What is the process for adding a benefit claim after the time period set forth in 37 CFR 1.78?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

To add a benefit claim after the time period set forth in 37 CFR 1.78, you must file a petition to accept an unintentionally delayed benefit claim. The MPEP 211.02(a) outlines the process:

1. File a petition under 37 CFR 1.78(c) for claiming the benefit of a prior-filed provisional application, or under 37 CFR 1.78(e) for claiming the benefit of a prior-filed nonprovisional application.
2. Pay the petition fee (currently $2,000 for nonprovisional applications).
3. Submit a corrected application data sheet (ADS) including the reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior-filed application.
4. Provide a statement that the entire delay between the date the benefit claim was due and the date the benefit claim was filed was unintentional.

The MPEP states: “The Director may require additional information where there is a question whether the delay was unintentional.” It’s crucial to ensure all requirements are met to avoid potential rejection of the petition.