Correction of 35 U.S.C. 119 and 35 U.S.C. 120 Benefits

I.

CORRECTION TO PERFECT CLAIM FOR 35 U.S.C. 119 (a)-(d) AND (f) BENEFITS

See

MPEP § 216.01

for a discussion of

when

35 U.S.C.

119(a)

-

(d)

and

(f)

benefits

can be perfected by certificate of correction.

II.

CORRECTION AS TO 35 U.S.C. 120 AND 35 U.S.C. 119(e) BENEFITS

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)

.

sional 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

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 eliminating the reference under paragraph

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 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

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.

, 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:

nal

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

on 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 fee 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

n 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

ating

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

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 o

signating 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.

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 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.

o the prior-filed application,

unless previously submitted;

(2) The petition fee 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.

entions 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.

he

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).

Title II of the Patent Law Treaties Implementation Act of 2012

(PLTIA) amended

35

U.S.C. 119(e)(1)

to provide that:

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.

Specifically,

35 U.S.C. 119(e)(1)

is effective

for all patents whenever granted and no longer requires that the amendment containing

the specific reference to the earlier-filed provisional application be submitted

during the pendency of the application. Thus, the prior prohibition on granting

certificates of correction to add or correct a claim for the benefit of a prior

provisional application no longer applies. A certificate of correction to add or

correct a claim for the benefit of a prior provisional application under

35 U.S.C.

119(e)

may now be available under certain conditions. See

subsection A. entitled “Conditions for Certificate of Correction” below

or prohibition on granting

certificates of correction to add or correct a claim for the benefit of a prior

provisional application no longer applies. A certificate of correction to add or

correct a claim for the benefit of a prior provisional application under

35 U.S.C.

119(e)

may now be available under certain conditions. See

subsection A. entitled “Conditions for Certificate of Correction” below. In addition,

effective May 13, 2015,

37 CFR 1.78(d)(3)

was revised to

make the procedures under

37 CFR 1.78(e)

to accept an

unintentionally delayed benefit claim under

35 U.S.C. 120

,

121

,

365(c)

, or

386(c)

applicable to design

applications, and thus, accords applicants in design applications the same remedy

that was only previously available to applicants in utility and plant applications.

37 CFR

1.78(d)(3)(i)

provides that the reference required by

35 U.S.C.

120

and

37 CFR 1.78(d)(2)

must be

submitted during the pendency of the later-filed application. For design

applications, this time period is the only applicable time period for when the

required reference must be submitted because the time period set forth in

37 CFR

1.78(d)(3)(ii)

(i.e., four months from the filing date of the

later-filed application or sixteen months from the filing date of the prior-filed

application) does not apply to an application for a design patent. If the required

reference to the prior-filed application is not submitted during the pendency of the

later-filed design application, then a petition to accept an unintentionally delayed

benefit claim under

37 CFR 1.78(e)

may be filed. See

37 CFR

1.78(d)(3)(iii)

. Thus, a petition under

37 CFR

1.78(e)

may be filed along with a request for a certificate of

correction under

35

U.S.C. 255

and

37 CFR 1.323

in a design patent

if the required reference to the prior-filed application was not submitted during the

pendency of the later-filed design application.

Under certain conditions as specified below a

certificate of correction can be used, with respect to a benefit claim under

35 U.S.C

CFR

1.78(e)

may be filed along with a request for a certificate of

correction under

35

U.S.C. 255

and

37 CFR 1.323

in a design patent

if the required reference to the prior-filed application was not submitted during the

pendency of the later-filed design application.

Under certain conditions as specified below a

certificate of correction can be used, with respect to a benefit claim under

35 U.S.C.

120

,

121

,

365(c)

, or

386(c)

, to correct:

(A) the failure to make reference to a prior

copending nonprovisional application, international application designating the

United States, or international design application designating the United

States pursuant to

37 CFR 1.78(d)(2)

;

(B) an incorrect reference to a prior copending

nonprovisional application, international application designating the United

States, or international design application designating the United States

pursuant to

37 CFR 1.78(d)(2)

;

(C) the failure to make reference to a prior

provisional application pursuant to

37 CFR 1.78(a)(3)

; or

(D) an incorrect reference to a prior provisional

application pursuant to

37 CFR 1.78(a)(3)

.

A.

Conditions for Certificate

of Correction

1. Where a benefit claim based upon

35 U.S.C.

120

to

a national application

is to be

asserted or corrected in a patent via a certificate of correction, the

following conditions must be satisfied:

(A) all requirements set forth in

37 CFR

1.78(d)(1)

must have been met in the application

which became the patent to be corrected;

(B) it must be clear from the record of the patent and

the parent application(s) that priority is appropriate (see

MPEP § 211

et seq.

); and

(C) a grantable petition to accept an unintentionally

delayed claim under

37 CFR 1.78(e)

must be filed, including the petition fee as set forth in

37 CFR 1.17(m)

.

See

MPEP § 211.04

for a

discussion of the requirements for the petition.

2. Where a benefit claim based upon

35 U.S.C.

120

and

365(c)

to

an

international application

, or

35 U.S.C

t priority is appropriate (see

MPEP § 211

et seq.

); and

(C) a grantable petition to accept an unintentionally

delayed claim under

37 CFR 1.78(e)

must be filed, including the petition fee as set forth in

37 CFR 1.17(m)

.

See

MPEP § 211.04

for a

discussion of the requirements for the petition.

2. Where a benefit claim based upon

35 U.S.C.

120

and

365(c)

to

an

international application

, or

35 U.S.C.

120

and

386(c)

to an

international design application, is to be asserted or corrected in a patent

via a certificate of correction, the following conditions must be

satisfied:

(A) all requirements set forth in

37 CFR

1.78(d)(1)

must have been met in the application

which became the patent to be corrected;

(B) it must be clear from the record of the patent and

the parent application(s) that priority is appropriate (see

MPEP § 211

et seq.

);

(C) the patentee must submit together with the request

for the certificate, copies of documentation showing designation of

states and any other information needed to make it clear from the

record that the

35 U.S.C. 120

priority is appropriate (see

MPEP §

211

et seq.

as to the requirements for

35 U.S.C. 120

priority based on an international application or an international

design application); and

(D) a grantable petition to accept an unintentionally

delayed claim under

37 CFR 1.78(e)

must be filed, including the petition fee as set forth in

37 CFR 1.17(m)

.

See

MPEP § 211.04

for a

discussion of the requirements for the petition.

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. See

MPEP §

211.01(d)

.

Where a benefit claim based upon

35

U.S.C

.

See

MPEP § 211.04

for a

discussion of the requirements for the petition.

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. See

MPEP §

211.01(d)

.

Where a benefit claim based upon

35

U.S.C. 120

,

121

,

365(c)

, or

386(c)

is timely

submitted, a petition under

37 CFR 1.78(e)

is not

required for correcting the benefit claim by 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”) whether filed during the pendency of the later-filed

application or after patent grant. See

MPEP §

211.03

. However, a change in the relationship may

require comparing the disclosures of the applications which would require

further examination and thus such a change would not be appropriate via a

certificate of correction after patent grant. In addition, there is

significance to the designation of the relationship as “continuation,”

“divisional,” or “continuation-in-part.” For example, the safe harbor of

35

U.S.C. 121

only protects divisional applications, not

continuation applications or continuation-in-part applications. See

Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc.,

518

F.3d 1353, 1362, 86 USPQ2d 1001, 1007-08 (Fed. Cir. 2008) and

Amgen

v. Hoffman-La Roche,

580 F.3d 1340, 1352-1354, 92 USPQ2d 1289,

1298-1300 (Fed. Cir. 2009). Changing the relationship to or from a

“divisional” has the potential to impact the applicability of the safe

harbor provision or a nonstatutory double patenting rejection. Note that a

patentee cannot obtain the safe harbor protection of

35 U.S.C

1353, 1362, 86 USPQ2d 1001, 1007-08 (Fed. Cir. 2008) and

Amgen

v. Hoffman-La Roche,

580 F.3d 1340, 1352-1354, 92 USPQ2d 1289,

1298-1300 (Fed. Cir. 2009). Changing the relationship to or from a

“divisional” has the potential to impact the applicability of the safe

harbor provision or a nonstatutory double patenting rejection. Note that a

patentee cannot obtain the safe harbor protection of

35 U.S.C.

121

against nonstatutory double patenting by amending

a patent that issued from a continuation-in-part application to recite only

subject matter disclosed in the parent application and changing the

relationship to a divisional of the parent application. See

In re

Janssen Biotech, Inc.,

880 F.3d 1315, 125 USPQ2d 1525, 1529

(Fed. Cir. 2018)( “[A] patent owner cannot retroactively bring its

challenged patent within the scope of the safe-harbor provision by amendment

in a reexamination proceeding.”);

G.D. Searle LLC v. Lupin Pharm.,

Inc.,

790 F.3d 1349, 1355, 115 USPQ2d 1326, 1330 (Fed. Cir.

2015)(“Simply deleting that new matter from the reissue patent does not

retroactively alter the nature of the [CIP] application.”).

3. Where a benefit claim based upon

35

U.S.C. 119(e)

to a prior provisional application is to

be asserted or corrected in a patent via a certificate of correction, the

following conditions must be satisfied:

A. all requirements set forth in

37 CFR 1.78(a)(1) and

(a)(2)

must have been met in the application

which became the patent to be corrected;

B. it must be clear from the record of

the patent and the parent application(s) that priority is appropriate

(see

MPEP § 211

et seq.

); and

C. a grantable petition to accept an

unintentionally delayed claim under

37 CFR

1.78(c)

must be filed, including the petition

fee as set forth in

37 CFR 1.17(m)

.

See

MPEP § 211.04

for a

discussion of the requirements for the petition

e patent to be corrected;

B. it must be clear from the record of

the patent and the parent application(s) that priority is appropriate

(see

MPEP § 211

et seq.

); and

C. a grantable petition to accept an

unintentionally delayed claim under

37 CFR

1.78(c)

must be filed, including the petition

fee as set forth in

37 CFR 1.17(m)

.

See

MPEP § 211.04

for a

discussion of the requirements for the petition.

Except in certain situations, if all the above-stated conditions for

benefit claims discussed in A.1-3 are satisfied, a certificate of correction can

generally be used to amend the patent to make reference to a prior application, or to

correct an incorrect reference to the prior application.

In situations where a petition under

37 CFR

1.78

is filed with a request for a certificate of correction

under

35 U.S.C.

255

in an issued patent, the petition should not be granted

where grant of the petition would require further examination. The following

situations are examples of when further examination would be required: (1) where the

grant of the petition would cause the patent to be subject to a different statutory

framework, e.g., the addition of a benefit claim to a pre-March 16, 2013 filing date

in a patent that was examined under the first inventor to file (FITF) provisions of

the AIA; (2) where the grant of the petition would result in the claim(s) in the

patent having a later effective filing date and thus making available more potential

prior art; and (3) where the grant of the petition would alter the continuity chain

in a way that may impact patentability, e.g., the altered chain would require

evaluation of whether the continuity of disclosure requirement is satisfied.

Furthermore, if the grant of the petition under

37 CFR

1.78

, which is filed with a request for a certificate of

correction under

35

U.S.C. 255

, would have the appearance of extending the patent

term, the petition should not be granted

ty chain

in a way that may impact patentability, e.g., the altered chain would require

evaluation of whether the continuity of disclosure requirement is satisfied.

Furthermore, if the grant of the petition under

37 CFR

1.78

, which is filed with a request for a certificate of

correction under

35

U.S.C. 255

, would have the appearance of extending the patent

term, the petition should not be granted. For example, in an application that claims

both domestic benefit and foreign priority, a change to a later filing date in the

earliest application for which domestic benefit is claimed under

35 U.S.C.

120

,

121

,

365(c)

, or

386(c)

could have the appearance of extending the patent term,

even though the effective filing date for the claimed invention would not change

because the foreign priority date would not change. See

35 U.S.C.

100(i)(1)

. This is because a foreign priority date is taken

into account in determining the effective filing date for a claimed invention under

the first inventor to file (FITF) provisions of the AIA, but the foreign priority

date is not taken into account in determining the term of a patent. The maximum term

of the original patent is fixed at the time the patent is granted, subject to any

adjustments to the number of days of extension or adjustment. In addition,

35 U.S.C.

255

states that the patent, together with the certificate of

correction, shall have the same effect as if the patent originally issued in that

corrected form. Therefore, a petition under

37 CFR 1.78

with a certificate of

correction under

35

U.S.C. 255

should not be granted where grant of the petition

would have the appearance of extending the patent term

nsion or adjustment. In addition,

35 U.S.C.

255

states that the patent, together with the certificate of

correction, shall have the same effect as if the patent originally issued in that

corrected form. Therefore, a petition under

37 CFR 1.78

with a certificate of

correction under

35

U.S.C. 255

should not be granted where grant of the petition

would have the appearance of extending the patent term.

Exemplary situations where a petition under

37 CFR

1.78

with a certificate of correction may be appropriate:

(A) Adding or correcting a claim to a prior

application having a filing date before March 16, 2013 to a patent that was

examined (as indicated on the notice of allowance or a later Office

communication such as a supplemental Notice of Allowance) under the first to

invent provisions of pre-AIA law.

(B) Adding or correcting a claim to a prior

application having a filing date before March 16, 2013 in a patent that was

examined (as indicated on the Notice of Allowance or a later Office

communication such as a supplemental Notice of Allowance) under the first

inventor to file provisions of the AIA and where the

37 CFR

1.55

/

1.78

statement (see

MPEP § 210

, subsection III) is filed concurrently

with the petition (since the presence of the statement would not result in a

switch in the statutory framework).

(C) Adding a claim to a prior application having a

filing date on or after March 16, 2013 in a patent that was examined (as

indicated on the Notice of Allowance or a later Office communication such as a

supplemental Notice of Allowance) under the first to invent provisions of

pre-AIA law.

(D) Adding or correcting a claim to a prior

application having a filing date on or after March 16, 2013 in a patent that

was examined (as indicated on the Notice of Allowance or a later Office

communication such as a supplemental Notice of Allowance) under the first

inventor to file provisions of the AIA.

However, as discussed above, a petition under

37 CFR

1.78

with a certificate of correction under

35 U.S.C

r correcting a claim to a prior

application having a filing date on or after March 16, 2013 in a patent that

was examined (as indicated on the Notice of Allowance or a later Office

communication such as a supplemental Notice of Allowance) under the first

inventor to file provisions of the AIA.

However, as discussed above, a petition under

37 CFR

1.78

with a certificate of correction under

35 U.S.C. 255

should not be granted where further examination would be required or the grant of the

petition would have the appearance of extending the patent term.

Exemplary situations where a certificate of

correction under

35

U.S.C. 255

may not be appropriate:

(A) Adding or correcting a claim to a prior

application having a filing date before March 16, 2013 in a patent that was

examined (as indicated on the Notice of Allowance or a later Office

communication such as a supplemental Notice of Allowance) under the first

inventor to file provisions of the AIA and where the

37 CFR

1.55

/

1.78

statement is not

present.

(B) Correcting a claim to a prior application

having a filing date before March 16, 2013 to a claim to a prior application

having a filing date on or after March 16, 2013 in a patent that was examined

(as indicated on the Notice of Allowance or a later Office communication such

as a supplemental Notice of Allowance) under the first to invent provisions of

pre-AIA law.

(C) Correcting a claim to a prior application that

would result in a later effective filing date for a claimed invention (even if

it would not result in a change to the statutory framework under which the

application was examined).

(D) Correcting a claim to a prior application that

would have the appearance of extending the patent term (even if it would not

result in a later effective filing date for a claimed invention or a change to

the statutory framework under which the application was examined)

laimed invention (even if

it would not result in a change to the statutory framework under which the

application was examined).

(D) Correcting a claim to a prior application that

would have the appearance of extending the patent term (even if it would not

result in a later effective filing date for a claimed invention or a change to

the statutory framework under which the application was examined).

If any of the above-stated conditions is not satisfied or if the

correction sought would require further examination, the filing of a reissue

application (see

MPEP

§ 1401

- §

1460

) may be appropriate to pursue

the desired correction of the patent for benefit claims under

35 U.S.C.

119(e)

,

120

,

121

,

365(c)

, or

386(c)

. It should be noted that a

certificate of correction under

35 U.S.C. 255

cannot be used to

remove a benefit claim under

35 U.S.C. 120

,

121

,

365(c)

, or

386(c)

because further

examination would be required.

See

MPEP §

216.01

for a discussion of when a claim for priority under

35 U.S.C.

119(a)-(d) or (f)

can be perfected by certificate of

correction.

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