Chapter 200

Types and Status of Application; Benefit and Priority Claims

Chapter 200 covers the different types of patent applications and how to claim benefit of earlier filing dates. It addresses continuation, divisional, and continuation-in-part applications, provisional applications, and foreign priority claims. Key rule: CIP adds new matter, continuation and divisional do not.

Core Concepts

Application Types — MPEP 201 Nonprovisional: full application entitled to a filing date and examination. Provisional: placeholder — 12 months to file nonprovisional claiming benefit, no examination, no claims required. Reissue: corrects defective issued patent. Divisional: restriction requirement triggered, claims distinct invention. Continuation: same disclosure, new claims. CIP: adds new matter — new matter only gets filing date of CIP, not parent.

Continuation vs. CIP — MPEP 201.07/201.08 Continuation: same invention, same disclosure as parent, claims benefit of parent filing date for ALL claims. CIP: adds new matter — claims directed to new matter only get CIP filing date. Critical exam distinction: if claim relies on new matter, parent filing date does NOT apply.

Provisional Application — MPEP 201.04 Cannot claim priority to another application. No examination, no claims required. Must file nonprovisional within 12 months or benefit is lost. 12-month period is not extendable. Provisional establishes earlier filing date only if nonprovisional discloses same invention.

Benefit Claims — 35 USC 120 / MPEP 211 Requirements: (1) copendency — later app filed before earlier app abandons; (2) specific reference to prior app in ADS; (3) at least one inventor named in the later app must also be named in the prior app; (4) disclosure supports claims (written description). Reference must be in ADS for apps filed on or after September 16, 2012.

Foreign Priority — 35 USC 119(a) / MPEP 213 Must file U.S. nonprovisional within 12 months of foreign filing (6 months for design). Must claim priority in ADS and file certified copy. Right of priority does not add subject matter — only establishes earlier date. Paris Convention controls recognized countries.

Status of Applications — MPEP 203 New: no examiner action yet. Rejected: unanswered Office Action pending. Amended: applicant replied to examiner action. Allowed/In Issue: notice of allowance sent. Abandoned: removed from docket — failure to reply, failure to pay issue fee, or formal abandonment.

Key Rules

1.CIP new matter only gets filing date of CIP — not parent application

2.Continuation must be copending with parent — filing after abandonment loses benefit

3.Provisional application: 12-month deadline to file nonprovisional is NOT extendable

4.Benefit claim: at least one inventor named in later app must also be named in prior app

5.Benefit claim reference must be in ADS for applications filed on or after September 16, 2012

6.Foreign priority deadline: 12 months from foreign filing (6 months for design patents)

7.Certified copy of foreign application required to perfect foreign priority claim

8.Divisional application: directed to a different invention than parent — restriction required

9.Same disclosure rule: continuation must not add new matter — any new matter makes it a CIP

EXAM TIP

Two most tested distinctions: (1) CIP vs continuation — if new matter is added, the claims covering new matter only get the CIP filing date, not the parent date. This affects prior art analysis significantly. (2) Copendency requirement for benefit claims under 35 USC 120 — if the parent abandons before the continuation is filed, the benefit claim is lost entirely.

Common Traps

1.Assuming CIP claims get parent filing date — only claims supported by parent disclosure do

2.Thinking provisional application deadline is extendable — it is not

3.Missing copendency requirement — continuation filed after parent abandons loses benefit

4.Confusing foreign priority (119) with domestic benefit (120) — different deadlines and requirements

5.Forgetting certified copy requirement for foreign priority claims

6.Treating divisional as adding new matter — divisional cannot add new matter

7.Thinking any common ownership satisfies benefit claim inventor requirement — at least one inventor must be named in both apps

Search Terms

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Sections

201Types of Applications

High Yield

202Cross-Noting

203Status of Applications

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

High Yield

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

High Yield

213Right of Priority of Foreign Application

High Yield

214Formal Requirements of Claim for Foreign Priority

High Yield

215Certified Copy of Foreign Application

216Entitlement to Priority

217Incorporation by Reference Under 37 CFR 1.57(b)