What happens if a benefit claim is recognized by the USPTO but not properly submitted?

If a benefit claim is included elsewhere in the application (e.g., in an oath or declaration) and is recognized by the USPTO as shown by its inclusion on the first filing receipt, but not properly submitted in the manner specified by 37 CFR 1.78, the following applies:

• The USPTO will not require a petition and petition fee to correct the benefit claim.
• This is because the application will have been scheduled for publication based on the information concerning the benefit claim.
• However, the applicant must still submit the benefit claim in the proper manner (i.e., in an ADS or by amendment to the specification, depending on the filing date) to have a proper claim under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78.

The MPEP states: “If an applicant includes a claim to the benefit of a prior application elsewhere in the application but not in the manner specified in 37 CFR 1.78 (e.g., if the benefit claim is not present in the proper place but is included in an oath or declaration, or the application transmittal letter, or in the first sentence(s) of the specification for an application filed on or after September 16, 2012) within the time period set forth in 37 CFR 1.78, the Office will not require a petition and the petition fee under 37 CFR 1.17(m) to correct the benefit claim if the information concerning the benefit claim contained elsewhere in the application was recognized by the Office as shown by its inclusion on the first filing receipt.”