What happens if a benefit claim is not properly made within the required time period?
If a benefit claim is not properly made within the required time period, it is considered untimely and will not be entered. The MPEP states:
“The benefit claim filed on [1] was not entered because the required reference was not timely filed within the time period set forth in 37 CFR 1.78.”
Consequences of an untimely benefit claim include:
- Loss of the earlier priority date, which could affect the patentability of the application if intervening prior art exists.
- Inability to rely on the earlier filing date to overcome prior art references.
- Potential issues with statutory bars under 35 U.S.C. 102.
However, all is not lost if the benefit claim is untimely. The applicant may file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) or 37 CFR 1.78(e), depending on the type of benefit claim. This petition must include:
- The required reference to the prior application
- A petition fee
- A statement that the entire delay was unintentional
The USPTO may require additional information to determine if the delay was truly unintentional.
For more information on 37 CFR 1.78, visit: 37 CFR 1.78.
For more information on unintentional delay, visit: unintentional delay.