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202.01 In Specification [R-1] - 200 Types, Cross-Noting, and Status of Application
202.01 In Specification [R-1]
37 CFR 1.78 Claiming benefit of earlier filing date and cross references to other applications.
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(a)
(1) A nonprovisional application or international application designating the United States of America may claim an invention disclosed in one or more prior-filed copending nonprovisional applications or international applications designating the United States of America. In order for an application to claim the benefit of a prior-filed copending nonprovisional application or international application designating the United States of America, each prior-filed application must name as an inventor at least one inventor named in the later-filed application and disclose the named inventor's invention claimed in at least one claim of the later-filed application in the manner provided by the first paragraph of 35 U.S.C. 112. In addition, each prior-filed application must be:
(i) An international application entitled to a filing date in accordance with PCT Article 11 and designating the United States of America; or
(ii) Complete as set forth in § 1.51(b); or
(iii) Entitled to a filing date as set forth in § 1.53(b) or § 1.53(d) and include the basic filing fee set forth in § 1.16; or
(iv) Entitled to a filing date as set forth in § 1.53(b) and have paid therein the processing and retention fee set forth in § 1.21(l) within the time period set forth in § 1.53(f).
(2)
(i) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application claiming the benefit of one or more prior-filed copending nonprovisional applications or international applications designating the United States of America 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) or international application number and international filing date and indicating the relationship of the applications. Cross references to other related applications may be made when appropriate (see § 1.14).
(ii) This reference 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 application. If the later-filed application is a nonprovisional application which entered the national stage from an international application after compliance with 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) in the later-filed international application or sixteen months from the filing date of the prior-filed application. These time periods are not extendable. Except as provided in paragraph (a)(3) of this section, the failure to timely submit the reference required by 35 U.S.C. 120 and paragraph (a)(2)(i) of this section is considered a waiver of any benefit under 35 U.S.C. 120, 121, or 365(c) to such 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) A nonprovisional application which entered the national stage after compliance with 35 U.S.C. 371 from an international application filed under 35 U.S.C. 363 before November 29, 2000.
(iii) 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), or the specification must contain or be amended to contain such reference in the first sentence following the title.
(iv) 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.<
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Where an applicant in a nonprovisional application filed under 37 CFR 1.53(b) prior to November 29, 2000 seeks to claim the benefit under 35 U.S.C. 120 or 121 of a continued prosecution application (CPA) filed under 37 CFR 1.53(d), 37 CFR 1.78(a)(2) requires a reference to the CPA by application number in the first sentence of the specification of such application. For a nonprovisional application filed on or after November 29, 2000, unless the reference required by 37 CFR 1.78(a)(2) is included in an application data sheet ( 37 CFR 1.76), the specification must contain or be amended to contain such reference in the first sentence of the specification. 37 CFR 1.78(a)(2) also provides that "[t]he identification of an application by application number under this section is the specific reference required by 35 U.S.C. 120 to every application assigned that application number." Thus, where a referenced CPA is in a chain of CPAs, this reference will constitute a reference under 35 U.S.C. 120 and 37 CFR 1.78(a)(2) to every CPA in the chain as well as the noncontinued prosecution application originally assigned such application number. Applicants are not permitted to delete such a claim for benefit under 35 U.S.C. 120 as to certain applications assigned that application number (e.g., for patent term purposes).
**There is seldom a reason for one application to refer to another application with no common applicant where the applications are not assigned to a common assignee. Such reference ordinarily should not be permitted.
See also 37 CFR 1.78 and MPEP § 201.11.
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