What is the process for submitting a benefit claim under 35 U.S.C. 120 to overcome a pre-AIA 35 U.S.C. 102(b) rejection?

To submit a benefit claim under 35 U.S.C. 120 to overcome a pre-AIA 35 U.S.C. 102(b) rejection, you must:

1. File a corrected application data sheet (ADS) or amend the specification, depending on the application filing date:
• For applications filed on or after September 16, 2012: File a corrected ADS under 37 CFR 1.76 with a specific reference to a prior application.
• For applications filed before September 16, 2012: Amend the specification to include a specific reference to a prior application or file a corrected ADS.
2. Establish that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112(a) or 35 U.S.C. 112, first paragraph, depending on the filing date.

As stated in MPEP 2133.02(a): “Submitting and perfecting a benefit claim under 35 U.S.C. 120, within the time period set in 37 CFR 1.78 (or by filing a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78 as explained in MPEP § 211.04)…”

To learn more:

• benefit claim
• 35 U.S.C. 120
• application data sheet
• specification amendment