What are the consequences of failing to timely submit a benefit claim under 35 U.S.C. 120 in a design patent application?

Failing to timely submit a benefit claim under 35 U.S.C. 120 in a design patent application can have significant consequences:

• The application may lose the benefit of the earlier filing date.
• It may be considered a waiver of any benefit under 35 U.S.C. 120, 121, 365(c), or 386(c).
• The loss of the earlier filing date could expose the application to additional prior art.

The MPEP states: “Except as provided for in 37 CFR 1.78(e), the failure to timely submit the reference required under 35 U.S.C. 120 and 37 CFR 1.78 in a design application during its pendency is considered a waiver of any benefit under 35 U.S.C. 120, 121, 365(c) or 386(c). See 37 CFR 1.78(d)(3)(iii).“

However, the USPTO does provide a procedure for accepting unintentionally delayed benefit claims. The Director may establish procedures, including the requirement for payment of a fee, to accept an unintentionally delayed submission of an amendment under this section.

To learn more:

• benefit claims
• 35 U.S.C. 120
• design patents
• filing date
• waiver of benefit
• unintentionally delayed claims