CLAIMING THE BENEFIT – US PATENT APPLICATIONS

Claiming benefits in a patent application allows an applicant to preserve the filing date of a previous patent application (often a provisional application or a related non-provisional application) while filing a new application. This ensures that the new application can rely on the earlier filing date for priority, protecting the applicant’s rights in case of subsequent filings by others.

Here are the main ways to claim benefits in a patent application:

  1. Priority Claim (Paris Convention)
  • Definition: The Paris Convention allows an applicant to claim the filing date of an earlier patent application filed in a member country.
  • Time Limit: The new application must be filed within 12 months of the original filing date for a patent, utility model, or industrial design (for most countries).
  • Example: If you file a patent application in the U.S. on January 1, 2023, you can claim the benefit of that filing date in any other Paris Convention member country, such as the EU or Japan, as long as the new application is filed by January 1, 2024.
  1. Provisional Application Benefit (U.S. Patent Law)
  • Definition: In the U.S., a non-provisional patent application can claim the benefit of a provisional application filed earlier. This allows you to retain the filing date of the provisional application.
  • Time Limit: The non-provisional must be filed within 12 months of the provisional application’s filing date.
  • Requirements: The non-provisional must fully describe the invention, including any additional matter or improvements made since the provisional filing, and it must explicitly claim priority to the provisional application.
  1. Continuation, Continuation-in-Part (CIP), and Divisional Applications (U.S.)
  • Continuation Application: A continuation application allows you to file a new non-provisional application based on the original application, maintaining the same filing date and claims (with potential amendments).
  • Continuation-in-Part (CIP): A CIP allows you to add new material (that was not disclosed in the original application) while maintaining the benefit of the original filing date for the disclosed parts of the invention.
  • Divisional Application: This is filed when the original application contains multiple inventions. It allows one or more inventions to be separated and filed as distinct applications while claiming the benefit of the original filing date.
  1. International Patent Applications (PCT)
  • Claiming Priority under PCT: If you file an International Patent Application (PCT) based on an earlier national application, you can claim the benefit of the national filing date, provided the PCT application is filed within 12 months of the original application.
  • Global Priority: This allows you to secure priority for your invention in multiple countries without needing to file separate applications in each jurisdiction immediately.
  1. Benefit of Earlier Patent Applications in Other Jurisdictions
  • In addition to the Paris Convention and PCT, many countries allow applicants to claim the benefit of earlier national filings. However, the time limits and procedural requirements can vary depending on the jurisdiction.

Key Considerations

  • Disclosure Requirements: When claiming benefits, the later application must be sufficiently disclosed to support the claims and ensure that new matter is not added beyond what was originally filed.
  • Timely Filing: Failure to file the new application within the required time frame (typically 12 months) can result in the loss of the earlier filing date and priority.
  • Explicit Claim: You must explicitly state in the later application that you are claiming the benefit of the earlier filing date, including citation of the original application number.

By claiming benefits from earlier filings, applicants can secure their inventions’ priority rights, ensuring broader and more secure protection internationally.