How to Write the Cross-Reference to Related Applications Section. Episode 20

Sections Covered So Far

In Episodes 9 through 19, I covered all the sections that nearly every utility patent application should have. The order I prefer is:

1. Claims

2. Drawings

3. Detailed Description of the Embodiments

4. Brief Description of the Drawings

5. Background

6. Brief Summary of the Invention

7. Abstract

However, some patent application sections are not required for every application. In this episode and the next, I will go over those optional sections.

The first one you should know about is “Cross-Reference to Related Applications.”

What This Section Is (and Isn’t)

What It Does NOT Mean

This section does not mean that you find an application similar to yours and write down its patent number because you think it’s related. That’s not what “related” means.

What It DOES Mean

“Related” means whether this application is related to any other patent application YOU have filed.

• If this is the first application you’re filing that relates to your invention, you do not include this section because there is no related application to reference.

Situations Where This Section Applies

There are several types of applications that could be related, but I won’t go into all of them yet. I will cover:

• Continuation applications

• Continuation-in-part applications

• Divisional applications

• International and foreign applications

However, since we haven’t finished discussing how to file your first application, it doesn’t make sense to go too deep into those right now.

Provisional Patent Applications

The one scenario that may apply to you—even if this is your first invention—is if you filed a provisional patent application.

• I discussed provisional patent applications in Episode 8.

• If you filed a provisional application, you must include the Cross-Reference to Related Applications section in your non-provisional application.

Why This Section Is Important

For provisional applications, remember that their purpose is to allow you 12 months to file a regular (non-provisional) patent application.

If you file your non-provisional patent application within 12 months of the provisional, then:

• No publicly available references that came after you filed the provisional can be used against you in determining patentability.

Example

• You filed a provisional patent application on January 1, 2018.

• A reference was published on February 1, 2018.

• If you file your non-provisional patent application by January 1, 2019, that February 1, 2018 reference cannot be used against you.

However, if you never filed a provisional application on January 1, 2018, and instead filed a non-provisional application on January 1, 2019, then:

• The February 1, 2018 reference can be used against you because it was published before your filing date.

For more information on the pros and cons of provisional applications, go back and listen to Episode 8.

How the Patent Office Knows If You Are Claiming Priority

The Patent Office doesn’t automatically know if your non-provisional application is claiming priority to your earlier provisional application.

You must tell them—and that’s exactly what this section is for.

• You need to explicitly state that your non-provisional application is claiming priority to your earlier provisional application.

How to Write the Cross-Reference to Related Applications Section

If you are filing a non-provisional application that claims priority to a provisional application, you need:

1. The provisional application number

2. The filing date of the provisional application

It’s a simple, one-sentence statement:

“This application claims the benefit of U.S. Provisional Application No. [provisional application number], filed [date].”

Example

“This application claims the benefit of U.S. Provisional Application No. 62/123,456, filed January 1, 2018.”

Additional Sentence (Optional)

Some applications include this additional sentence:

“The entire contents of which are incorporated by reference herein.”

This means that if you forgot to include something in your non-provisional application, but it was in your provisional, everything from your provisional is automatically included by reference.

I will discuss “incorporation by reference” in more detail in a later episode.

Other Considerations

There are rules about:

• Including this information in the Application Data Sheet (ADS)

• What to do if you forget to claim priority

• How to fix errors and deadlines for corrections

I will cover those topics in a future episode. However, it’s best to do it correctly the first time so you don’t have to deal with fixing mistakes later.

Important Things to Remember

• You may have filed more than one provisional application—if so, claim priority to all of them.

• Be specific and state that you are claiming priority to a provisional application.

• Just because you claim priority to an earlier application does not mean your later application is automatically valid.

Provisional Applications Must Fully Support Later Claims

A provisional application is only useful if it sufficiently discloses your invention.

Example: Drill Bit Case

• An inventor filed a provisional application for a new drill bit within one year of selling it.

• Then, they filed a non-provisional application.

• One of the claims in the non-provisional described the bit body being at a specific angle relative to the housing.

• However, the provisional application did not mention the bit body’s angle.

Outcome:

• Because the provisional did not disclose this feature, the priority claim was useless for that claim.

• You can only claim benefit to things that were actually disclosed in the provisional.

Final Key Points

• You can only claim priority to an application that is still pending—not an issued patent.

• A provisional application expires after 12 months—if you don’t file a non-provisional within that time, you cannot claim priority to it anymore.

• If you forget to claim priority at the time of filing, there are ways to fix it—but it’s better to do it correctly from the start.

Next Episode: Other Types of Related Applications

In this episode, I covered claiming priority to a provisional application. However, there are other scenarios where you might need to claim priority:

• Continuation applications

• International applications

• Foreign applications

I will go over these in the next episode.

Need Help With Your Patent Application?

If you need help drafting your patent application, connect with me. I'm Adam Diament, and until next time—keep on inventing!