What is required to add a benefit claim after the initial filing of a patent application?
Adding a benefit claim after the time period required by 37 CFR 1.78 requires a petition and the petition fee. As stated in MPEP § 211.04:
Any petition under 37 CFR 1.78 must be accompanied by a corrected ADS in compliance with 37 CFR 1.76(c) (for applications filed on or after September 16, 2012), or by an amendment to the specification or a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) (for applications filed prior to September 16, 2012) unless the proper reference was previously submitted.
In addition to the petition and ADS or amendment, you may need to file one of the following, depending on the status of your application:
- A request for continued examination (RCE) under 37 CFR 1.114, if the application is under final rejection or has been allowed.
- A reissue application or a request for a certificate of correction under 37 CFR 1.323, if the application has already issued as a patent.
It’s important to note that when adding a benefit claim after filing, you cannot include an incorporation by reference statement of the prior application unless such a statement was present upon the initial filing of the application.
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