Furthermore, the benefit of a provisional application may be restored in a U

Furthermore, the benefit of a provisional application may be restored in a U

S. national stage application upon petition under 37 CFR 1.78(b). Restoration of the benefit of a provisional application upon petition under 37 CFR 1.78(b) is not limited to applications having an international filing date of or later. It should be noted that where a petition under 37 CFR 1.78(b) is necessary to restore the benefit of a provisional application in a U.78(c) to add a delayed benefit claim will also be required, unless the benefit claim was timely made under 37 CFR 1.78(a)(4) (which includes, inter alia, making the benefit claim during the international stage).

In order for a national stage application (of international application “X”) to obtain benefit under 35 U.S.C. 120 and 365(c) of a prior filed copending nonprovisional application or prior filed copending international application designating the United States of America, the national stage application must comply with the requirements set forth in 37 CFR 1.78(d). The prior nonprovisional application or international application must name as an inventor at least one inventor named in the later filed international application “X” and disclose the named inventor’s invention claimed in at least one claim of the national stage application in the manner provided by the first paragraph of 35 U.S.C. 112. If the national stage application has an international filing date prior to , then the reference must be in either an application data sheet (37 CFR 1.76) or in the first sentence(s) of the specification . See pre-AIA 37 CFR 1.78(a)(2)(iii). If national stage application has an international filing date that is on or after , then the reference must be in an application data sheet (37 CFR 1.76). See 37 CFR 1.78(d)(2). However, the requirement for inclusion of the benefit claim in an application data sheet will be satisfied in a U.S. national stage application by the presentation of such benefit claim in the PCT Request form contained in the international application or the presence of such benefit claim on the front page of the published international application. See 37 CFR 1.76(g). The required reference to the earlier filed application must be submitted within the time period set forth in 37 CFR 1.78(d)(3). This time period is not extendable and failure to timely submit the required reference to the earlier application will be considered a waiver of any benefit under 35 U.S.C. 120, 121, or 365(c) to such prior-filed application. See 37 CFR 1.78(d)(3). However, if the entire delay, between the date the claim was due under 37 CFR 1.78(d)(3) and the date the claim was filed, was unintentional, a petition under 37 CFR 1.78(e) may be filed to accept the delayed claim.

A prior filed nonprovisional application is copending with the national stage application if the prior U.S. national application was pending on the international filing date of the national stage application.

The national stage application must contain a reference to the prior nonprovisional or international application identifying it by application number (series code and serial number) or international application number and international filing date and indicating the relationship of the applications

A prior-filed international application designating the United States of America is copending with the national stage application if the prior international application was not abandoned or withdrawn, either generally or as to the United States, on the international filing date of the national stage application.

S. national stage application, a petition under 37 CFR 1

Note: a national stage application submitted under 35 U.S.C. 371 may not claim benefit of the filing date of the international application of which it is the national stage since its filing date is the international filing date of the international application. See also MPEP § (b). Stated differently, since the international application is not an earlier application (it has the same filing date as the national stage), a benefit claim under 35 U.S.C. 120 in the national stage to the international application is inappropriate.

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