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What is the proper use of the phrases "claim priority from" and "claim the benefit of"? Can they be used interchangeably? When should both be used, if ever?

Does this definition make sense:

"PATENT RIGHTS" shall mean [list of patent applications], the claims stated in said patent application(s), and any U.S. or foreign patent applications (including divisional and continuation applications) claiming the benefit of or priority from the referenced application(s), and any patents issuing thereon, and any reissues, reexaminations, and extensions of such patents.

How could this definition be improved?

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I would post this as an answer if I had done more research. Generally I have used "benefit of" when referring to provisional applications and "priority from" when referring to non-provisonal applications. I can't find any logic for this in the Manual of Patent Examining Procedure. It does offer some example wordings in MPEP 201.11 Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e). But a court case "E.I. DU PONT DE NEMOURS V. MACDERMID PRINTING 525 F.3D 1353" has ruled that there are no specific "magic words". That does't mean a priority can't be screwed up. –  George White Jan 29 at 23:40

1 Answer 1

This language looks like it came from a patent license agreement and is pretty typical.

I think "claim priority from" could be interpreted as a direct priority claim, whereas "claim the benefit of" is a bit broader as it more naturally includes indirect priority claims.

Here's an example of a definition I've used that includes both phrases:

“Patents” shall mean: (i) the patents and patent applications identified on Exhibit A and any and all foreign counterparts of any of the foregoing; (ii) any and all patents that have issued or may issue from any of the patents or patent applications described in (i) of this definition; (iii) any and all patents and patent applications that, in whole or in part, claim priority to (directly or indirectly), or the benefit of the filing date of, any of the patents or patent applications described in (i) or (ii) of this definition, including any and all child, continuation, continuation-in-part, continuing prosecution, divisional, provisional, non-provisional, reissue, reexamination, substitution, extension and counterpart patents and patent applications of any of the patents or patents applications described in (i) or (ii) of this definition; (iv) any and all patents and patent applications from which any of the patents or patent applications described in (i) or (ii) of this definition, in whole or in part, claim the benefit of priority (directly or indirectly) or otherwise claim the benefit of the filing date, including any and all parent patents or patent applications of any of the patents or patent applications described in (i) or (ii) of this definition; and (v) any and all extensions or renewals of any of the patent or patent applications covered by this definition. Any one of the foregoing is a “Patent”.

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