How does the USPTO handle benefit claims in patent application publications for applications filed before and after September 16, 2012?
The USPTO treats benefit claims in patent application publications differently depending on whether the application was filed before or after September 16, 2012. The MPEP states:
“For applications filed on or after September 16, 2012, the publication did not include the benefit claim to a prior-filed nonprovisional application where the specific reference was timely submitted in an application data sheet (ADS). For applications filed before September 16, 2012, the publication did not include the benefit claim to a prior-filed nonprovisional application where the specific reference was timely submitted in the first sentences of the specification or ADS.”
This means:
- For applications filed on or after September 16, 2012: Benefit claims must be timely submitted in an Application Data Sheet (ADS) to be included in the publication.
- For applications filed before September 16, 2012: Benefit claims must be timely submitted either in the first sentences of the specification or in an ADS to be included in the publication.
If a benefit claim meeting these criteria is omitted from the publication, it may be considered a material mistake that can be corrected through a request under 37 CFR 1.221(b).
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