MPEP 202

202 Cross-Noting

202.02 Notation in File History Regarding Prior U.S. Applications, Including Provisional Applications

For Image File Wrapper (IFW) processing, see the IFW Manual.The front page of a printed patent identifies all prior applications for which benefits are claimed under 35 U.S.C. 119(e), 120, 121, or 365(c) in continuation-in-part, continuation, divisional, substitute, and reissue applications. Therefore, the identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in either the first sentence(s) of the specification or in an application data sheet. See 37 CFR 1.78(a) and MPEP § 201.11. For example, the reference to a prior nonprovisional application must include the appropriate relationship (e.g., continuation, divisional, or continuation- in-part) between the nonprovisional applications.

The front page of a printed patent issuing on a continued prosecution application (CPA) filed under 37 CFR 1.53(d) will identify the application number and filing date of the most recent noncontinued prosecution application (but not the filing date of the CPA) as well as all prior applications from which benefit was claimed in the most recent noncontinued prosecution application.

Where prior application data, including provisional application data, is preprinted on the PALM bib-data sheet , the examiner should check that data for accuracy, including whether the application is, in fact, copending with the prior nonprovisional application or applications for which benefit is claimed. Similarly, the application number of any provisional application for which benefit is claimed should be printed on the PALM bib-data sheet. If applicant claims benefit under 35 U.S.C. 119(e) to a prior provisional application, and states that the provisional application claims priority to earlier domestic or foreign application(s), the earlier application(s) should not be reflected on the PALM bib-data sheet because a provisional application is not entitled to the right of priority of any other application. See 35 U.S.C. 111(b)(7).

Where the data is correct, the examiner should initial

the PALM bib-data sheet  in the provided 

space. Should there be error in the preprinted prior application data, the correction or entry of the data in the PALM data base can be made by technical support staff of the Technology Center. Upon entry of the data, a new PALM bib-data sheet should be printed and scanned into the file.

The inclusion of prior application information in the patent does not necessarily indicate that the claims are entitled to the benefit of the earlier filing date.

See MPEP § 306 for work done by the Assignment Division pertaining to these particular types of applications.

In the situation in which there has been no reference to a prior application because the benefit of its filing date is not desired, no notation as to the prior application is made on the PALM bib- data sheet .

202.03Notation on File Wrapper When Priority Is Claimed for Foreign Application [R-3]

For Image File Wrapper (IFW) processing, see the IFW Manual. A PALM bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application that the U.S. application is claiming the priority of. The examiner should check this information for accuracy. Should there be error, the examiner should make the appropriate corrections directly on the PALM bib-data sheet, and have the information corrected in the Office computer systems by forwarding the information to the examiner’s Legal Instrument Examiner, with an explanation of the correction to be made. The examiner should initial

the PALM bib-data sheet in the “VERIFIED” 

space provided when the information is correct or has been amended to be correct. However, the examiner must still indicate on the Office action and on the PALM bib-data sheet whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met.

If the filing dates of several foreign applications are claimed (see MPEP § 201.15, last paragraph) and the certified copy of each foreign application has been received , information respecting each of the foreign applications is to be entered on the PALM bib-data sheet.

The front page of the patent when it is issued, and the listing in the Official Gazette, will refer to the claim of priority, giving the country, the filing date, and the number of the foreign application in those applications in which the PALM bib-data sheet has been endorsed.

202.04 In Oath or Declaration

As will be noted by reference to MPEP § 201.14, 37 CFR 1.63 requires that the oath or declaration must identify any foreign application for patent (or inventor’s certificate) for which a claim for priority is made pursuant to 37 CFR 1.55, and any foreign application having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing, unless such information is supplied on an application data sheet in accordance with 37 CFR 1.76.