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[EastCoastAgent]

Is there a legal difference between writing "claim the benefit of" and "claim priority to" when claiming priority to a provisional application in the first paragraph of the spec?  For instance, has the fed circuit or any other court said that one loses or gains anything by saying one phrase over the other, or is it purely stylistic?

Thanks everyone!

[OMG IP]

There is definitely a legal difference.  Don't have the Statute off the top of my head (119, I think) is directed to "priority" for foriegn.  "Benefit" is related to US parent/child continuity, e.g., this application is a CON of blah, blah, and claims the benefit of... etc.

Some might consider it a subtle difference.  I do not.  There's a clear difference IMO.

[Isaac]

There is definitely a legal difference.  Don't have the Statute off the top of my head (119, I think) is directed to "priority" for foriegn.  "Benefit" is related to US parent/child continuity, e.g., this application is a CON of blah, blah, and claims the benefit of... etc.

Some might consider it a subtle difference.  I do not.  There's a clear difference IMO.

The difference is that you cannot actually claim priority to a domestic application, and you cannot claim the benefit of a filing date to a foreign application, other than a PCT application that meets the requirements for being treated as a US filing.

If you use the wrong term, you are hoping that you claim will be given the legal effect of having done it right.

[OMG IP]

Well said Isaac.

I was tryiing to respond while watching GOP debate and Game 6, which was somewhat futile in all aspects.

[EastCoastAgent]

The U.S.C. and C.F.R. do indeed refer to "claiming the benefit of" provisional application(s), however, the CFR only requires "a reference to each such prior-filed provisional application, identifying it by the provisional application number."  Thus, it appears that any "reference" with the correct information (i.e., series code and serial number) would be sufficient.  Do you guys know of any case law that has discussed this matter?  Do both statements incorporate the prior application by reference?

[khazzah]

The U.S.C. and C.F.R. do indeed refer to "claiming the benefit of" provisional application(s), however, the CFR only requires "a reference to each such prior-filed provisional application, identifying it by the provisional application number."  Thus, it appears that any "reference" with the correct information (i.e., series code and serial number) would be sufficient.  Do you guys know of any case law that has discussed this matter? 

Interesting question. I don't know of any case law. Definitely let us know what you find in the case law.

[JimIvey]

FWIW, I'd really be surprised to see the difference in language have any real effect on an issued patent.  "Priority" and "benefit" are helpful in discussing two classes of essentially the same exact thing: obtaining the benefit of the filing date of an earlier filed application, one domestic and one international.

Provisional applications kind of mess up the clean distinction.  Domestic priority (benefit claiming) is under Section 120.  International (Paris Convention) priority is under Section 119.  Provisional applications are dummy foreign priority documents, hence their inclusion in Section 119.  However, they're treated like Section 120 parent applications in a number of situations.  Without guiding case law (I'm not aware of any either), you could reasonably argue that either or both of the phrases are proper.

I would bet that, if you clearly and unequivocally express an intention of availing yourself of the benefit or priority of an earlier filed application, a court will defer to that.  If the examiner complains that the priority/benefit claim is improper, you're in a venue where you can fix that.

I don't believe either benefit or priority claiming constitutes incorporation by reference.

Regards.

[OMG IP]

I have not seen problems where there is an express claim of "benefit" or "priority"  However, I HAVE had the displeasure of seeing someone say "related to", which is not sufficient under 120.

A good first step to ensure no problems is to check PAIR "continuity data" during pendency, as well as a BIB data sheet generated during examination.

[EastCoastAgent]

I have come across a Fed Circuit case that addressed the priority claim to a provisional in an ADS.  The priority claim read, "This application is a non-provisional of provisional [prov # and date] WHICH IS PENDING."  The court stated:

this reference did not run afoul of the MPEP by failing to use magic words.  The MPEP provision requires only that the applicant use a statement “such as” the one provided in Section 201.11.  A reasonable person reading the language in the ADS would have concluded that the applicant was claiming priority to an earlier provisional application.  Thus, we find no defect in the language used to reference the provisional application here.

Seems to be an indication that as long as it is clear that priority is being claimed to the provisional, then it is sufficient.  Thus, whether you say "claims priority to" or "claims the benefit of" would not technically make a difference.

[OMG IP]

sounds about right.

[patentsusa]

Do both statements incorporate the prior application by reference?

If you want to incorporate something by reference, you need to specifically state a desire to incorporate by reference.  I recall there is case law on this but don't remember the case.  But I believe that the PTO forms include an automatic incorporation by reference. 

If you file a continuation application claiming the benefit of a parent, but somehow one of the drawings gets stuck in the copier and is not filed, the incorporation by reference can come in useful.  Just claiming the benefit of the parent is not enough to save you in that scenario.

[bleedingpen]

Do both statements incorporate the prior application by reference?

If you want to incorporate something by reference, you need to specifically state a desire to incorporate by reference.  I recall there is case law on this but don't remember the case.  But I believe that the PTO forms include an automatic incorporation by reference. 

If you file a continuation application claiming the benefit of a parent, but somehow one of the drawings gets stuck in the copier and is not filed, the incorporation by reference can come in useful.  Just claiming the benefit of the parent is not enough to save you in that scenario.

Xenon Environmental inc. v. U.S. Filter Corp

[EastCoastAgent]

Do both statements incorporate the prior application by reference?

If you file a continuation application claiming the benefit of a parent, but somehow one of the drawings gets stuck in the copier and is not filed, the incorporation by reference can come in useful.  Just claiming the benefit of the parent is not enough to save you in that scenario.

There is actually a provision for "inadvertently omitted" portions of filings, where "a claim under 1.55 or 1.78 shall be considered an incorporation by reference of the prior-filed application."  Thus, if you inadvertently omit an item (e.g., one of the drawings gets stuck in the copier), then your claim of priority will protect you as to that subject matter.  See 37 CFR 1.57(a).

That being said, it is definitely best practice to just state that the prior application/patent/etc. is incorporated by reference.