Can I add an incorporation by reference statement when submitting a benefit claim after filing?
No, you cannot add an incorporation by reference statement when submitting a benefit claim after the initial filing of your application. The MPEP clearly states:
When a benefit claim is submitted after the filing of an application, the reference to the prior application cannot include an incorporation by reference statement specifying of the prior application unless an incorporation by reference statement specifying of the prior application was presented upon filing of the application.
This rule is based on the principle that no new matter can be added to an application after its filing date, as per 35 U.S.C. 132(a). The MPEP cites the case of Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980) to support this position.
Therefore, if you wish to include an incorporation by reference statement for a prior application, it must be present in the application as originally filed. If it wasn’t included at that time, you cannot add it later when submitting a benefit claim.
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