210 Priority to, or the Benefit of, the Filing Date of a Prior-Filed Application
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Under certain conditions and on fulfilling certain requirements, a later-filed application for patent filed in the United States may claim the benefit of, or priority to, a prior application filed in the United States.
I. REQUIREMENTS OF 37 CFR 1.78 (CLAIMING THE BENEFIT OF AN EARLIER NATIONAL APPLICATION)
Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.
For all applications filed on or after September 16, 2012, the specific reference to the prior application must be in the application data sheet; for applications filed prior to September 16, 2012, the specific reference to the prior application must be in an application data sheet or in the first sentence(s) of the specification.
II. REQUIREMENTS OF 37 CFR 1.55 (CLAIMING PRIORITY TO AN EARLIER FOREIGN APPLICATION)
Whether an application was filed before, on, or after March 16, 2013, 35 U.S.C. 119(b)(1) requires a claim for priority identifying the foreign application.
- Prior to September 16, 2012, 37 CFR 1.55 and 1.63 required the claim for priority to be identified on an application data sheet or in the oath or declaration.
For all applications filed on or after September 16, 2012, a claim for priority to the prior application must be presented in the application data sheet; for applications filed prior to September 16, 2012, the claim for priority to the foreign application must be identified in an application data sheet or in the oath or declaration.
III. REQUIREMENT FOR A STATEMENT UNDER 37 CFR 1.55 OR 1.78 FOR FIRST INVENTOR TO FILE TRANSITION APPLICATIONS
These provisions apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time—
- A claim to a claimed invention that has an effective filing date as defined under section 100(i) of title 35, United States Code, that is on or after March 16, 2013; or
- A specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.
A.Transition Applications
Transition applications are nonprovisional applications that:
- Are filed on or after March 16, 2013; and
- Claim foreign priority to, or domestic benefit of, an application filed before March 16, 2013.
Transition applications are either pre-AIA first-to-invent applications or AIA first-inventor-to-file applications depending on the effective filing date of the claimed invention(s).
If the later-filed transition 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, the applicant must provide a statement to that effect (unless the later-filed application is a nonprovisional international design application).
- The statement must be provided 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 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.
For a nonprovisional application filed on or after March 16, 2013 that claims priority to, or the benefit of, the filing date of an earlier filed application, the applicant would not be required to provide any statement if:
- The nonprovisional application discloses only subject matter also disclosed in a priority or domestic benefit application filed prior to March 16, 2013; or
- The nonprovisional application claims only priority to, or the benefit of, the filing date of an application filed on or after March 16, 2013.
Applicant is not required to identify how many or which claims in the transition application have an effective filing date on or after March 16, 2013, or identify the subject matter in the transition application not also disclosed in the priority or benefit application.
- Applicant is only required to state that there is a claim in the transition application that has an effective filing date on or after March 16, 2013.
» 211 Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e)
