Patent Law FAQ

A petition is required to correct a benefit claim in the following situations:

• When the benefit claim is filed after the required time period set forth in 37 CFR 1.78.
• When the benefit claim was included elsewhere in the application (e.g., in an oath or declaration) but was not recognized by the Office as shown by its absence on the first filing receipt, and the correction is sought after the expiration of the time period set in 37 CFR 1.78.

The MPEP states: If, however, an applicant includes a benefit claim elsewhere in the application and the claim is not recognized by the Office as shown by its absence on the first filing receipt, the Office will require a petition and the petition fee under 37 CFR 1.17(m) to correct the benefit claim if the correction is sought after expiration of the time period set in 37 CFR 1.78.

However, a petition is not required for certain corrections, such as changing the relationship of the applications or changing the filing date of a prior-filed application, as long as these corrections are made within the original time period.

To learn more:

• benefit claim
• petition
• correction
• 37 CFR 1.78
• filing receipt

To learn more:

• 37 CFR 1.78

If you missed the deadline for filing a benefit claim, you may still be able to claim the benefit by filing a petition for an unintentionally delayed benefit claim. The process differs based on the type of benefit claim:

• For benefit claims under 35 U.S.C. 119(e): File a petition under 37 CFR 1.78(c)
• For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c): File a petition under 37 CFR 1.78(e)

The MPEP states: “If applicant desires the benefit under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c) based upon a previously filed application, applicant must file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) for benefit claims under 35 U.S.C. 119(e) or under 37 CFR 1.78(e) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c).”

The petition must include:

1. The reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior application (unless previously submitted)
2. A petition fee under 37 CFR 1.17(m)
3. A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional

The Director may require additional information if there’s a question about whether the delay was unintentional.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on petition fee, visit: petition fee.

For more information on unintentional delay, visit: unintentional delay.

What is the time period for correcting a benefit claim under 37 CFR 1.78?

The time period for correcting a benefit claim under 37 CFR 1.78 is crucial for patent applicants. According to MPEP 211.02(a):

The time period for making a claim for benefit of a prior-filed application under 37 CFR 1.78(a)(3) and 37 CFR 1.78(d)(3) is specified in 37 CFR 1.78(a)(4) and 37 CFR 1.78(d)(3).

The specific time periods are:

• For nonprovisional applications: The later of 4 months from the actual filing date of the application or 16 months from the filing date of the prior application
• For design applications: The later of 4 months from the actual filing date of the application or 16 months from the filing date of the prior application
• For international applications entering the national stage: The time period in 37 CFR 1.55 for claiming priority to foreign applications applies

It’s important to note that if you miss these deadlines, you may need to file a petition under 37 CFR 1.78(c) or (e) to accept an unintentionally delayed benefit claim.

To learn more:

• benefit claim
• time period
• 37 CFR 1.78
• patent application
• correction

To learn more:

• 37 CFR 1.78

The deadline for filing an unintentionally delayed priority claim is the later of:

• Four months from the actual filing date of the later-filed application, or
• Sixteen months from the filing date of the prior application

This is stated in 37 CFR 1.55(d)(1) for foreign priority claims and 37 CFR 1.78(a)(4) for domestic benefit claims. However, a petition may be filed to accept an unintentionally delayed claim under 37 CFR 1.55(e) or 37 CFR 1.78(c) and (e) after this period.

As stated in MPEP 214.02: ‘A petition to accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) requires:’

• The priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
• The petition fee as set forth in § 1.17(m); and
• A statement that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional.

To learn more:

• unintentionally delayed priority claim
• deadline
• petition
• 37 CFR 1.55
• 37 CFR 1.78

To learn more:

• 37 CFR 1.55
• 37 CFR 1.78

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:

1. The required reference to the prior application
2. A petition fee
3. 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.

If an applicant includes a benefit claim in the wrong part of the application but within the required time period, the USPTO’s response depends on whether the claim is recognized:

1. If the benefit claim is recognized by the Office (shown by its inclusion on the first filing receipt), no petition or petition fee is required to correct the benefit claim. 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.
2. If the benefit claim is not recognized by the Office (shown by its absence on the first filing receipt), a petition and petition fee under 37 CFR 1.17(m) will be required to correct the benefit claim if the correction is sought after the time period set in 37 CFR 1.78.

In both cases, the applicant must still submit the benefit claim in the proper format (i.e., in an ADS or by amendment to the specification, depending on the application’s filing date) to have a proper claim under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on filing receipt, visit: filing receipt.

If a benefit claim is filed after the required time period specified in 37 CFR 1.78, the applicant must file a petition for an unintentionally delayed benefit claim. The MPEP states:

“If a benefit claim is filed after the required time period and without a petition as required by 37 CFR 1.78, the applicant should be informed that the benefit claim was not entered and that a petition needs to be filed using form paragraph 2.39.”

The petition must include:

• The reference to the prior application (unless previously submitted)
• A petition fee under 37 CFR 1.17(m)
• A statement that the entire delay was unintentional

The Director may require additional information to determine if the delay was unintentional.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on unintentional delay, visit: unintentional delay.

What are the restrictions on filing a continuation-in-part application?

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While continuation-in-part (CIP) applications offer flexibility in adding new matter to existing patent applications, there are several important restrictions to consider. The MPEP 201.08 outlines some key points:

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“A continuation-in-part application can be filed as a new application claiming benefit under 35 U.S.C. 120 to a prior nonprovisional application or under 35 U.S.C. 119(e) to a prior provisional application, provided the conditions set forth under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 are met.”

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Key restrictions include:

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• The CIP must be filed while the parent application is still pending (not abandoned or issued).

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• At least one inventor named in the CIP must also be named in the parent application.

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• The CIP must include a specific reference to the parent application.

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• New matter in the CIP does not benefit from the parent application’s filing date.

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• The CIP must be filed within the time limits specified in 37 CFR 1.78 to claim priority.

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Additionally, applicants should be aware that filing a CIP may affect the patent term and the assessment of prior art for the new subject matter. Careful consideration of these restrictions is essential for effective patent strategy.

For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on filing requirements, visit: filing requirements.

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

For transition applications, 37 CFR 1.55 and 1.78 require a statement if:

• The application contains or contained a claim with an effective filing date on or after March 16, 2013
• The statement must be provided within specified time limits

The MPEP notes: “The statement provisions of 37 CFR 1.55 and 1.78 require that if the later-filed transition application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect.” (MPEP 210)

The requirements for claiming benefit of an earlier national application under 37 CFR 1.78 include:

• A specific reference to the earlier-filed application in the later-filed application
• For applications filed on or after September 16, 2012, the specific reference must be in the application data sheet (ADS)
• For applications filed before September 16, 2012, the specific reference must be in the ADS or in the first sentence(s) of the specification
• Meeting time requirements for filing the benefit claim
• In some cases, providing a statement regarding the effective filing date of claims

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.”

Failure to timely submit the reference to the prior-filed application within the time periods specified in 37 CFR 1.78 is considered a waiver of any benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application. See 37 CFR 1.78(d)(3)(iii). The time periods are not extendable.

If the reference to the prior-filed application is submitted after the time period provided by 37 CFR 1.78, a petition and the petition fee under 37 CFR 1.17(m) would be required to accept the delayed claim. The petition must be accompanied by:

• The reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior-filed application
• The petition fee
• A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

What are the restrictions on filing a continuation-in-part application?

n

While continuation-in-part (CIP) applications offer flexibility in adding new matter to existing patent applications, there are several important restrictions to consider. The MPEP 201.08 outlines some key points:

n

“A continuation-in-part application can be filed as a new application claiming benefit under 35 U.S.C. 120 to a prior nonprovisional application or under 35 U.S.C. 119(e) to a prior provisional application, provided the conditions set forth under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 are met.”

n

Key restrictions include:

n

n
• The CIP must be filed while the parent application is still pending (not abandoned or issued).

n

• At least one inventor named in the CIP must also be named in the parent application.

n

• The CIP must include a specific reference to the parent application.

n

• New matter in the CIP does not benefit from the parent application’s filing date.

n

• The CIP must be filed within the time limits specified in 37 CFR 1.78 to claim priority.

n

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Additionally, applicants should be aware that filing a CIP may affect the patent term and the assessment of prior art for the new subject matter. Careful consideration of these restrictions is essential for effective patent strategy.

For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on filing requirements, visit: filing requirements.

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

If you missed the deadline for filing a benefit claim, you may still be able to claim the benefit by filing a petition for an unintentionally delayed benefit claim. The process differs based on the type of benefit claim:

• For benefit claims under 35 U.S.C. 119(e): File a petition under 37 CFR 1.78(c)
• For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c): File a petition under 37 CFR 1.78(e)

The MPEP states: “If applicant desires the benefit under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c) based upon a previously filed application, applicant must file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) for benefit claims under 35 U.S.C. 119(e) or under 37 CFR 1.78(e) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c).”

The petition must include:

1. The reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior application (unless previously submitted)
2. A petition fee under 37 CFR 1.17(m)
3. A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional

The Director may require additional information if there’s a question about whether the delay was unintentional.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on petition fee, visit: petition fee.

For more information on unintentional delay, visit: unintentional delay.

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:

1. The required reference to the prior application
2. A petition fee
3. 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.

If an applicant includes a benefit claim in the wrong part of the application but within the required time period, the USPTO’s response depends on whether the claim is recognized:

1. If the benefit claim is recognized by the Office (shown by its inclusion on the first filing receipt), no petition or petition fee is required to correct the benefit claim. 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.
2. If the benefit claim is not recognized by the Office (shown by its absence on the first filing receipt), a petition and petition fee under 37 CFR 1.17(m) will be required to correct the benefit claim if the correction is sought after the time period set in 37 CFR 1.78.

In both cases, the applicant must still submit the benefit claim in the proper format (i.e., in an ADS or by amendment to the specification, depending on the application’s filing date) to have a proper claim under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on filing receipt, visit: filing receipt.

If a benefit claim is filed after the required time period specified in 37 CFR 1.78, the applicant must file a petition for an unintentionally delayed benefit claim. The MPEP states:

“If a benefit claim is filed after the required time period and without a petition as required by 37 CFR 1.78, the applicant should be informed that the benefit claim was not entered and that a petition needs to be filed using form paragraph 2.39.”

The petition must include:

• The reference to the prior application (unless previously submitted)
• A petition fee under 37 CFR 1.17(m)
• A statement that the entire delay was unintentional

The Director may require additional information to determine if the delay was unintentional.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on unintentional delay, visit: unintentional delay.

Failure to timely submit the reference to the prior-filed application within the time periods specified in 37 CFR 1.78 is considered a waiver of any benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application. See 37 CFR 1.78(d)(3)(iii). The time periods are not extendable.

If the reference to the prior-filed application is submitted after the time period provided by 37 CFR 1.78, a petition and the petition fee under 37 CFR 1.17(m) would be required to accept the delayed claim. The petition must be accompanied by:

• The reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior-filed application
• The petition fee
• A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

A petition is required to correct a benefit claim in the following situations:

• When the benefit claim is filed after the required time period set forth in 37 CFR 1.78.
• When the benefit claim was included elsewhere in the application (e.g., in an oath or declaration) but was not recognized by the Office as shown by its absence on the first filing receipt, and the correction is sought after the expiration of the time period set in 37 CFR 1.78.

The MPEP states: If, however, an applicant includes a benefit claim elsewhere in the application and the claim is not recognized by the Office as shown by its absence on the first filing receipt, the Office will require a petition and the petition fee under 37 CFR 1.17(m) to correct the benefit claim if the correction is sought after expiration of the time period set in 37 CFR 1.78.

However, a petition is not required for certain corrections, such as changing the relationship of the applications or changing the filing date of a prior-filed application, as long as these corrections are made within the original time period.

To learn more:

• benefit claim
• petition
• correction
• 37 CFR 1.78
• filing receipt

To learn more:

• 37 CFR 1.78

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

For transition applications, 37 CFR 1.55 and 1.78 require a statement if:

• The application contains or contained a claim with an effective filing date on or after March 16, 2013
• The statement must be provided within specified time limits

The MPEP notes: “The statement provisions of 37 CFR 1.55 and 1.78 require that if the later-filed transition application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect.” (MPEP 210)

If you missed the deadline for filing a benefit claim, you may still be able to claim the benefit by filing a petition for an unintentionally delayed benefit claim. The process differs based on the type of benefit claim:

• For benefit claims under 35 U.S.C. 119(e): File a petition under 37 CFR 1.78(c)
• For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c): File a petition under 37 CFR 1.78(e)

The MPEP states: “If applicant desires the benefit under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c) based upon a previously filed application, applicant must file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) for benefit claims under 35 U.S.C. 119(e) or under 37 CFR 1.78(e) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c).”

The petition must include:

1. The reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior application (unless previously submitted)
2. A petition fee under 37 CFR 1.17(m)
3. A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional

The Director may require additional information if there’s a question about whether the delay was unintentional.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on petition fee, visit: petition fee.

For more information on unintentional delay, visit: unintentional delay.

What is the time period for correcting a benefit claim under 37 CFR 1.78?

The time period for correcting a benefit claim under 37 CFR 1.78 is crucial for patent applicants. According to MPEP 211.02(a):

The time period for making a claim for benefit of a prior-filed application under 37 CFR 1.78(a)(3) and 37 CFR 1.78(d)(3) is specified in 37 CFR 1.78(a)(4) and 37 CFR 1.78(d)(3).

The specific time periods are:

• For nonprovisional applications: The later of 4 months from the actual filing date of the application or 16 months from the filing date of the prior application
• For design applications: The later of 4 months from the actual filing date of the application or 16 months from the filing date of the prior application
• For international applications entering the national stage: The time period in 37 CFR 1.55 for claiming priority to foreign applications applies

It’s important to note that if you miss these deadlines, you may need to file a petition under 37 CFR 1.78(c) or (e) to accept an unintentionally delayed benefit claim.

To learn more:

• benefit claim
• time period
• 37 CFR 1.78
• patent application
• correction

To learn more:

• 37 CFR 1.78

The deadline for filing an unintentionally delayed priority claim is the later of:

• Four months from the actual filing date of the later-filed application, or
• Sixteen months from the filing date of the prior application

This is stated in 37 CFR 1.55(d)(1) for foreign priority claims and 37 CFR 1.78(a)(4) for domestic benefit claims. However, a petition may be filed to accept an unintentionally delayed claim under 37 CFR 1.55(e) or 37 CFR 1.78(c) and (e) after this period.

As stated in MPEP 214.02: ‘A petition to accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) requires:’

• The priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
• The petition fee as set forth in § 1.17(m); and
• A statement that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional.

To learn more:

• unintentionally delayed priority claim
• deadline
• petition
• 37 CFR 1.55
• 37 CFR 1.78

To learn more:

• 37 CFR 1.55
• 37 CFR 1.78

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:

1. The required reference to the prior application
2. A petition fee
3. 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.

If an applicant includes a benefit claim in the wrong part of the application but within the required time period, the USPTO’s response depends on whether the claim is recognized:

1. If the benefit claim is recognized by the Office (shown by its inclusion on the first filing receipt), no petition or petition fee is required to correct the benefit claim. 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.
2. If the benefit claim is not recognized by the Office (shown by its absence on the first filing receipt), a petition and petition fee under 37 CFR 1.17(m) will be required to correct the benefit claim if the correction is sought after the time period set in 37 CFR 1.78.

In both cases, the applicant must still submit the benefit claim in the proper format (i.e., in an ADS or by amendment to the specification, depending on the application’s filing date) to have a proper claim under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on filing receipt, visit: filing receipt.

If a benefit claim is filed after the required time period specified in 37 CFR 1.78, the applicant must file a petition for an unintentionally delayed benefit claim. The MPEP states:

“If a benefit claim is filed after the required time period and without a petition as required by 37 CFR 1.78, the applicant should be informed that the benefit claim was not entered and that a petition needs to be filed using form paragraph 2.39.”

The petition must include:

• The reference to the prior application (unless previously submitted)
• A petition fee under 37 CFR 1.17(m)
• A statement that the entire delay was unintentional

The Director may require additional information to determine if the delay was unintentional.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on unintentional delay, visit: unintentional delay.

What are the restrictions on filing a continuation-in-part application?

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While continuation-in-part (CIP) applications offer flexibility in adding new matter to existing patent applications, there are several important restrictions to consider. The MPEP 201.08 outlines some key points:

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“A continuation-in-part application can be filed as a new application claiming benefit under 35 U.S.C. 120 to a prior nonprovisional application or under 35 U.S.C. 119(e) to a prior provisional application, provided the conditions set forth under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 are met.”

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Key restrictions include:

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• The CIP must be filed while the parent application is still pending (not abandoned or issued).

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• At least one inventor named in the CIP must also be named in the parent application.

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• The CIP must include a specific reference to the parent application.

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• New matter in the CIP does not benefit from the parent application’s filing date.

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• The CIP must be filed within the time limits specified in 37 CFR 1.78 to claim priority.

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Additionally, applicants should be aware that filing a CIP may affect the patent term and the assessment of prior art for the new subject matter. Careful consideration of these restrictions is essential for effective patent strategy.

For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on filing requirements, visit: filing requirements.

The requirements for claiming benefit of an earlier national application under 37 CFR 1.78 include:

• A specific reference to the earlier-filed application in the later-filed application
• For applications filed on or after September 16, 2012, the specific reference must be in the application data sheet (ADS)
• For applications filed before September 16, 2012, the specific reference must be in the ADS or in the first sentence(s) of the specification
• Meeting time requirements for filing the benefit claim
• In some cases, providing a statement regarding the effective filing date of claims

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.”

Failure to timely submit the reference to the prior-filed application within the time periods specified in 37 CFR 1.78 is considered a waiver of any benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application. See 37 CFR 1.78(d)(3)(iii). The time periods are not extendable.

If the reference to the prior-filed application is submitted after the time period provided by 37 CFR 1.78, a petition and the petition fee under 37 CFR 1.17(m) would be required to accept the delayed claim. The petition must be accompanied by:

• The reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior-filed application
• The petition fee
• A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

A petition is required to correct a benefit claim in the following situations:

• When the benefit claim is filed after the required time period set forth in 37 CFR 1.78.
• When the benefit claim was included elsewhere in the application (e.g., in an oath or declaration) but was not recognized by the Office as shown by its absence on the first filing receipt, and the correction is sought after the expiration of the time period set in 37 CFR 1.78.

The MPEP states: If, however, an applicant includes a benefit claim elsewhere in the application and the claim is not recognized by the Office as shown by its absence on the first filing receipt, the Office will require a petition and the petition fee under 37 CFR 1.17(m) to correct the benefit claim if the correction is sought after expiration of the time period set in 37 CFR 1.78.

However, a petition is not required for certain corrections, such as changing the relationship of the applications or changing the filing date of a prior-filed application, as long as these corrections are made within the original time period.

To learn more:

• benefit claim
• petition
• correction
• 37 CFR 1.78
• filing receipt

To learn more:

• 37 CFR 1.78

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

For transition applications, 37 CFR 1.55 and 1.78 require a statement if:

• The application contains or contained a claim with an effective filing date on or after March 16, 2013
• The statement must be provided within specified time limits

The MPEP notes: “The statement provisions of 37 CFR 1.55 and 1.78 require that if the later-filed transition application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect.” (MPEP 210)

If you missed the deadline for filing a benefit claim, you may still be able to claim the benefit by filing a petition for an unintentionally delayed benefit claim. The process differs based on the type of benefit claim:

• For benefit claims under 35 U.S.C. 119(e): File a petition under 37 CFR 1.78(c)
• For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c): File a petition under 37 CFR 1.78(e)

The MPEP states: “If applicant desires the benefit under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c) based upon a previously filed application, applicant must file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) for benefit claims under 35 U.S.C. 119(e) or under 37 CFR 1.78(e) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c).”

The petition must include:

1. The reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior application (unless previously submitted)
2. A petition fee under 37 CFR 1.17(m)
3. A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional

The Director may require additional information if there’s a question about whether the delay was unintentional.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on petition fee, visit: petition fee.

For more information on unintentional delay, visit: unintentional delay.

What is the time period for correcting a benefit claim under 37 CFR 1.78?

The time period for correcting a benefit claim under 37 CFR 1.78 is crucial for patent applicants. According to MPEP 211.02(a):

The time period for making a claim for benefit of a prior-filed application under 37 CFR 1.78(a)(3) and 37 CFR 1.78(d)(3) is specified in 37 CFR 1.78(a)(4) and 37 CFR 1.78(d)(3).

The specific time periods are:

• For nonprovisional applications: The later of 4 months from the actual filing date of the application or 16 months from the filing date of the prior application
• For design applications: The later of 4 months from the actual filing date of the application or 16 months from the filing date of the prior application
• For international applications entering the national stage: The time period in 37 CFR 1.55 for claiming priority to foreign applications applies

It’s important to note that if you miss these deadlines, you may need to file a petition under 37 CFR 1.78(c) or (e) to accept an unintentionally delayed benefit claim.

To learn more:

• benefit claim
• time period
• 37 CFR 1.78
• patent application
• correction

To learn more:

• 37 CFR 1.78

The deadline for filing an unintentionally delayed priority claim is the later of:

• Four months from the actual filing date of the later-filed application, or
• Sixteen months from the filing date of the prior application

This is stated in 37 CFR 1.55(d)(1) for foreign priority claims and 37 CFR 1.78(a)(4) for domestic benefit claims. However, a petition may be filed to accept an unintentionally delayed claim under 37 CFR 1.55(e) or 37 CFR 1.78(c) and (e) after this period.

As stated in MPEP 214.02: ‘A petition to accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) requires:’

• The priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
• The petition fee as set forth in § 1.17(m); and
• A statement that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional.

To learn more:

• unintentionally delayed priority claim
• deadline
• petition
• 37 CFR 1.55
• 37 CFR 1.78

To learn more:

• 37 CFR 1.55
• 37 CFR 1.78

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:

1. The required reference to the prior application
2. A petition fee
3. 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.

If an applicant includes a benefit claim in the wrong part of the application but within the required time period, the USPTO’s response depends on whether the claim is recognized:

1. If the benefit claim is recognized by the Office (shown by its inclusion on the first filing receipt), no petition or petition fee is required to correct the benefit claim. 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.
2. If the benefit claim is not recognized by the Office (shown by its absence on the first filing receipt), a petition and petition fee under 37 CFR 1.17(m) will be required to correct the benefit claim if the correction is sought after the time period set in 37 CFR 1.78.

In both cases, the applicant must still submit the benefit claim in the proper format (i.e., in an ADS or by amendment to the specification, depending on the application’s filing date) to have a proper claim under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on filing receipt, visit: filing receipt.

If a benefit claim is filed after the required time period specified in 37 CFR 1.78, the applicant must file a petition for an unintentionally delayed benefit claim. The MPEP states:

“If a benefit claim is filed after the required time period and without a petition as required by 37 CFR 1.78, the applicant should be informed that the benefit claim was not entered and that a petition needs to be filed using form paragraph 2.39.”

The petition must include:

• The reference to the prior application (unless previously submitted)
• A petition fee under 37 CFR 1.17(m)
• A statement that the entire delay was unintentional

The Director may require additional information to determine if the delay was unintentional.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on unintentional delay, visit: unintentional delay.

What are the restrictions on filing a continuation-in-part application?

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While continuation-in-part (CIP) applications offer flexibility in adding new matter to existing patent applications, there are several important restrictions to consider. The MPEP 201.08 outlines some key points:

n

“A continuation-in-part application can be filed as a new application claiming benefit under 35 U.S.C. 120 to a prior nonprovisional application or under 35 U.S.C. 119(e) to a prior provisional application, provided the conditions set forth under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 are met.”

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Key restrictions include:

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n
• The CIP must be filed while the parent application is still pending (not abandoned or issued).

n

• At least one inventor named in the CIP must also be named in the parent application.

n

• The CIP must include a specific reference to the parent application.

n

• New matter in the CIP does not benefit from the parent application’s filing date.

n

• The CIP must be filed within the time limits specified in 37 CFR 1.78 to claim priority.

n

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Additionally, applicants should be aware that filing a CIP may affect the patent term and the assessment of prior art for the new subject matter. Careful consideration of these restrictions is essential for effective patent strategy.

For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on filing requirements, visit: filing requirements.

The requirements for claiming benefit of an earlier national application under 37 CFR 1.78 include:

• A specific reference to the earlier-filed application in the later-filed application
• For applications filed on or after September 16, 2012, the specific reference must be in the application data sheet (ADS)
• For applications filed before September 16, 2012, the specific reference must be in the ADS or in the first sentence(s) of the specification
• Meeting time requirements for filing the benefit claim
• In some cases, providing a statement regarding the effective filing date of claims

The MPEP states: “Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application.”

Failure to timely submit the reference to the prior-filed application within the time periods specified in 37 CFR 1.78 is considered a waiver of any benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application. See 37 CFR 1.78(d)(3)(iii). The time periods are not extendable.

If the reference to the prior-filed application is submitted after the time period provided by 37 CFR 1.78, a petition and the petition fee under 37 CFR 1.17(m) would be required to accept the delayed claim. The petition must be accompanied by:

• The reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior-filed application
• The petition fee
• A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional