims. Where two
 or more applications filed by the same applicant or assignee contain patentably
 indistinct claims, elimination of such claims from all but one application may be
 required in the absence of good and sufficient reason for their retention during
 pendency in more than one application.
 

 (g) Applications or patents under reexamination naming different inventors
 and containing patentably indistinct claims. If an application or a
 patent under reexamination and at least one other application naming different
 inventors are owned by the same person and contain patentably indistinct claims,
 and there is no statement of record indicating that the claimed inventions were
 commonly owned or subject to an obligation of assignment to the same person on the
 effective filing date (as defined in § 1.109 ), or on the date of the
 invention, as applicable, of the later claimed invention, the Office may require
 the applicant or assignee to state whether the claimed inventions were commonly
 owned or subject to an obligation of assignment to the same person on such date,
 and if not, indicate which named inventor is the prior inventor, as applicable.
 Even if the claimed inventions were commonly owned, or subject to an obligation of
 assignment to the same person on the effective filing date (as defined in §
 1.109 ), or on the date of the invention, as applicable, of
 the later claimed invention, the patentably indistinct claims may be rejected
 under the doctrine of double patenting in view of such commonly owned or assigned
 applications or patents under reexamination.
 

 (h) Applications filed before September 16, 2012. Notwithstanding
 the requirement in paragraphs (a)(3) and (d)(2) of this section that any specific
 reference to a prior-filed application be presented in an application data sheet
 (§ 1.76 ), this requirement in paragraph (a)(3) and (d)(2) of
 this section will be satisfied by the presentation of such specific reference in
 the first sentence(s) of the specification following the title in a nonprovisional
 application filed under 35 U.S.C. 111(a) before
 September 16, 2012, or resulting from an international application filed under
 35 U.S.C.
 363 before September 16, 2012. The provisions of this
 paragraph do not apply to any specific reference submitted for a petition under
 paragraph (b) of this section to restore the benefit of a provisional
 application.
 

 (i) Petitions required in international applications. If a petition
 under paragraph (b), (c), or (e) of this section is required in an international
 application that was not filed with the United States Receiving Office and is not
 a nonprovisional application, then such petition may be filed in the earliest
 nonprovisional application that claims benefit under 35 U.S.C.
 120 , 121 , 365(c) , or
 386(c) to the international application and will be treated
 as having been filed in the international application.
 

 (j) Benefit under 35 U.S.C. 386(c) . 
 Benefit under 35 U.S.C. 386(c) with respect
 to an international design application is applicable only to nonprovisional
 applications, international applications, and international design applications
 filed on or after May 13, 2015, and patents issuing thereon.
 

 (k) Time periods in this section. The time periods set forth in
 this section are not extendable, but are subject to 35 U.S.C.
 21(b) (and § 1.7(a) ), PCT Rule
 80.5 , and Hague Agreement Rule 4(4).
 

 
 

 There are several procedural requirements for a later-filed
 application to claim the benefit of the filing date of a prior-filed application under
 35 U.S.C.
 120 , 121 , 365(c) , or
 386(c) or, provided the later-filed application is not a design
 application (see 35
 U.S.C. 172 ), under 35 U.S.C. 119(e) . These requirements
 are briefly summarized below, followed by a cross-reference to the MPEP section where the
 requirement is discussed in greater detail. 
 

 
 (A) The prior-filed application must be entitled to a
 filing date and meet additional requirements as discussed in MPEP §
 211.01 . 
 

 (B) The later-filed application must name the inventor or
 at least one joint inventor named in the prior-filed application for a benefit claim
 under 35 U.S.C.
 119(e) , 120 , 121 ,
 365(c) , or 386(c) (see MPEP §
 211.01 ).
 

 (C) For a benefit claim under 35 U.S.C.
 119(e) , 120 , 121 ,
 365(c) , or 386(c) , the later-filed
 application must contain a reference to the prior-filed application (see
 MPEP §
 211.02 ).
 

 (D) The reference to the prior-filed application must be
 submitted within the time periods set forth in 37 CFR
 1.78 . See MPEP § 211.03 . However, the Office
 will accept an unintentionally delayed benefit claim in certain circumstances. See
 MPEP §
 211.04 . 
 

 (E) In order to be entitled to the benefit of the
 prior-filed application, the earlier application must disclose the claimed invention
 of the later-filed application in the manner provided by 35 U.S.C.
 112(a) except for the best mode requirement. See
 MPEP §
 211.05 . 
 

 (F) If a nonprovisional application, other than a
 nonprovisional international design application, filed on or after March 16, 2013,
 claims the benefit of the filing date of a provisional or nonprovisional application
 filed prior to March 16, 2013, and also contains, or contained at any time, a claim
 to a claimed invention that has an effective filing date on or after March 16, 2013,
 the applicant must provide a statement to that effect within a specified time period.
 See 37 CFR
 1.78(a)(6) and (d)(6) and MPEP §
 210 , subsection III. If the claims in the later-filed
 application are not entitled to the benefit of an earlier filing date, the examiner
 should:
 
 (1) Notify applicant that the claims in the
 later-filed application are not entitled to the benefit of an earlier filing
 date because one or more conditions for receiving the benefit of an earlier
 filing date have not been satisfied (the examiner may use form paragraph
 2.09 
 and other appropriate form paragraphs provided in the following subsections);
 and
 

 (2) Conduct a prior art search based on the actual
 filing date of the application instead of the earlier filing date. The examiner
 may use an intervening reference in a rejection until applicant corrects the
 benefit claim or shows that the conditions for entitlement to the benefit of
 the prior application have been met. 
 

 
 

 
 
 211.01 Requirements Related to the Prior-Filed
 Application [R-07.2022]
 
 I. THE PRIOR-FILED APPLICATION MUST BE ENTITLED TO A FILING DATE If the prior-filed application is a nonprovisional
 application filed under 35 U.S.C. 111(a) , the application
 must be entitled to a filing date as set forth in 37 CFR
 1.53(b) or (d) , and the basic filing fee as
 set forth in 37 CFR
 1.16 must have been paid within the pendency of the
 application. See 37 CFR 1.78(d)(1)(iii) . If the
 prior-filed application is an international application designating the United
 States, the prior-filed application must be entitled to a filing date in accordance
 with PCT Article
 11 . See 37 CFR 1.78(d)(1)(i) . If the
 prior-filed application is an international design application designating the United
 States, the prior-filed application must be entitled to a filing date in accordance
 with 37
 CFR 1.1023 . See 37 CFR 1.78(d)(1)(ii) .
 

 If the prior-filed application is a provisional
 application, the provisional application must be entitled to a filing date as set
 forth in 37 CFR
 1.53(c) and the basic filing fee of the provisional application
 must have been paid within the time period set in 37 CFR
 1.53(g) . See 37 CFR 1.78(a)(2) .
 

 Form paragraph 2.40 may be used to notify applicant
 that the application is not entitled to the benefit of the prior-filed application
 because the prior-filed application was not entitled to a filing date and/or did not
 include the basic filing fee.
 

 ¶ 2.40 Prior-Filed Application Not Entitled to a Filing Date or Basic
 Filing Fee Was Not Paid
 

 This application claims the benefit of prior-filed application No. 
 [1] under 120 , 121 , 365(c) , or 386(c) or
 under 35 U.S.C.
 119(e) . If the prior-filed application is an international application
 designating the United States, it must be entitled to a filing date in accordance with
 PCT Article
 11 ; if the prior-filed application is an international design
 application designating the United States, it must be entitled to a filing date in accordance
 with 37 CFR
 1.1023 ; and if the prior-filed application is a nonprovisional
 application under 35
 U.S.C. 111(a) , the prior-filed application must be entitled to a filing
 date as set forth in 37
 CFR 1.53(b) or 1.53(d) and include the basic filing fee
 set forth in 37 CFR
 1.16 . See 37 CFR 1.78(d)(1) . If the prior-filed
 application is a provisional application, the prior-filed application must be entitled to a
 filing date as set forth in 37 CFR 1.53(c) and the basic filing fee
 must be paid within the time period set forth in 37 CFR 1.53(g) . See 37 CFR
 1.78(a)(2) .
 

 This application is not entitled to the
 benefit of the prior-filed application because the prior-filed application [2] .
 Applicant is required to delete the benefit claim to the prior-filed application from the
 Application Data Sheet (ADS) or, for applications filed before September 16, 2012, from the
 ADS or the first sentence(s) of the specification as appropriate.
 

 Examiner Note:
 
 1. Use this form paragraph to notify
 applicant that the application is not entitled to the benefit of the prior-filed
 application because the prior-filed application was not entitled to a filing date and/or
 did not include the basic filing fee.
 

 2. In bracket 1, insert the
 application number of the prior-filed application.
 

 3. In bracket 2, insert “was not
 entitled to a filing date”; “did not include the basic filing fee”; or “was not entitled
 to a filing date and did not include the basic filing fee”.
 
 
 

 If a provisional application is abandoned due to, at
 least, a failure to pay the basic filing fee, applicant may still claim benefit to
 the prior-filed application by filing a petition to revive under 37 CFR 1.137 in
 the provisional application to pay the basic filing fee. If such a petition to revive
 is grantable, the decision granting the petition should indicate that the basic
 filing fee is being accepted as having been paid within the time period set forth in
 37 CFR
 1.53(g) for purposes of compliance with 37 CFR
 1.78(a)(2) in any subsequent nonprovisional application. 
 

 A petition under 37 CFR 1.183 in order to claim
 benefit of such a provisional application is not necessary.
 

 II. SAME INVENTOR OR A COMMON JOINT INVENTOR The statute requires that applications claiming benefit
 of the earlier filing date under 35 U.S.C. 119(e) or
 120 name the inventor or at least one joint inventor named in
 the previously filed application or provisional application. See MPEP §§
 201.06 , 602.01(c) et seq. and 1412.04 for correction of
 inventorship. If upon filing of the application and the filing of a relied upon
 prior-filed application there is an overlap in appropriately named inventorship, an
 application otherwise properly identified as a continuation, continuation-in-part or
 divisional application (and meeting all other requirements) can claim benefit of the
 prior-filed application's filing date pursuant to 35 U.S.C.
 120 and 121 . Note that to be entitled to
 the benefit of any prior-filed application(s), in addition to naming the inventor or
 at least one common joint inventor, the invention claimed in the later-filed
 application must be supported in the manner provided by the 35 U.S.C.
 112(a) , except for the best mode requirement. See
 MPEP §
 211.05 .
 

 III. TRANSITION APPLICATION STATEMENT If a nonprovisional application filed on or after March
 16, 2013, claims the benefit of the filing date of a provisional or nonprovisional
 application filed prior to March 16, 2013, and also contains, or contained at any
 time, a claim to a claimed invention that has an effective filing date on or after
 March 16, 2013, the applicant must provide a statement to that effect within a
 specified time period. See 37 CFR 1.78(a)(6) and
 (d)(6) and MPEP § 210 , subsection III.
 Nonprovisional international design applications are excluded from the transition
 provisions of 37 CFR 1.78(a)(6) and (d)(6) .
 

 IV. ADDITIONAL REQUIREMENTS See MPEP §
 211.01(a) for additional information and requirements
 specific to claiming the benefit of a provisional application.
 

 See MPEP § 211.01(b) for additional
 information and requirements specific to claiming the benefit of an earlier-filed
 nonprovisional application. 
 

 
 211.01(a) Claiming the Benefit of a Provisional
 Application [R-07.2022]
 
 I. IN GENERAL When a later-filed application is claiming the
 benefit of a prior-filed provisional application under 35 U.S.C.
 119(e) , the nonprovisional application must be filed not
 later than 12 months after the date on which the provisional application was
 filed, unless the benefit of the provisional application has been restored. See
 37 CFR
 1.78(a)(1) and (b) and subsection II, below. If the day that is 12 months
 after the filing date of a provisional application falls on a Saturday, Sunday, or
 federal holiday within the District of Columbia, the nonprovisional application
 may be filed on the next succeeding business day. See 35 U.S.C.
 21(b) , 37 CFR 1.7(b) , and
 MPEP § 201.04 and § 505 .
 

 In addition, each prior-filed provisional
 application must have the same inventor or at least one joint inventor in common
 with the later-filed application and must be entitled to a filing date as set
 forth in 37
 CFR 1.53(c) , and the basic filing fee set forth in
 37 CFR
 1.16(d) must have been paid for such provisional application
 within the time period set forth in 37 CFR 1.53(g) . See
 37 CFR
 1.78(a)(2) and MPEP §
 211.01 .
 

 If benefit is being claimed to a provisional
 application which was filed in a language other than English, (A) an English
 language translation of the provisional application, and (B) a statement that the
 translation is accurate, are required to be filed in the provisional application.
 If the translation and statement were not filed in the provisional application,
 the applicant will be notified in the nonprovisional application and given a
 period of time within which to file the translation and statement in the
 provisional application, and a reply in the nonprovisional application confirming
 that the translation and statement were filed in the provisional application. See
 37 CFR
 1.78(a)(5) . In the alternative, applicant may delete the
 benefit claim to the provisional application from the Application Data Sheet (ADS)
 or, for applications filed before September 16, 2012, from the ADS or the first
 sentence(s) of the specification, as appropriate. See MPEP §
 601.05(a) or (b) , as appropriate, for additional details on the
 requirements for a corrected or supplemental ADS. In a pending nonprovisional
 application, failure to timely reply to such notice will result in the abandonment
 of the nonprovisional application. Form paragraph 2.38 may be used to notify
 applicant that an English translation of the non-English language provisional
 application is required.
 

 ¶ 2.38 Claiming Benefit to a Non-English Language Provisional
 Application
 

 This application claims benefit to
 provisional application No. [1] , filed on [2] , in a language other
 than English. An English translation of the non-English language provisional application and a
 statement that the translation is accurate must be filed in provisional application No.
 [3] . See 37 CFR 1.78 . The [4] required
 by 37 CFR
 1.78 is missing. Accordingly, applicant must supply 1) the missing
 [5] in provisional application No. [6] and 2) in the present
 application, a confirmation that the translation and statement were filed in the provisional
 application. If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to
 the expiration of the time period set in this Office action, the present application will be
 abandoned. See 37
 CFR 1.78 .
 

 Examiner Note:
 
 1. Use this form paragraph to notify
 applicant that an English translation of the non-English language provisional
 application and/or a statement that the translation is accurate is required. Do not use
 this form paragraph if a translation of the provisional application and a statement that
 the translation was accurate were filed in the nonprovisional application (the present
 application) before November 25, 2005.
 

 2. In brackets 1 and 3, insert the
 application number of the non-English language provisional application.
 

 3. In bracket 2, insert the filing
 date of the prior provisional application.
 

 4. In brackets 4 and 5, insert
 --English translation and a statement that the translation is accurate-- or --statement
 that the translation is accurate--, where appropriate.
 
 
 

 Applicant may claim the benefit of a provisional
 application by claiming the benefit of an intermediate copending nonprovisional
 application. The later-filed application must claim the benefit of the
 intermediate nonprovisional application under 35 U.S.C.
 120 , 121 , or 365(c) ; the
 intermediate application must be filed not later than 12 months after the filing
 date of the provisional application (in which the basic filing fee was timely
 filed) unless the benefit of the provisional application has been restored (see
 37 CFR 1.78(b) and subsection II, below); and in the
 later-filed application, the intermediate application must be clearly identified
 as claiming the benefit of the provisional application under 35 U.S.C.
 119(e) . See also MPEP §
 211.01(b) , subsection II. 
 

 Design applications may not claim the benefit of a
 provisional application under 35 U.S.C. 119(e) . See
 35 U.S.C.
 172 . Thus, where a design patent application claims benefit
 under 35
 U.S.C. 120 to an intermediate nonprovisional utility patent
 application that directly claims the benefit of a provisional application, the
 design application cannot claim the benefit of the filing date of the provisional
 application. 
 

 II. RESTORING THE BENEFIT OF A PROVISIONAL APPLICATION Effective December 18, 2013, title II of the Patent
 Law Treaties Implementation Act (PLTIA) provides for restoration of the right to
 claim benefit of a provisional application filed after the expiration of the
 twelve-month period in 35 U.S.C. 119(e) . If a
 nonprovisional application or an international application designating the United
 States has a filing date which is after the expiration of the twelve-month period
 but within two months from the expiration of the period, the benefit of the
 provisional application may be restored under PCT Rule
 26bis.3 for an international application,
 or upon petition under 37 CFR 1.78(b) , if the delay
 in filing the nonprovisional application or the international application was
 unintentional. Thus, an application may now validly claim the benefit of a
 provisional application filed up to fourteen months earlier. As a result of the
 implementation of title I of the PLTIA, 37 CFR 1.78(a) and
 (b) were amended effective May 13, 2015, to provide that a
 petition filed on or after May 13, 2015 to restore the benefit of a provisional
 application must be filed in the subsequent application, and to clarify that the
 subsequent application is the application required to be filed within the period
 set forth in 37 CFR 1.78(a)(1)(i) . For
 purposes of 37 CFR 1.78(a)(1)(ii) , the
 subsequent application may be a nonprovisional application or an international
 application designating the United States. Where a petition under
 37 CFR 1.78(b) is required in an international application
 that was not filed in the United States Receiving Office and is not a
 nonprovisional application, then the petition may be filed in the earliest
 nonprovisional application that claims benefit under 35 U.S.C.
 120 , 121 , or 365(c) to
 the international application and will be treated as being filed in the
 international application. See 37 CFR 1.78(i) .
 

 A petition under 37 CFR
 1.78(b) requires:
 

 
 (A) the reference required by 35 U.S.C.
 119(e) and 37 CFR 1.78 to the
 prior-filed provisional application, which must be included in application
 data sheet (unless previously submitted in an application data sheet);
 

 (B) the petition fee as set forth in
 37 CFR 1.17(m) ; and 
 

 (C) a statement that the delay in filing the
 nonprovisional application or international application designating the
 United States within the twelve-month period set forth in 37 CFR
 1.78(a)(1)(i) was unintentional.
 

 
 The Director may require additional information
 where there is a question whether the delay was unintentional. 
 

 If the reference required by 35 U.S.C.
 119(e) and 37 CFR 1.78 to the prior-filed
 provisional application is not made in the subsequent application within the
 period set forth in 37 CFR 1.78(a)(4) , a petition
 to accept an unintentionally delayed claim under 37 CFR
 1.78(c) must also be filed. See MPEP §
 211.04 for a discussion of the requirements for a
 petition to accept an unintentionally delayed claim under 37 CFR
 1.78(c) . 
 

 If a petition under 37 CFR
 1.78(b) to restore benefit of a provisional application is
 granted, a further petition under 37 CFR 1.78(b) is not required
 in an application entitled to claim benefit under 35 U.S.C.
 120 , 121 , or 365(c) of
 the subsequent application (i.e., the application required to be filed within the
 period set forth in 37 CFR 1.78(a)(1)(i) ) for
 which benefit of the provisional application was restored. A copy of the decision
 granting the petition should be filed with any application that claims the benefit
 of the subsequent application and the provisional application to facilitate
 recognition of the benefit claim to the provisional application.
 

 Use form paragraphs 2.09 and
 2.11.01 to indicate that the later-filed
 application must be filed not later than 12 months after the filing date of the
 provisional application for which a benefit is sought unless the benefit of the
 provisional application has been restored ( 37 CFR
 1.78(b) ).
 

 ¶ 2.11.01 Application Must Be Filed Within 12 Months From the Provisional
 Application Unless Petition Granted
 

 This application is claiming the benefit of provisional application No.
 [1] under 35
 U.S.C. 119(e) . However, this application was not filed within twelve
 months from the filing date of the provisional application, and there is no indication of an
 intermediate nonprovisional application or international application designating the United
 States that is directly claiming the benefit of the provisional application and filed within
 12 months of the filing date of the provisional application. In addition, no petition under 37
 CFR 1.78(b) or request under PCT Rule 26 bis .3 to restore the benefit of the
 provisional application has been granted.
 

 Applicant is required to delete the claim to the benefit of the
 prior-filed provisional application, unless applicant can establish that this application, or
 an intermediate nonprovisional application or international application designating the United
 States, was filed within 12 months of the filing date of the provisional application. See 35
 U.S.C. 119(e)(3). Alternatively, applicant may wish to file a petition to restore the benefit
 of the provisional application under 37 CFR 1.78 in the subsequent nonprovisional application
 or international application designating the United States if the subsequent application was
 filed within two months from the expiration of the twelve-month period and the delay was
 unintentional. A petition under 37 CFR 1.78(b) to restore the benefit of the provisional
 application must include: (1) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to
 the prior-filed provisional application (unless previously submitted); (2) the petition fee
 set forth in 37 CFR 1.17(m); and (3) a statement that the delay in filing the subsequent
 nonprovisional application or international application designating the United States within
 the twelve-month period was unintentional. A petition to restore the benefit of a provisional
 application must be filed in the subsequent application. The Director may require additional
 information where there is a question whether the delay was unintentional. The petition should
 be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria,
 Virginia 22313-1450. 
 

 Examiner Note:
 
 1. This form paragraph must be preceded by
 heading form paragraph 2.09. 
 

 2. In bracket 1, insert the application number
 of the prior-filed provisional application.
 
 
 

 

 
 211.01(b) Claiming the Benefit of a Nonprovisional
 Application [R-01.2024]
 
 I. COPENDENCY When a later-filed application is claiming the
 benefit of a prior-filed nonprovisional application under 35 U.S.C.
 120 , 121 , 365(c) , or
 386(c) , the later-filed application must be copending with
 the prior application or with an intermediate nonprovisional application similarly
 entitled to the benefit of the filing date of the prior application. Copendency is
 defined in the clause which requires that the later-filed application must be
 filed before: (A) the patenting of the prior application; (B) the abandonment of
 the prior application; or (C) the termination of proceedings in the prior
 application. If the prior application issues as a patent, it is sufficient for the
 later-filed application to be copending with it if the later-filed application is
 filed on the same date, or before the date that the patent issues on the prior
 application. See Immersion Corp. v. HTC Corp., 826 F.3d 1357,
 1359, 119 USPQ2d 1083, 1084 (Fed. Cir. 2016), holding that a child application was
 entitled to the benefit of a parent application where the child application was
 filed on the same day that a patent issued on the parent application. Patents
 issue shortly after the payment of the issue fee. As a result, applicants have a
 limited time, after the payment of the issue fee, to file continuing applications.
 The best practice is for applicants to file continuing applications before the
 payment of the issue fee.
 

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

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

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

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

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

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

 ¶ 2.11 Application Must Be Copending With Parent

 This application is claiming the benefit of prior-filed application No.
 [1] under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) .
 Copendency between the current application and the prior application is required. Since the
 applications are not copending, the benefit claim to the prior-filed application is improper.
 Applicant is required to delete the claim to the benefit of the prior-filed application,
 unless applicant can establish copendency between the applications.
 

 Examiner Note:
 
 1. This form paragraph must be
 preceded by heading form paragraph 2.09 .
 

 2. Do not use this form paragraph
 for benefit claims under 35 U.S.C. 119(e) to provisional
 applications.
 

 3. In bracket 1, insert the
 application number of the prior-filed application.
 
 
 

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

 II. BENEFIT CLAIMS TO MULTIPLE PRIOR APPLICATIONS Sometimes a pending application is one of a series
 of applications wherein the pending application is not copending with the first
 filed application but is copending with an intermediate application entitled to
 the benefit of the filing date of the first application. If applicant wishes that
 the pending application have the benefit of the filing date of the first filed
 application, applicant must, besides making reference to the intermediate
 application, also make reference to the first application. See Sticker
 Indus. Supply Corp. v. Blaw-Knox Co., 405 F.2d 90, 160 USPQ 177 (7th
 Cir. 1968) and Hovlid v. Asari, 305 F.2d 747, 134 USPQ 162 (9th
 Cir. 1962). The reference to the prior applications must identify all 
 of the prior applications and indicate the relationship (i.e., continuation,
 divisional, or continuation-in-part) between each nonprovisional application in
 order to establish copendency throughout the entire chain of prior applications.
 Appropriate references must be made in each intermediate application in the chain
 of prior applications. A specific reference is required to each prior-filed
 application in a chain of applications and cannot be incorporated by reference
 from a prior application. See Droplets, Inc. v. E*TRADE Bank, 
 887 F.3d 1309, 126 USPQ2d 1317 (Fed. Cir. 2018)(although the patent includes a
 proper benefit claim to an immediate prior parent application and incorporated the
 immediate prior parent by reference, the patent did not itself claim benefit to
 each prior-filed application in the priority chain. That another patent that is
 incorporated by reference in its entirety in the reviewed patent makes its own
 specific reference to a prior application does not substitute for making the
 necessary specific reference in the reviewed patent or application. As only the
 filing date of the alleged grandparent application was within 12 months of a prior
 provisional application, the claim under 35 U.S.C. 119(e) made in the
 patent was not appropriate because the patent under review did not make a claim to
 the alleged grandparent application). Cf. Nat. Alts. Int’l, Inc. v.
 Iancu, 904 F.3d 1375, 1380, 128 USPQ2d 1235, 1239 (Fed. Cir. 2018).
 See MPEP § 211.02 for guidance regarding properly
 referencing prior applications.
 

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

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

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

 

 
 211.01(c) Claiming the Benefit of an International
 Application Designating the United States [R-07.2015]
 

 Pursuant to 35 U.S.C. 365(c) , a regular
 national application filed under 35 U.S.C. 111(a) and
 37 CFR
 1.53(b) may claim the benefit of the filing date of an
 international application which designates the United States without completing the
 requirements for entering the national stage under 35 U.S.C. 371 .
 See MPEP §§
 1895 and 1895.01 . Thus, rather than
 submitting a national stage application under 35 U.S.C. 371 , applicant may file
 a continuation, divisional, or continuation-in-part of an international (PCT)
 application under 35 U.S.C. 111(a) . Such
 applications are often referred to as “bypass” applications. To claim the benefit of
 the filing date of an international application, the international application must
 designate the United States and be entitled to a filing date in accordance with
 PCT Article
 11 , and the later-filed application must be filed during the
 pendency (e.g., prior to the abandonment) of the international application.
 

 The ability to take such action is based on provisions
 of the United States patent law. 35 U.S.C. 363 provides that “[a]n
 international application designating the United States shall have the effect, from
 its international filing date under article 11 of the treaty, of a national
 application for patent regularly filed in the Patent and Trademark Office.”
 35 U.S.C.
 371(d) indicates that failure to timely comply with the
 requirements of 35
 U.S.C. 371(c) “shall be regarded as abandonment of the
 application by the parties thereof.” It is therefore clear that an international
 application which designates the United States has the effect of a pending U.S.
 application from the international application filing date until its abandonment as
 to the United States. The first sentence of 35 U.S.C. 365(c) specifically
 provides that “[i]n accordance with the conditions and requirements of section
 120 ,... a national application shall be entitled to the
 benefit of the filing date of a prior international application designating the
 United States.” The condition of 35 U.S.C. 120 relating to the
 time of filing requires the later application to be “filed before the patenting or
 abandonment of or termination of proceedings on the first application....” 
 

 

 
 211.01(d) Claiming the Benefit of an International Design
 Application Designating the United States [R-07.2015]
 

 Pursuant to 35 U.S.C.
 386(c) , in accordance with the conditions and requirements of
 35 U.S.C.
 120 , a nonprovisional application is entitled to the benefit of
 a prior international design application designating the United States. See
 MPEP
 §§ 211 and 2920.05(e) . 37 CFR 1.78(j) provides that
 benefit under 35 U.S.C. 386(c) with respect to
 an international design application can only be claimed in nonprovisional
 applications, international applications, and international design applications filed
 on or after May 13, 2015, and patents issuing thereon. To obtain benefit of the
 filing date of a prior international design application designating the United
 States, the international design application must be entitled to a filing date in
 accordance with 37 CFR 1.1023 . See
 37 CFR
 1.78(d)(1)(ii) . 
 

 See MPEP §
 2920.05(e) for additional information pertaining to benefit
 claims under 35 U.S.C. 386(c) .
 

 

 

 
 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 .
 

 ¶ 2.15 Reference to Prior Application, 35 U.S.C. 119(e), 120, 121, 365(c),
 or 386(c) Benefit
 

 This application makes reference to or appears to claim subject matter
 disclosed in Application No. [1] , filed [2] . If applicant desires to
 claim the benefit of a prior-filed application under 35 U.S.C. 119(e) ,
 120 , 121 , 365(c) or 386(c) , the instant application must
 contain, or be amended to contain, a specific reference to the prior-filed application in
 compliance with 37 CFR
 1.78 . If the application was filed before September 16, 2012, the
 specific reference must be included in the first sentence(s) of the specification following
 the title or in an application data sheet (ADS) in compliance with pre-AIA 37 CFR 1.76 ; if
 the application was filed on or after September 16, 2012, the specific reference must be
 included in an ADS in compliance with 37 CFR 1.76 . For benefit claims under
 35 U.S.C.
 120 , 121 , 365(c) , or 386(c) , the
 reference must include the relationship (i.e., continuation, divisional, or
 continuation-in-part) of the applications. 
 

 If the instant application is a utility or plant application filed under
 35 U.S.C.
 111(a) , the specific reference must be submitted during the pendency of
 the application and within the later of four months from the actual filing date of the
 application or sixteen months from the filing date of the prior application. If the
 application is a national stage application under 35 U.S.C. 371 , the specific reference must
 be submitted during the pendency of the application and within the later of four months from
 the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) , four months from
 the date of the initial submission under 35 U.S.C. 371 to enter the national stage,
 or sixteen months from the filing date of the prior application. See 37 CFR 1.78(a)(4) 
 for benefit claims under 35
 U.S.C. 119(e) and 37 CFR 1.78(d)(3) for benefit claims under
 35 U.S.C.
 120 , 121 , 365(c) , or 386(c) . This
 time period is not extendable and a failure to submit the reference required by
 35 U.S.C.
 119(e) and/or 120 , where applicable, within this time
 period is considered a waiver of any benefit of such prior application(s) under
 35 U.S.C.
 119(e) , 120 , 121 ,
 365(c) , and 386(c) . A benefit claim filed after the
 required time period may be accepted if it is accompanied by a grantable petition to accept an
 unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c) ) or
 under 35 U.S.C.
 120 , 121 , 365(c) , or 386(c) (see
 37 CFR
 1.78(e) ). The petition must be accompanied by (1) the reference required
 by 35 U.S.C.
 120 or 119(e) and by 37 CFR 1.78 to the prior application
 (unless previously submitted), (2) the petition fee under 37 CFR
 1.17(m) , and (3) a statement that the entire delay between the date the
 benefit claim was due under 37 CFR 1.78 and the date the claim was
 filed was unintentional. The Director may require additional information where there is a
 question whether the delay was unintentional. The petition should be addressed to: Mail Stop
 Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
 

 If the reference to the prior application was previously submitted within
 the time period set forth in 37 CFR 1.78 but was not included in the
 location in the application required by the rule (e.g., if the reference was submitted in an
 oath or declaration or the application transmittal letter), and the information concerning the
 benefit claim was recognized by the Office as shown by its inclusion on the first filing
 receipt, the petition under 37 CFR 1.78 and the petition fee under
 37 CFR
 1.17(m) are not required. Applicant is still required to submit the
 reference in compliance with 37 CFR 1.78 by filing an ADS in compliance
 with 37 CFR
 1.76 with the reference (or, if the application was filed before
 September 16, 2012, by filing either an amendment to the first sentence(s) of the
 specification or an ADS in compliance with pre-AIA 37 CFR 1.76 ). See
 MPEP §
 211.02 .
 

 Examiner Note:
 
 1. Use this paragraph when an
 application does not claim the benefit of a prior-filed application, but makes a
 reference to, or appears to claim subject matter disclosed in, the prior-filed
 application.
 

 2. In bracket 1, insert the application number of the
 prior-filed application.
 

 3. In bracket 2, insert the filing date of the
 prior-filed application.
 

 4. In a continued prosecution application (CPA) filed under
 37 CFR
 1.53(d) (design applications under 35 U.S.C. chapter
 16 only), a specific reference in the first sentence(s) of the
 specification, or in an application data sheet, to the prior application is
 not required and may not be made. The
 specific reference requirement of 35 U.S.C. 120 is met by the
 transmittal request for the CPA which is considered to be part of the CPA.
 37 CFR
 1.53(d)(2)(iv) and 1.53(d)(7) .
 
 
 

 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) .
 

 
 211.02(a) Correcting or Adding a Benefit Claim After
 Filing [R-07.2022]
 
 I. CORRECTED FILING RECEIPT If applicant receives a filing receipt with missing
 or incorrect benefit claim information, applicant may request a corrected filing
 receipt. The Office will not grant a request for a corrected filing receipt to
 include a benefit claim unless the proper reference to the prior application is
 included (i) in an ADS (for applications filed on or after September 16, 2012) or
 (ii) in the first sentence(s) of the specification or an ADS (for applications
 filed prior to September 16, 2012) within the time period required by
 37 CFR
 1.78 with a few exceptions. See MPEP §
 211.03 . If the proper reference was previously submitted
 in an application filed on or after September 16, 2012, the request for a
 corrected filing receipt should indicate that the reference was properly and
 timely made in the ADS. If the proper reference was previously submitted in an
 application filed prior to September 16, 2012, the request for a corrected filing
 receipt should indicate that the reference was properly and timely made and where
 such reference is located (i.e., the specification, an amendment to the
 specification, or an ADS). The Office may notify applicants on or with the filing
 receipt that a benefit claim may not have been recognized because the benefit
 claim was improper but applicants are advised that only the benefit claims that
 are listed on the filing receipt have been recognized by the Office. Therefore,
 applicants should carefully and promptly review their filing receipts in order to
 avoid the need for a petition ( 37 CFR 1.78 ) and the petition
 fee.
 

 II. ADDING BENEFIT CLAIMS If a benefit claim is added after the time period
 required by 37 CFR 1.78 , a petition and the petition fee are required.
 See MPEP § 211.04 . Any petition under 37 CFR
 1.78 must be accompanied by a corrected ADS in compliance
 with 37 CFR
 1.76(c) (for applications filed on or after September 16,
 2012), or by an amendment to the specification or a supplemental ADS in compliance
 with pre-AIA 37
 CFR 1.76(c) (for applications filed prior to September 16,
 2012) unless the proper reference was previously submitted. In addition to the
 petition under 37 CFR 1.78 and ADS or
 amendment, to add a benefit claim it may be necessary for applicant to file one of
 the following, depending on the status of the application:
 

 
 (A) a request for continued examination (RCE)
 under 37
 CFR 1.114 , if the application is under a final
 rejection or has been allowed (see MPEP § 706.07(h) ). An
 amendment or ADS filed after final rejection or allowance is not entered as
 a matter of right and must be filed in compliance with 37 CFR
 1.116 or 1.312 , respectively; or
 
 

 (B) a reissue application or a request for a
 certificate of correction under 37 CFR 1.323 , if
 appropriate (see MPEP §§ 1402 and
 1481 ), if the application has issued as a
 patent.
 

 
 When a benefit claim is submitted after the filing of
 an application, the reference to the prior application cannot include an
 incorporation by reference statement specifying of the prior application unless an
 incorporation by reference statement specifying of the prior application was
 presented upon filing of the application. See Dart Indus. v.
 Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980). 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) ). 
 

 III. DELETING BENEFIT CLAIMS In certain circumstances, applicants may choose to
 delete a benefit claim. For applications filed on or after September 16, 2012,
 applicant may do so by filing a corrected application data sheet in compliance
 with 37 CFR
 1.76(c) that deletes the reference to the prior-filed
 application. For applications filed prior to September 16, 2012, applicant may do
 so by amending the specification (if the benefit claim is in the specification) or
 by submitting a supplemental application data sheet in compliance with
 pre-AIA 37
 CFR 1.76(c) to delete any references to prior applications. 
 

 The examiner should consider whether any new prior
 art may now be available if a benefit claim is deleted. If an applicant is
 submitting an amendment to the specification or an ADS to delete a benefit claim
 after final rejection or action, the amendment or ADS will be treated under
 37 CFR
 1.116 (see MPEP § 714.12 and §
 714.13 ). If the amendment or ADS to delete a benefit
 claim is submitted after the application has been allowed, the amendment or ADS
 will be treated under 37 CFR 1.312 (see
 MPEP §
 714.16 ). A deletion of a benefit claim will not delay
 the publication of the application unless the amendment or ADS is recognized by
 the Office within nine weeks prior to the projected publication date that was
 originally calculated based on the benefit claim.
 

 A cancellation of a benefit claim to a prior
 application may be considered as a showing that the applicant is intentionally
 waiving the benefit claim to the prior application in the instant application. If
 the applicant later files a petition to accept an unintentionally delayed claim to
 add the benefit claim to the prior application in the same application from which
 the benefit claim was canceled, the Office may refuse to accept such benefit claim
 because the delay was not unintentional. The correction or entry of the data in
 the Patent Data Portal can be made by technical support staff of the TC. Upon
 entry of the data, a new bib-data sheet should be placed in the file. See also
 MPEP §
 707.05 and § 1302.09 .
 

 In a continued prosecution application (CPA) filed
 under 37 CFR
 1.53(d) , no amendment may delete the specific reference to a
 prior application assigned the same application number. (Note: In the CPA, the
 request is 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.
 Further, 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 should not be
 made.) 
 

 

 

 
 211.03 Time Period for Making a Claim for Benefit Under 37
 CFR 1.78 [R-08.2017]
 

 37 CFR
 1.78 specifies: (A) a time period within which a benefit claim to
 a prior nonprovisional application, international application, international design
 application, or provisional application must be stated or it is considered waived; and
 (B) provisions for the acceptance of the unintentionally delayed submission of a claim
 to the benefit of a prior nonprovisional application, international application,
 international design application, or provisional application.
 

 If the application is a utility or plant application filed
 under 35 U.S.C.
 111(a) , the benefit claim of the prior application under
 35 U.S.C.
 119(e) , 120 , 121 ,
 365(c) , or 386(c) must be made during the
 pendency of the application and within the later of four months from the actual filing
 date of the later-filed application or sixteen months from the filing date of the
 prior-filed application. If the application is a nonprovisional application entering the
 national stage from an international application under 35 U.S.C. 371 , the
 benefit claim must be made within the later of: (1) four months from the date on which
 the national stage commenced under 35 U.S.C. 371(b) or
 (f) ; (2) four months from the date of the initial submission
 under 35 U.S.C.
 371 to enter the national stage; or (3) sixteen months from the
 filing date of the prior application. This time period is not extendable and a failure
 to submit the reference required by 35 U.S.C. 119(e) and/or
 120 , where applicable, within this time period is considered a
 waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e) ,
 120 , 121 , 365(c) , and
 386(c) unless a petition to accept an unintentionally delayed
 benefit claim is granted. See MPEP § 211.04 .
 

 If the application is a design application, the claim
 under 35 U.S.C.
 120 , 121 , 365(c) , or
 386(c) for the benefit of a prior-filed application must be
 submitted during the pendency of the later-filed application.
 

 If an applicant includes a claim to the benefit of a prior
 application elsewhere in the application but not in the manner specified in
 37 CFR
 1.78 (e.g., if the benefit claim is not present in the proper
 place but is included in an oath or declaration, or the application transmittal letter,
 or in the first sentence(s) of the specification for an application filed on or after
 September 16, 2012) within the time period set forth in 37 CFR 1.78 ,
 the Office will not require a petition and the petition fee under 37 CFR
 1.17(m) to correct the benefit claim if the information concerning
 the benefit claim contained elsewhere in the application was recognized by the Office as
 shown by its inclusion on the first filing receipt. This is because the application will
 have been scheduled for publication on the basis of such information concerning the
 benefit claim. Applicant must still submit the benefit claim in the manner specified in
 37 CFR
 1.78 (i.e., in an ADS in compliance with 37 CFR 1.76 
 (or for applications filed prior to September 16, 2012 by an amendment to the first
 sentence(s) of the specification or in an ADS in compliance with pre-AIA 37 CFR
 1.76 ) to have a proper claim under 35 U.S.C. 120 
 or 119(e) and 37 CFR 1.78 to the benefit of a
 prior application. If, however, an applicant includes a benefit claim elsewhere in the
 application and the claim is not recognized by the Office as shown by its absence on the
 first filing receipt, the Office will require a petition and the petition fee under
 37 CFR
 1.17(m) to correct the benefit claim if the correction is sought
 after expiration of the time period set in 37 CFR 1.78 . This is because the
 application will not have been scheduled for publication on the basis of the information
 concerning the benefit claim contained elsewhere in the application.
 

 A petition under 37 CFR 1.78 and the petition fee
 would not be required for correcting a timely submitted benefit claim for the following
 situations:
 

 
 (A) Changing the relationship of the applications (e.g.,
 changing from “continuation” or “divisional” to “continuation-in-part” or from
 “continuation-in-part” to “continuation” or “divisional”);
 

 (B) Changing the filing date of a prior-filed
 nonprovisional or provisional application; and
 

 (C) Changing a benefit claim of a prior-filed
 provisional application under 35 U.S.C. 120 (e.g., “This
 application is a continuation of prior-filed provisional application No. ---”) to
 a benefit claim of the same provisional application under 35 U.S.C.
 119(e) (e.g., “This application claims the benefit of
 prior-filed provisional application No. ---”) during the pendency of the
 later-filed application. Note, however: If the later-filed application has issued
 as a patent, the correction cannot be made by a certificate of correction and
 would not be effective in a reissue application because the term of a patent is
 measured from the prior application’s filing date and removing the benefit claim
 under 35
 U.S.C. 120 , 121 , 365(c) , or
 386(c) would have the effect of lengthening the term of the
 patent. 
 

 
 If a benefit claim is filed after the required time period
 and without a petition as required by 37 CFR 1.78 , the applicant should be
 informed that the benefit claim was not entered and that a petition needs to be filed
 using form paragraph 2.39 .
 

 ¶ 2.39 35 U.S.C. 119(e), 120, 121, or 365(c), or 386(c) Benefit Claim is
 Untimely
 

 The benefit claim filed on [1] was not entered because the
 required reference was not timely filed within the time period set forth in 37 CFR 1.78 . If the
 application is an application filed under 35 U.S.C. 111(a) , the reference to the
 prior application must be submitted during the pendency of the application and within the
 later of four months from the actual filing date of the application or sixteen months from the
 filing date of the prior application. If the application is a nonprovisional application
 entering the national stage from an international application under 35 U.S.C. 371 , the
 reference to the prior application must be made during the pendency of the application and
 within the later of four months from the date on which the national stage commenced under
 35 U.S.C. 371(b) or
 (f) , four months from the date of the initial submission under 35 U.S.C.
 371 to enter the national stage, or sixteen months from the filing date of the prior
 application. If the application was filed before September 16, 2012, the reference must be
 included in the first sentence(s) of the specification following the title or in an
 application data sheet; if the application was filed on or after September 16, 2012, the
 specific reference must be included in an application data sheet. For benefit claims under
 35 U.S.C.
 120 , 121 , 365(c) , or 386(c), the reference must
 include the relationship (i.e., continuation, divisional, or continuation-in-part) of the
 applications. See 37 CFR 1.78(a) for benefit claims under 35 U.S.C. 119(e) and 37 CFR 1.78(d)
 for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c).
 

 If applicant desires the benefit under 35 U.S.C. 119(e), 120, 121,
 365(c) or 386(c) based upon a previously filed application, applicant must file a petition for
 an unintentionally delayed benefit claim under 37 CFR 1.78(c) for benefit claims under 35
 U.S.C. 119(e) or under 37 CFR 1.78(e) for benefit claims under 35 U.S.C. 120, 121, 365(c), or
 386(c). The petition must be accompanied by: (1) the reference required by 35 U.S.C. 120 or
 119(e) 
 and 37 CFR
 1.78 to the prior application (unless previously submitted); (2) a
 petition fee under 37 CFR 1.17(m) ; and (3) a statement that
 the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the
 date the claim was filed was unintentional. The Director may require additional information
 where there is a question whether the delay was unintentional. The petition should be
 addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria,
 Virginia 22313-1450.
 

 Examiner Note:
 
 1. Use this form paragraph only for original applications filed under
 35 U.S.C. 111(a) on or after November 29, 2000 and for national stage applications under
 35 U.S.C. 371. DO NOT use for design applications.
 

 2. In bracket 1, insert the filing date of the amendment or paper
 containing the benefit claim.
 

 3. Do not use this form paragraph if the reference to the prior
 application was previously submitted within the time period set forth in
 37 CFR
 1.78 , but not in the location of the application as required by
 37 CFR
 1.78 (e.g., if the reference was submitted in an oath or
 declaration or the application transmittal letter), and the information concerning the
 benefit claim was recognized by the Office as shown by its inclusion on the first filing
 receipt. In this situation, the petition under 37 CFR 1.78 and the petition fee
 under 37
 CFR 1.17(m) are not required. Applicant is still required to
 submit the reference in compliance with 37 CFR 1.78 by filing an amendment
 to the first sentence(s) of the specification (only if the application was filed before
 September 16, 2012) or an ADS. The reference is required in the ADS if the application
 was filed on or after September 16, 2012. See MPEP §
 210 , subsection I and MPEP §
 211.03 . 
 
 
 

 

 
 211.04 Delayed Benefit Claims [R-07.2022]

 If the reference required by 35 U.S.C. 120 
 and 37 CFR
 1.78 is not submitted within the required time period, a petition
 for an unintentionally delayed claim may be filed. The petition must be accompanied by:
 (A) the reference required by 35 U.S.C. 120 and 37 CFR 1.78 to
 the prior application (unless previously submitted); (B) a petition fee under
 37 CFR
 1.17(m) ; and (C) a statement that the entire delay between the
 date the benefit claim was due under 37 CFR 1.78 and the date the claim
 was filed was unintentional. 
 

 While the Director may require additional information
 whenever there is a question of whether the delay was unintentional, a person filing a
 petition to accept a delayed benefit claim more than two years after the date the
 benefit claim was due is required to provide additional explanation of the circumstances
 surrounding the delay that establishes that the entire delay was unintentional. This
 requirement is in addition to the requirement to provide a statement that the entire
 delay was unintentional in 37 CFR 1.78(c)(3) and
 (e)(3) . See Clarification of the Practice for Requiring
 Additional Information in Petitions Filed in Patent Applications and Patents Based on
 Unintentional Delay, 85 FR 12222-24 (March 2, 2020). See also
 MPEP §
 711.03(c) for further discussion of the “unintentional” delay
 standard. 
 

 Effective May 13, 2015, 37 CFR
 1.78(d)(3) was amended to make the procedures under
 37 CFR
 1.78(e) to accept an unintentionally delayed benefit claim
 applicable to design applications where the benefit claim was not submitted during the
 pendency of the design application. Thus, a petition under 37 CFR
 1.78(e) may be filed along with a request for certificate of
 correction after patent grant. See MPEP § 1481.03 .
 

 Likewise, if the reference required by 35 U.S.C. 119(e) 
 and 37 CFR
 1.78 is not submitted within the required time period, a petition
 for an unintentionally delayed claim may be filed. The petition must be accompanied by:
 (A) the reference required by 35 U.S.C. 119(e) and
 37 CFR
 1.78 to the prior provisional application (unless previously
 submitted); (B) a petition fee under 37 CFR 1.17(m) ; and (C) a statement
 that the entire delay between the date the benefit claim was due under 37 CFR 1.78 
 and the date the claim was filed was unintentional. The Director may require additional
 information where there is a question whether the delay was unintentional. In
 particular, when the petition to accept a delayed benefit claim is submitted more than
 two years after the date the benefit claim was due, the petition will require additional
 explanation of the circumstances surrounding the delay that establishes that the entire
 delay was unintentional. See 37 CFR 1.78(c) .
 

 Effective December 18, 2013, 35 U.S.C.
 119(e)(1) no longer requires that the amendment containing the
 specific reference to the earlier filed provisional application be submitted during the
 pendency of the application. Therefore, a petition to revive is no longer required to
 add or correct a benefit claim under 35 U.S.C. 119(e) in an abandoned
 nonprovisional application filed on or after November 29, 2000. Applicant may simply
 file a petition under 37 CFR 1.78 to accept an
 unintentionally delayed claim for the benefit of a prior-filed provisional application
 in the abandoned nonprovisional application. It may be necessary to correct the benefit
 in the abandoned nonprovisional application so that the benefit claims in a later filed
 nonprovisional application claiming benefit of the abandoned nonprovisional application
 are proper. 
 

 Petitions
 for an unintentionally delayed benefit claim should be forwarded to the Office of
 Petitions. See MPEP §
 1002.02(b) .
 

 DELAYED SUBMISSION OF BENEFIT CLAIM IN INTERNATIONAL APPLICATION 

 A petition under 37 CFR 1.78 for accepting an
 unintentionally delayed benefit claim and the petition fee under 37 CFR
 1.17(m) are required to add a benefit claim under
 35 U.S.C.
 120 and 365(c) in an abandoned international
 application designating the United States, even when the international application did
 not enter the national stage under 35 U.S.C. 371 . For example, when
 filing a “bypass” continuation application under 35 U.S.C.
 111(a) that claims the benefit of an international application
 designating the United States that could have but did not claim the benefit of an
 earlier U.S. application, and the benefit claim is to be added to the international
 application, a petition under 37 CFR 1.78 must be filed in the
 international application.
 

 If a petition under 37 CFR 1.78(c) 
 or (e) is required in an international application that was not
 filed with the United States Receiving Office and is not a nonprovisional application,
 then the petition may be filed in the earliest nonprovisional application that claims
 benefit under 35
 U.S.C. 120 , 121 , 365(c) , or
 386(c) to the international application and will be treated as
 having been filed in the international application. See 37 CFR
 1.78(i) .
 

 

 
 211.05 Sufficiency of Disclosure in Prior-Filed
 Application [R-01.2024]
 
 I. DISCLOSURE REQUIREMENT To be entitled to the benefit of the filing date of an
 earlier-filed application, the later-filed application must be an application for a
 patent for an invention which is also disclosed in the prior application (the parent
 or earlier-filed nonprovisional application or provisional application for which
 benefit is claimed); the disclosure of the invention in the prior application and in
 the later-filed application must be sufficient to comply with the requirements of
 35
 U.S.C. 112(a) except for the best mode requirement. See
 Transco Prods., Inc. v. Performance Contracting, Inc., 38 F.3d
 551, 32 USPQ2d 1077 (Fed. Cir. 1994). Accordingly, the disclosure of the prior-filed
 application must provide adequate support and enablement for the claimed subject
 matter of the later-filed application in compliance with the requirements of
 35
 U.S.C. 112(a) except for the best mode requirement.
 

 A. Claiming the Benefit of Provisional Applications Under 35 U.S.C. 119(e) , the written
 description and drawing(s) (if any) of the provisional application must adequately
 support and enable the subject matter claimed in the nonprovisional application
 that claims the benefit of the provisional application. In New Railhead
 Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294, 63 USPQ2d
 1843, 1846 (Fed. Cir. 2002), the court held that for a
 nonprovisional application to be afforded the benefit
 date of the provisional application, “the specification of
 the provisional must ‘contain a written description of the
 invention and the manner and process of making and using it, in such full, clear,
 concise, and exact terms,’ 35 U.S.C. 112¶1 , to enable an
 ordinarily skilled artisan to practice the invention claimed in the
 nonprovisional application.”
 

 In New Railhead, the patented
 drill bit was the subject of a commercial offer for sale. A provisional
 application was filed after the sale offer, but well within the one year grace
 period of 35 U.S.C. 102(b) . A
 nonprovisional application, which issued as Patent No. 5,899,283, was filed within
 one year of the filing of the provisional application but more than one year after
 the sale offer. If the ‘283 patent was not afforded the benefit date of the
 provisional application, the patent would be invalid under 35 U.S.C.
 102(b) since it was filed more than one year after the
 commercial offer for sale. The court looked at claim 1 of the ‘283 patent which
 recites a bit body being angled with respect to the sonde
 housing. The court then reviewed the provisional application and
 concluded that nowhere in the provisional application is the bit body expressly
 described as “being angled with respect to the sonde housing” as recited in claim
 1 of the ‘283 patent. The court held that the disclosure of the provisional
 application does not adequately support the invention claimed in the ‘283 patent
 as to the angle limitation and therefore, the ‘283 patent is not entitled to the
 filing date of the provisional application under 35 U.S.C.
 119(e)(1) and the ‘283 patent is invalid under
 35
 U.S.C. 102(b) .
 

 A claim is not required in a provisional application.
 However, for a claim in a later filed nonprovisional application to be entitled to
 the benefit of the filing date of the provisional application, the written
 description and drawing(s) (if any) of the provisional application must adequately
 support and enable the subject matter of the claim in the later filed
 nonprovisional application. If a claim in the nonprovisional application is not
 adequately supported by the written description and drawing(s) (if any) of the
 provisional application (as in New Railhead ), that claim in the
 nonprovisional application is not entitled to the benefit
 of the filing date of the provisional application. If the filing date of the
 earlier provisional application is necessary, for example, in the case of an
 interference or to overcome a reference, care must be taken to ensure that the
 disclosure filed as the provisional application adequately provides (1) a written
 description of the subject matter of the claim(s) at issue in the later filed
 nonprovisional application, and (2) an enabling disclosure to permit one of
 ordinary skill in the art to make and use the claimed invention in the later filed
 nonprovisional application without undue experimentation.
 

 B. Claiming the Benefit of Nonprovisional Applications The disclosure of a continuation application must be
 the same as the disclosure of the prior-filed application; i.e., the continuation
 must not include anything which would constitute new matter if inserted in the
 original application. See MPEP § 201.07 . The disclosure of
 a divisional application must be the same as the disclosure of the prior-filed
 application, or include at least that portion of the disclosure of the prior-filed
 application that is germane to the invention claimed in the divisional
 application. See MPEP § 201.06 . The disclosure of
 a continuation or divisional application cannot include anything which would
 constitute new matter if inserted in the prior-filed application. A
 continuation-in-part application may include matter not disclosed in the
 prior-filed application. See MPEP § 201.08 . Only the claims of
 the continuation-in-part application that are disclosed in the manner provided by
 35
 U.S.C. 112(a) in the prior-filed application are entitled to
 the benefit of the filing date of the prior-filed application. If there is a
 continuous chain of copending nonprovisional applications, each copending
 application must disclose the claimed invention of the later-filed application in
 the manner provided by 35 U.S.C. 112(a) in order for
 the later-filed application to be entitled to the benefit of the earliest filing
 date. See Regents of the University of Minnesota v. Gilead Scis.,
 Inc. , 61 F.4th 1350, 1358, 1360, 2023 USPQ2d 269 (Fed. Cir. 2023)
 (affirming the PTAB's decision in an inter partes review
 proceeding and holding that the patentee was not entitled to rely on the earlier
 filing dates of two nonprovisional applications and a provisional application
 because the prior-filed applications did not provide sufficient written
 description to support the invention claimed in the challenged patent). 
 

 Under 35 U.S.C. 120 , a claim in a
 U.S. application is entitled to the benefit of the filing date of an earlier filed
 U.S. application if the subject matter of the claim is disclosed in the manner
 provided by 35 U.S.C. 112(a) except for
 the best mode requirement, in the earlier filed application. See, e.g.,
 Tronzo v. Biomet, Inc., 156 F.3d 1154, 47 USPQ2d 1829 (Fed.
 Cir. 1998); In re Scheiber, 587 F.2d 59, 199 USPQ 782 (CCPA
 1978). A claim in a subsequently filed application that relies on a combination of
 prior applications may not be entitled to the benefit of an earlier filing date
 under 35
 U.S.C. 120 since 35 U.S.C. 120 requires that
 the earlier filed application contain a disclosure which complies with
 35
 U.S.C. 112(a) except for the best mode requirement for each
 claim in the subsequently filed application. Studiengesellschaft Kohle
 m.b.H. v. Shell Oil Co., 112 F.3d 1561, 1564, 42 USPQ2d 1674, 1677
 (Fed. Cir. 1997). 
 

 A claim in the later-filed application is not
 entitled to the benefit of the filing date of the prior-filed application if the
 disclosure of the prior-filed application does not enable one skilled in the art
 to “use” the claimed invention. See In re Hafner, 410 F.2d
 1403, 1406, 161 USPQ 783, 786 (CCPA 1969) (“[T]o be entitled to the benefits
 provided by [ 35 U.S.C. 120 ], the invention disclosed in the “previously
 filed” application must be described therein in such a manner as to satisfy
 all the requirements of the first paragraph of
 [35 U.S.C.]
 112 , including that which requires the description to be
 sufficient to enable one skilled in the art to use the
 [invention].”).
 

 Where the prior application (a nonprovisional
 application) is found to be fatally defective because of insufficient disclosure
 to support allowable claims, a later-filed application filed as a
 “continuation-in-part” of the first application to supply the deficiency is not
 entitled to the benefit of the filing date of the first application. Hunt
 Co. v. Mallinckrodt Chemical Works, 177 F.2d 583, 587, 83 USPQ 277,
 281 (2d Cir. 1949) and cases cited therein. Any claim in a continuation-in-part
 application which is directed solely to subject matter
 adequately disclosed under 35 U.S.C. 112 in the parent
 nonprovisional application is entitled to the benefit of the filing date of the
 parent nonprovisional application. However, if a claim in a continuation-in-part
 application recites a feature which was not disclosed or adequately supported by a
 proper disclosure under 35 U.S.C. 112 in the parent
 nonprovisional application, but which was first introduced or adequately supported
 in the continuation-in-part application, such a claim is entitled only to the
 filing date of the continuation-in-part application. See, e.g., In re
 Chu, 66 F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995); Transco
 Products, Inc. v. Performance Contracting Inc., 38 F.3d 551, 32
 USPQ2d 1077 (Fed. Cir. 1994); In re Van Lagenhoven, 458 F.2d
 132, 136, 173 USPQ 426, 429 (CCPA 1972).
 

 By way of further illustration, if the claims of a
 continuation-in-part application which are only entitled to the
 continuation-in-part filing date “read on” published, publicly used or sold, or
 patented subject matter (e.g., as in a genus-species relationship) a rejection
 under 35 U.S.C. 102 would be proper. Cases of interest in this
 regard are as follows: Mendenhall v. Cedarapids Inc., 5 F.3d
 1557, 28 USPQ2d 1081 (Fed. Cir. 1993); In re Lukach, 442 F.2d
 967, 169 USPQ 795 (CCPA 1971); In re Hafner, 410 F.2d 1403, 161
 USPQ 783 (CCPA 1969); In re Ruscetta, 255 F.2d 687, 118 USPQ
 101 (CCPA 1958); In re Steenbock, 83 F.2d 912, 30 USPQ 45 (CCPA
 1936); and Ex parte Hageman, 179 USPQ 747 (Bd. App. 1971).
 

 Form paragraphs 2.09 and
 2.10 
 should be used where the claims of the later-filed application are not adequately
 disclosed or enabled by the disclosure of the prior application.
 

 ¶ 2.09 Heading for Conditions for Benefit Claims Under 35 U.S.C. 119(e) ,
 120 , 121 , 365(c) , or 386(c)
 

 Applicant’s claim for the benefit of a prior-filed application under
 35 U.S.C.
 119(e) or under 35 U.S.C. 120 , 121 ,
 365(c) , or 386(c) is acknowledged. Applicant has not
 complied with one or more conditions for receiving the benefit of an earlier filing date under
 35 U.S.C. [1] as follows:
 

 Examiner Note:
 
 1. In bracket 1, insert the appropriate statutory section(s).

 2. One or more of form paragraphs 2.10 to 2.11.01 or 2.38 to 2.40 must follow depending upon the
 circumstances.
 
 
 

 ¶ 2.10 Disclosure of Prior-Filed Application Does Not Provide Support for
 Claimed Subject Matter
 

 The later-filed application must be an application for a
 patent for an invention which is also disclosed in the prior application (the parent or
 earlier-filed nonprovisional application or provisional application for which benefit is
 claimed). The disclosure of the invention in the parent application and in the later-filed
 application must be sufficient to comply with the requirements of 35 U.S.C.
 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112 ,
 except for the best mode requirement. See Transco Products, Inc. v. Performance
 Contracting, Inc ., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
 

 The disclosure of the prior-filed application, Application
 No. [1] , fails to provide adequate support or enablement in the manner provided
 by 35 U.S.C.
 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph for one or more
 claims of this application. [2] 

 Examiner Note:
 
 1. This form paragraph must be
 preceded by heading form paragraph 2.09 .
 

 2. This form paragraph may be used when there is lack of support or
 enablement in the prior-filed application for the claims in the application that is
 claiming the benefit of the prior-filed application under 35 U.S.C. 120 ,
 121 , 365(c) , or 386(c) 
 or under 35 U.S.C.
 119(e) . The prior-filed application can be a provisional
 application, a nonprovisional application, an international application (PCT) that
 designates the United States, or an international design application that designates the
 United States.
 

 3. In bracket 1, insert the
 application number of the prior-filed application.
 

 4. In bracket 2, provide an
 explanation of lack of support or enablement. If only some of the claims are not
 entitled to the benefit of the filing date of the prior application, the examiner should
 include a list of those claims after the explanation (e.g., “Accordingly, claims 1-10
 are not entitled to the benefit of the prior application.”).
 
 
 

 Form paragraph 2.10.01 should be used where
 applicant is claiming the benefit of a prior nonprovisional application under
 35 U.S.C.
 120 , 121 , or 365(c) and
 the relationship (continuation or divisional) of the applications should be
 changed to continuation-in-part because the disclosure of the later-filed
 application contains matter not disclosed in the prior-filed nonprovisional
 application.
 

 ¶ 2.10.01 Continuation or Divisional Application Contains New Matter Relative to the Prior-Filed Application

 Applicant states that this application is a continuation or divisional
 application of the prior-filed application. A continuation or divisional application cannot
 include new matter. Applicant is required to delete the benefit claim or change the
 relationship (continuation or divisional application) to continuation-in-part because this
 application contains the following matter not disclosed in the prior-filed application:
 [1] . 
 

 Examiner Note:
 
 1. This form paragraph should be used when an application, which claims
 the benefit of a prior-filed application under 35 U.S.C. 120 , 121 ,
 365(c) , or 386(c) contains new matter relative
 to the prior-filed application, and purports to be a “continuation,” “division,” or
 “divisional application” of the prior-filed application. Do not use this form paragraph
 if the applicant is claiming the benefit of a provisional application under
 35 U.S.C.
 119(e) .
 

 2. In bracket 1, provide an example of the matter not disclosed in the prior-filed application.
 
 
 II. CRITICAL REFERENCE DATE OF PATENT
 CLAIMING THE BENEFIT OF AN EARLIER FILED APPLICATION See MPEP §
 2154.01(b) and MPEP § 2136.03 for discussion of
 when an issued patent, patent application publication under 35 U.S.C.
 122(b) , or application deemed published under
 35 U.S.C.
 122(b) is available as a reference under 35 U.S.C.
 102(a)(2) or pre-AIA 35 U.S.C. 102(e) as of
 a prior provisional or nonprovisional application’s filing date.
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 201-Types of Applications 
 201.01-National Applications 

 201.02-General Terms Used to Describe Applications 

 201.03-[Reserved] 

 201.04-Provisional Application 

 201.05-Reissue Application 

 201.06-Divisional Application 
 201.06(a)-Former 37 CFR 1.60 Divisional Continuation Procedure 

 201.06(b)-Former 37 CFR 1.62 File Wrapper Continuing Procedure 

 201.06(c)-37 CFR 1.53(b) and 37 CFR 1.63(d) Divisional-Continuation Procedure 

 201.06(d)-37 CFR 1.53(d) Continued Prosecution Application (CPA) Practice 

 
 

 201.07-Continuation Application 

 201.08-Continuation-in-Part Application 

 
 

 202-Cross-Noting 

 203-Status of Applications 
 203.01-New 

 203.02-Rejected 

 203.03-Amended 

 203.04-Allowed or in Issue 

 203.05-Abandoned 

 203.06-Incomplete 

 203.07-[Reserved] 

 203.08-Status Inquiries 
 203.08(a)-Congressional and Other Official Inquiries 

 
 

 
 

 204‑209-[Reserved] 

 210-Priority to, or the Benefit of, the Filing Date of a Prior-Filed Application 

 211-Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) 
 211.01-Requirements Related to the Prior-Filed Application 
 211.01(a)-Claiming the Benefit of a Provisional Application 

 211.01(b)-Claiming the Benefit of a Nonprovisional Application 

 211.01(c)-Claiming the Benefit of an International Application Designating the United States 

 211.01(d)-Claiming the Benefit of an International Design Application Designating the United States 

 
 

 211.02-Reference to Prior Application(s) 
 211.02(a)-Correcting or Adding a Benefit Claim After Filing 

 
 

 211.03-Time Period for Making a Claim for Benefit Under 37 CFR 1.78 

 211.04-Delayed Benefit Claims 

 211.05-Sufficiency of Disclosure in Prior-Filed Application 

 
 

 212-[Reserved] 

 213-Right of Priority of Foreign Application 
 213.01-Recognized Countries and Regional Patent Offices of Foreign Filing 

 213.02-Formal Requirements Relating to Foreign Priority Application 

 213.03-Time for Filing U.S. Nonprovisional Application 

 213.04-Requirement to File Priority Claim and Certified Copy During Pendency of Application 

 213.05-Right of Priority Based Upon an Application for an Inventor’s Certificate 

 213.06-Claiming Priority and Filing a Certified Copy in a National Stage Application (35 U.S.C. 371) 

 213.07-Claiming Priority and Filing a Certified Copy in a Nonprovisional International Design Application 

 
 

 214-Formal Requirements of Claim for Foreign Priority 
 214.01-Time for Filing Priority Claim 

 214.02-Unintentionally Delayed Priority Claims 

 214.03-Office Acknowledgement of Priority Claims 

 214.04-Proper Identification of Priority Application in Foreign Priority Claim 

 
 

 215-Certified Copy of Foreign Application 
 215.01-Electronic Priority Document Exchange 

 215.02-Time For Filing Certified Copy – Application Filed On or After March 16, 2013 
 215.02(a)-Timeliness Requirement – Met By Priority Document Exchange 

 215.02(b)-Timeliness Requirement – Met By Interim Copy of Foreign Application 

 
 

 215.03-Time For Filing Certified Copy – Application Filed Before March 16, 2013 

 
 

 216-Entitlement to Priority 
 216.01-Perfecting Claim for Priority Under 35 U.S.C. 119(a)-(d) or (f) After Issuance of a Patent 

 
 

 217-Incorporation by Reference Under 37 CFR 1.57(b) 

 

 

 
 

 
 
 

 
 

 

 
 
 Accessibility 

 Privacy Policy 

 Terms of Use 

 Security 

 Emergencies/Security Alerts 

 Information Quality Guidelines 

 
 

 
 
 Federal Activities Inventory Reform (FAIR) Act 

 Notification and Federal Employee Antidiscrimination and Retaliation (NoFEAR) Act 

 Budget & Performance 

 Freedom of Information Act (FOIA) 

 
 

 
 
 Department of Commerce NoFEAR Act Report 

 Regulations.gov 

 STOP!Fakes.gov 

 Department of Commerce 

 USA.gov 

 
 

 
 
 Strategy Targeting Organized Piracy (STOP!) 

 Careers 

 Site Index 

 Contact Us 

 Submit Feedback 

 
 

 
 This page is owned by Patents.

 Last Modified: 
 
 03/09/2026 20:49:31