Patent Law FAQ

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.

The Patent Law Treaties Implementation Act (PLTIA) introduced the concept of restoration of the right of priority. This provision allows applicants to file a subsequent application and still claim priority or benefit even if they missed the standard 12-month deadline (6-month for design applications).

As stated in the MPEP: Notable changes to the law and rules included the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application. (MPEP 210)

Key points about restoration of the right of priority:

• It applies to both foreign priority claims and domestic benefit claims to provisional applications.
• The subsequent application must be filed within 14 months from the filing date of the prior foreign application or provisional application (8 months for design applications).
• The delay in filing the subsequent application must be unintentional.
• A petition for restoration of the right of priority must be filed.

The specific requirements and procedures for restoration of the right of priority are outlined in 37 CFR 1.55(c) for foreign priority claims and 37 CFR 1.78(b) for domestic benefit claims.

For more information on PLTIA, visit: PLTIA.

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

If a benefit claim is not filed within the required time period, it may still be accepted through a petition process. According to MPEP ¶ 2.15:

A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

The petition must include:

1. The reference to the prior application (unless previously submitted)
2. The petition fee under 37 CFR 1.17(m)
3. A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

The Director may request additional information if there’s a question about whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

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

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

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.

To learn more:

• benefit claim
• delayed claim
• petition
• unintentional delay

The distinction between unintentional and intentional delay is crucial when filing a delayed benefit claim. The MPEP 211.04 addresses this:

‘A petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed application must be accompanied by: … (3) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional.’

An unintentional delay may be caused by oversight, administrative error, or other circumstances not intended to delay the filing. Intentional delay, on the other hand, implies a deliberate choice not to file the benefit claim on time. Only unintentional delays can be remedied through a petition. Intentional delays are not excusable and will result in the denial of the delayed benefit claim.

To learn more:

• unintentional delay
• intentional delay
• delayed benefit claim
• petition requirements

A petition to restore the benefit of a provisional application under 37 CFR 1.78(b) must include several elements. According to MPEP 211.01(a):

‘A petition under 37 CFR 1.78(b) requires: (A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application, which must be included in application data sheet (unless previously submitted in an application data sheet); (B) the petition fee as set forth in 37 CFR 1.17(m); and (C) a statement that the delay in filing the nonprovisional application or international application designating the United States within the twelve-month period set forth in 37 CFR 1.78(a)(1)(i) was unintentional.’

The petition must be filed in the subsequent application (nonprovisional or international application designating the US) within 14 months of the provisional application’s filing date. The USPTO may require additional information to verify that the delay was unintentional.

For more information on benefit restoration, visit: benefit restoration.

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

For more information on provisional application, visit: provisional application.

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

An unintentionally delayed priority claim occurs when a claim for foreign priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) is not presented within the time period provided by 37 CFR 1.55(d). In such cases, the claim is considered to have been waived but may be accepted if the delay was unintentional.

As stated in the MPEP: “If a claim for priority is considered to have been waived under this section, the claim may be accepted if the priority claim was unintentionally delayed.”

To learn more:

• foreign priority
• delayed priority claim
• unintentional delay
• patent application

A delayed benefit claim in patent applications refers to a situation where an applicant fails to submit the required reference to a prior application within the specified time period. In such cases, the applicant may file a petition for an unintentionally delayed claim.

According to MPEP 211.04, the petition must include:

• The reference to the prior application
• A petition fee
• A statement that the entire delay was unintentional

The MPEP states: “If the reference required by 35 U.S.C. 120 and 37 CFR 1.78 is not submitted within the required time period, a petition for an unintentionally delayed claim may be filed.”

To learn more:

• delayed benefit claim
• patent application
• unintentional delay
• petition

If the specific reference to a prior-filed application is not submitted within the required time period, it is considered a waiver of any benefit claim to that prior application. The MPEP states:

This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c).

However, there is a possibility to accept a late benefit claim. The MPEP provides that: A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

Such a petition must include:

1. The reference to the prior application
2. The petition fee
3. A statement that the delay was unintentional

The Director may require additional information to verify that the delay was indeed unintentional.

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

For more information on waiver, visit: waiver.

If you miss the deadline for submitting a benefit claim, you may still be able to claim the benefit by filing a petition. According to MPEP 211.02:

A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

The petition must include:

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

The Director may require additional information if there’s a question about whether the delay was unintentional. It’s important to note that accepting a late benefit claim is at the discretion of the USPTO and is not guaranteed.

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

For more information on USPTO, visit: USPTO.

If you miss the deadline for filing a foreign priority claim, you may still have options:

• Unintentional delay: You can file a petition to accept an unintentionally delayed priority claim under 37 CFR 1.55(e). This petition must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.
• Design applications: For design applications, you can file this petition up to the date of payment of the issue fee.

The MPEP states: The Director may accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), or 365(a) or (b) in an application for patent filed on or after November 29, 2000, upon petition pursuant to 37 CFR 1.55(e).

It’s important to note that the petition must include a statement that the entire delay was unintentional, and you may need to provide additional evidence to support this claim.

If you file a nonprovisional application after the 12-month priority period from the filing date of a foreign application, you may still be able to claim priority under certain circumstances:

• Two-month grace period: The USPTO provides a two-month grace period after the 12-month priority period. During this time, you can file the nonprovisional application with a petition to restore the right of priority.
• Unintentional delay: The delay in filing must have been unintentional. You’ll need to submit a petition explaining the circumstances.
• Additional fee: A petition fee is required.

As stated in MPEP 213.03: “A nonprovisional application filed after the 12-month priority period, but within 2 months from the expiration of the 12-month priority period, may be filed with a petition to restore the right of priority.”

It’s important to note that this provision applies to both Paris Convention applications and PCT applications entering the national stage in the United States.

To learn more:

• priority claim
• grace period
• unintentional delay
• petition to restore

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 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.

‘Unintentional delay’ is a crucial concept when seeking to restore the benefit of a provisional application. The MPEP requires:

“A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional.”

While the MPEP doesn’t provide a specific definition of ‘unintentional delay’, it generally means that the failure to meet the 12-month deadline was not deliberate. The USPTO may require additional information to determine if the delay was truly unintentional:

“The Director may require additional information where there is a question whether the delay was unintentional.”

It’s important to be prepared to explain the circumstances that led to the delay if requested.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

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

Filing a delayed benefit claim for a provisional application requires specific components. MPEP 211.04 outlines the requirements:

The petition must be accompanied by: (A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior provisional application (unless previously submitted); (B) a petition fee under 37 CFR 1.17(m); and (C) 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.

For petitions filed more than two years after the due date, additional explanation of the delay circumstances is required to establish that the entire delay was unintentional.

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

For more information on provisional application, visit: provisional application.

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

For delayed priority claims filed more than two years after the due date, additional explanation is required. The MPEP states:

“A person filing a petition to accept a delayed priority claim more than two years after the date the foreign priority claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. This requirement is in addition to the requirement to provide a statement that the entire delay was unintentional in 37 CFR 1.55(e).”

This additional explanation helps the USPTO determine if the delay was truly unintentional, as required for acceptance of the delayed claim. Applicants should be prepared to provide a detailed account of the circumstances leading to the delay.

To learn more:

• delayed priority claim
• two-year delay
• unintentional delay
• patent procedure

The USPTO evaluates whether a delay in claiming priority was unintentional based on the totality of the circumstances. According to MPEP 214.02:

The Director may require additional information where there is a question whether the delay was unintentional.

This means that the USPTO may request additional information from the applicant to determine if the delay was truly unintentional. The evaluation process typically involves:

• Reviewing the explanation provided in the petition
• Considering the length of the delay
• Assessing any changes in ownership or responsibility for the application
• Examining the circumstances surrounding the discovery of the need for a delayed priority claim

The USPTO applies a good faith standard, looking for evidence that the delay was not deliberate and that reasonable steps were taken to correct the issue once it was discovered. It’s important to provide a detailed and honest account of the circumstances leading to the delay when filing the petition.

To learn more:

• unintentional delay
• priority claim
• USPTO evaluation
• good faith standard

How does the USPTO define ‘unintentional delay’ for priority claims?

The USPTO does not provide a specific definition of ‘unintentional delay’ in the context of priority claims. However, the interpretation is generally consistent with other areas of patent law where unintentional delay is considered.

According to MPEP 214.02: ‘The Director may require additional information where there is a question whether the delay was unintentional.’

This means that:

• The delay must not have been deliberate or intentional.
• The applicant must have taken reasonable care to meet the deadline but failed due to unforeseen circumstances.
• Once the applicant became aware of the missed deadline, they must have acted promptly to file the petition.

It’s important to note that the USPTO may request additional information if there’s any doubt about the unintentional nature of the delay. Applicants should be prepared to provide a detailed explanation of the circumstances that led to the delay if requested.

To learn more:

• unintentional delay
• priority claims
• USPTO
• patent application

The ‘unintentional’ delay standard is crucial in evaluating petitions for delayed benefit claims. According to MPEP 211.04:

While the Director may require additional information whenever there is a question of whether the delay was unintentional, a person filing a petition to accept a delayed benefit claim more than two years after the date the benefit claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional.

This requirement is in addition to the standard statement of unintentional delay. For further discussion on the ‘unintentional’ delay standard, refer to MPEP § 711.03(c).

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

If an applicant misses the 12-month deadline for claiming the benefit of a provisional application, they may be able to restore the benefit under certain conditions:

1. The nonprovisional application must be filed within 14 months of the provisional application’s filing date
2. A petition under 37 CFR 1.78(b) must be filed in the nonprovisional application
3. The delay in filing must be unintentional

The MPEP states: “If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

The petition must include:

• The reference to the provisional application
• The petition fee
• A statement that the delay was unintentional

Filing a delayed benefit claim for a provisional application follows a similar process to other delayed benefit claims. According to MPEP 211.04:

“If the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 is not submitted within the required time period, a petition for an unintentionally delayed claim may be filed.”

The petition must include:

• The reference to the prior provisional application
• A petition fee
• A statement that the entire delay was unintentional

It’s important to note that as of December 18, 2013, the amendment containing the specific reference to the earlier filed provisional application no longer needs to be submitted during the pendency of the application.

To learn more:

• provisional application
• delayed benefit claim
• petition
• unintentional delay

An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.

According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”

The petition to restore the right of priority must include:

• The priority claim identifying the prior foreign application
• The petition fee
• A statement that the delay in filing was unintentional

The USPTO may require additional information to establish that the delay was unintentional.

For more information on foreign priority, visit: foreign priority.

For more information on priority restoration, visit: priority restoration.

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

The handling of delayed priority claims in design applications has evolved. The MPEP provides the following information:

“Before May 13, 2015, no procedures were established for accepting an unintentionally delayed priority claim in a design application. Effective May 13, 2015, 37 CFR 1.55(e) provides for the filing of a petition for acceptance of an unintentionally delayed priority claim in a design application where the foreign priority claim was not submitted during the pendency of the design application.”

This change allows design patent applicants and holders to rectify unintentionally delayed priority claims, aligning the process more closely with that of utility patents. As with utility patents, a petition under 37 CFR 1.55(e) may be filed along with a request for a certificate of correction after the design patent has been granted.

To learn more:

• design patent
• delayed priority claim
• unintentional delay
• patent procedure

Yes, the USPTO may request additional information when considering a petition to restore the right of priority. The MPEP states:

The Director may require additional information where there is a question whether the delay was unintentional.

This means that if the USPTO has doubts about whether the delay in filing was truly unintentional, they may ask for more details or evidence to support your claim. It’s important to be prepared to provide such information if requested to ensure your petition is properly considered.

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

Yes, the right of priority can be restored if the filing deadline is missed, but certain conditions must be met:

• The subsequent application must be filed within two months of the expiration of the priority period.
• A petition under 37 CFR 1.55(c) must be filed.
• The delay in filing must be unintentional.

The MPEP states: As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional. (MPEP 213.03)

To learn more:

• Priority restoration
• Missed deadline
• Petition
• Unintentional delay

If you fail to make a timely priority claim or submit a certified copy of the foreign application within the required time period, the following may occur:

• The right of priority may be considered waived
• The effective filing date of your application may be the actual U.S. filing date, not the foreign filing date
• Intervening prior art may be applicable against your application

However, 37 CFR 1.55(e) provides for acceptance of a delayed priority claim if:

• The claim is filed within the pendency of the application
• A petition is filed with the delayed claim
• The delay was unintentional
• The required petition fee is paid

Similarly, 37 CFR 1.55(f) allows for late submission of a certified copy with a petition showing good and sufficient cause for the delay and payment of a fee. It’s always best to make priority claims and submit certified copies timely to avoid potential issues.

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

If a claim for foreign priority is not presented within the required time period under 37 CFR 1.55, it is considered waived. However, the claim may be accepted if the priority claim was unintentionally delayed.

To file a petition for an unintentionally delayed priority claim, the applicant must submit:

1. 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, identifying the foreign application to which priority is claimed;
2. A certified copy of the foreign application, unless previously submitted or an exception applies;
3. The petition fee set in 37 CFR 1.17(m); and
4. A statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The Director may require additional information if there is a question whether the delay was unintentional. See 37 CFR 1.55(e).

Yes, the right of priority can be restored if the U.S. application is filed after the 12-month priority period (or 6-month period for design applications), but within 2 months of the expiration of the priority period, if the delay was unintentional.

37 CFR 1.55(c) states: “If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional.”

To restore the right of priority, the applicant must file a petition including:
1. The priority claim
2. The petition fee
3. A statement that the delay was unintentional

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

Yes, it is possible to restore the right of priority if you miss the 12-month filing deadline (6 months for design applications). As provided in 37 CFR 1.55(c), if the subsequent application is filed within two months from the expiration of the priority period, the right of priority may be restored upon petition. The petition must include:

• The priority claim (unless previously submitted)
• The petition fee
• A statement that the delay in filing was unintentional

The Director may require additional information where there is a question whether the delay was unintentional. Note that while this allows for a valid priority claim, it does not overcome potential prior art issues under pre-AIA 35 U.S.C. 102(b) or (d) in applications subject to pre-AIA law.

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 filed within the required time period, it may still be accepted through a petition process. According to MPEP ¶ 2.15:

A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

The petition must include:

1. The reference to the prior application (unless previously submitted)
2. The petition fee under 37 CFR 1.17(m)
3. A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

The Director may request additional information if there’s a question about whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

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

A petition to restore the benefit of a provisional application under 37 CFR 1.78(b) must include several elements. According to MPEP 211.01(a):

‘A petition under 37 CFR 1.78(b) requires: (A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application, which must be included in application data sheet (unless previously submitted in an application data sheet); (B) the petition fee as set forth in 37 CFR 1.17(m); and (C) a statement that the delay in filing the nonprovisional application or international application designating the United States within the twelve-month period set forth in 37 CFR 1.78(a)(1)(i) was unintentional.’

The petition must be filed in the subsequent application (nonprovisional or international application designating the US) within 14 months of the provisional application’s filing date. The USPTO may require additional information to verify that the delay was unintentional.

For more information on benefit restoration, visit: benefit restoration.

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

For more information on provisional application, visit: provisional application.

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

If the specific reference to a prior-filed application is not submitted within the required time period, it is considered a waiver of any benefit claim to that prior application. The MPEP states:

This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c).

However, there is a possibility to accept a late benefit claim. The MPEP provides that: A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

Such a petition must include:

1. The reference to the prior application
2. The petition fee
3. A statement that the delay was unintentional

The Director may require additional information to verify that the delay was indeed unintentional.

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

For more information on waiver, visit: waiver.

If you miss the deadline for submitting a benefit claim, you may still be able to claim the benefit by filing a petition. According to MPEP 211.02:

A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

The petition must include:

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

The Director may require additional information if there’s a question about whether the delay was unintentional. It’s important to note that accepting a late benefit claim is at the discretion of the USPTO and is not guaranteed.

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

For more information on USPTO, visit: USPTO.

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 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.

‘Unintentional delay’ is a crucial concept when seeking to restore the benefit of a provisional application. The MPEP requires:

“A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional.”

While the MPEP doesn’t provide a specific definition of ‘unintentional delay’, it generally means that the failure to meet the 12-month deadline was not deliberate. The USPTO may require additional information to determine if the delay was truly unintentional:

“The Director may require additional information where there is a question whether the delay was unintentional.”

It’s important to be prepared to explain the circumstances that led to the delay if requested.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

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

Filing a delayed benefit claim for a provisional application requires specific components. MPEP 211.04 outlines the requirements:

The petition must be accompanied by: (A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior provisional application (unless previously submitted); (B) a petition fee under 37 CFR 1.17(m); and (C) 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.

For petitions filed more than two years after the due date, additional explanation of the delay circumstances is required to establish that the entire delay was unintentional.

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

For more information on provisional application, visit: provisional application.

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

The ‘unintentional’ delay standard is crucial in evaluating petitions for delayed benefit claims. According to MPEP 211.04:

While the Director may require additional information whenever there is a question of whether the delay was unintentional, a person filing a petition to accept a delayed benefit claim more than two years after the date the benefit claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional.

This requirement is in addition to the standard statement of unintentional delay. For further discussion on the ‘unintentional’ delay standard, refer to MPEP § 711.03(c).

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

If an applicant misses the 12-month deadline for claiming the benefit of a provisional application, they may be able to restore the benefit under certain conditions:

1. The nonprovisional application must be filed within 14 months of the provisional application’s filing date
2. A petition under 37 CFR 1.78(b) must be filed in the nonprovisional application
3. The delay in filing must be unintentional

The MPEP states: “If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

The petition must include:

• The reference to the provisional application
• The petition fee
• A statement that the delay was unintentional

If you fail to make a timely priority claim or submit a certified copy of the foreign application within the required time period, the following may occur:

• The right of priority may be considered waived
• The effective filing date of your application may be the actual U.S. filing date, not the foreign filing date
• Intervening prior art may be applicable against your application

However, 37 CFR 1.55(e) provides for acceptance of a delayed priority claim if:

• The claim is filed within the pendency of the application
• A petition is filed with the delayed claim
• The delay was unintentional
• The required petition fee is paid

Similarly, 37 CFR 1.55(f) allows for late submission of a certified copy with a petition showing good and sufficient cause for the delay and payment of a fee. It’s always best to make priority claims and submit certified copies timely to avoid potential issues.

An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.

According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”

The petition to restore the right of priority must include:

• The priority claim identifying the prior foreign application
• The petition fee
• A statement that the delay in filing was unintentional

The USPTO may require additional information to establish that the delay was unintentional.

For more information on foreign priority, visit: foreign priority.

For more information on priority restoration, visit: priority restoration.

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

Yes, the right of priority can be restored if the U.S. application is filed after the 12-month priority period (or 6-month period for design applications), but within 2 months of the expiration of the priority period, if the delay was unintentional.

37 CFR 1.55(c) states: “If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional.”

To restore the right of priority, the applicant must file a petition including:
1. The priority claim
2. The petition fee
3. A statement that the delay was unintentional

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

Yes, it is possible to restore the right of priority if you miss the 12-month filing deadline (6 months for design applications). As provided in 37 CFR 1.55(c), if the subsequent application is filed within two months from the expiration of the priority period, the right of priority may be restored upon petition. The petition must include:

• The priority claim (unless previously submitted)
• The petition fee
• A statement that the delay in filing was unintentional

The Director may require additional information where there is a question whether the delay was unintentional. Note that while this allows for a valid priority claim, it does not overcome potential prior art issues under pre-AIA 35 U.S.C. 102(b) or (d) in applications subject to pre-AIA law.

If you miss the deadline for filing a foreign priority claim, you may still have options:

• Unintentional delay: You can file a petition to accept an unintentionally delayed priority claim under 37 CFR 1.55(e). This petition must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.
• Design applications: For design applications, you can file this petition up to the date of payment of the issue fee.

The MPEP states: The Director may accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), or 365(a) or (b) in an application for patent filed on or after November 29, 2000, upon petition pursuant to 37 CFR 1.55(e).

It’s important to note that the petition must include a statement that the entire delay was unintentional, and you may need to provide additional evidence to support this claim.

If a claim for foreign priority is not presented within the required time period under 37 CFR 1.55, it is considered waived. However, the claim may be accepted if the priority claim was unintentionally delayed.

To file a petition for an unintentionally delayed priority claim, the applicant must submit:

1. 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, identifying the foreign application to which priority is claimed;
2. A certified copy of the foreign application, unless previously submitted or an exception applies;
3. The petition fee set in 37 CFR 1.17(m); and
4. A statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The Director may require additional information if there is a question whether the delay was unintentional. See 37 CFR 1.55(e).

Yes, the USPTO may request additional information when considering a petition to restore the right of priority. The MPEP states:

The Director may require additional information where there is a question whether the delay was unintentional.

This means that if the USPTO has doubts about whether the delay in filing was truly unintentional, they may ask for more details or evidence to support your claim. It’s important to be prepared to provide such information if requested to ensure your petition is properly considered.

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

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.

The Patent Law Treaties Implementation Act (PLTIA) introduced the concept of restoration of the right of priority. This provision allows applicants to file a subsequent application and still claim priority or benefit even if they missed the standard 12-month deadline (6-month for design applications).

As stated in the MPEP: Notable changes to the law and rules included the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application. (MPEP 210)

Key points about restoration of the right of priority:

• It applies to both foreign priority claims and domestic benefit claims to provisional applications.
• The subsequent application must be filed within 14 months from the filing date of the prior foreign application or provisional application (8 months for design applications).
• The delay in filing the subsequent application must be unintentional.
• A petition for restoration of the right of priority must be filed.

The specific requirements and procedures for restoration of the right of priority are outlined in 37 CFR 1.55(c) for foreign priority claims and 37 CFR 1.78(b) for domestic benefit claims.

For more information on PLTIA, visit: PLTIA.

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

If a benefit claim is not filed within the required time period, it may still be accepted through a petition process. According to MPEP ¶ 2.15:

A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

The petition must include:

1. The reference to the prior application (unless previously submitted)
2. The petition fee under 37 CFR 1.17(m)
3. A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

The Director may request additional information if there’s a question about whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

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

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

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.

To learn more:

• benefit claim
• delayed claim
• petition
• unintentional delay

The distinction between unintentional and intentional delay is crucial when filing a delayed benefit claim. The MPEP 211.04 addresses this:

‘A petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed application must be accompanied by: … (3) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional.’

An unintentional delay may be caused by oversight, administrative error, or other circumstances not intended to delay the filing. Intentional delay, on the other hand, implies a deliberate choice not to file the benefit claim on time. Only unintentional delays can be remedied through a petition. Intentional delays are not excusable and will result in the denial of the delayed benefit claim.

To learn more:

• unintentional delay
• intentional delay
• delayed benefit claim
• petition requirements

A petition to restore the benefit of a provisional application under 37 CFR 1.78(b) must include several elements. According to MPEP 211.01(a):

‘A petition under 37 CFR 1.78(b) requires: (A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application, which must be included in application data sheet (unless previously submitted in an application data sheet); (B) the petition fee as set forth in 37 CFR 1.17(m); and (C) a statement that the delay in filing the nonprovisional application or international application designating the United States within the twelve-month period set forth in 37 CFR 1.78(a)(1)(i) was unintentional.’

The petition must be filed in the subsequent application (nonprovisional or international application designating the US) within 14 months of the provisional application’s filing date. The USPTO may require additional information to verify that the delay was unintentional.

For more information on benefit restoration, visit: benefit restoration.

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

For more information on provisional application, visit: provisional application.

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

An unintentionally delayed priority claim occurs when a claim for foreign priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) is not presented within the time period provided by 37 CFR 1.55(d). In such cases, the claim is considered to have been waived but may be accepted if the delay was unintentional.

As stated in the MPEP: “If a claim for priority is considered to have been waived under this section, the claim may be accepted if the priority claim was unintentionally delayed.”

To learn more:

• foreign priority
• delayed priority claim
• unintentional delay
• patent application

A delayed benefit claim in patent applications refers to a situation where an applicant fails to submit the required reference to a prior application within the specified time period. In such cases, the applicant may file a petition for an unintentionally delayed claim.

According to MPEP 211.04, the petition must include:

• The reference to the prior application
• A petition fee
• A statement that the entire delay was unintentional

The MPEP states: “If the reference required by 35 U.S.C. 120 and 37 CFR 1.78 is not submitted within the required time period, a petition for an unintentionally delayed claim may be filed.”

To learn more:

• delayed benefit claim
• patent application
• unintentional delay
• petition

If the specific reference to a prior-filed application is not submitted within the required time period, it is considered a waiver of any benefit claim to that prior application. The MPEP states:

This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c).

However, there is a possibility to accept a late benefit claim. The MPEP provides that: A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

Such a petition must include:

1. The reference to the prior application
2. The petition fee
3. A statement that the delay was unintentional

The Director may require additional information to verify that the delay was indeed unintentional.

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

For more information on waiver, visit: waiver.

If you miss the deadline for submitting a benefit claim, you may still be able to claim the benefit by filing a petition. According to MPEP 211.02:

A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

The petition must include:

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

The Director may require additional information if there’s a question about whether the delay was unintentional. It’s important to note that accepting a late benefit claim is at the discretion of the USPTO and is not guaranteed.

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

For more information on USPTO, visit: USPTO.

If you miss the deadline for filing a foreign priority claim, you may still have options:

• Unintentional delay: You can file a petition to accept an unintentionally delayed priority claim under 37 CFR 1.55(e). This petition must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.
• Design applications: For design applications, you can file this petition up to the date of payment of the issue fee.

The MPEP states: The Director may accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), or 365(a) or (b) in an application for patent filed on or after November 29, 2000, upon petition pursuant to 37 CFR 1.55(e).

It’s important to note that the petition must include a statement that the entire delay was unintentional, and you may need to provide additional evidence to support this claim.

If you file a nonprovisional application after the 12-month priority period from the filing date of a foreign application, you may still be able to claim priority under certain circumstances:

• Two-month grace period: The USPTO provides a two-month grace period after the 12-month priority period. During this time, you can file the nonprovisional application with a petition to restore the right of priority.
• Unintentional delay: The delay in filing must have been unintentional. You’ll need to submit a petition explaining the circumstances.
• Additional fee: A petition fee is required.

As stated in MPEP 213.03: “A nonprovisional application filed after the 12-month priority period, but within 2 months from the expiration of the 12-month priority period, may be filed with a petition to restore the right of priority.”

It’s important to note that this provision applies to both Paris Convention applications and PCT applications entering the national stage in the United States.

To learn more:

• priority claim
• grace period
• unintentional delay
• petition to restore

If you fail to make a timely priority claim or submit a certified copy of the foreign application within the required time period, the following may occur:

• The right of priority may be considered waived
• The effective filing date of your application may be the actual U.S. filing date, not the foreign filing date
• Intervening prior art may be applicable against your application

However, 37 CFR 1.55(e) provides for acceptance of a delayed priority claim if:

• The claim is filed within the pendency of the application
• A petition is filed with the delayed claim
• The delay was unintentional
• The required petition fee is paid

Similarly, 37 CFR 1.55(f) allows for late submission of a certified copy with a petition showing good and sufficient cause for the delay and payment of a fee. It’s always best to make priority claims and submit certified copies timely to avoid potential issues.

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 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.

‘Unintentional delay’ is a crucial concept when seeking to restore the benefit of a provisional application. The MPEP requires:

“A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional.”

While the MPEP doesn’t provide a specific definition of ‘unintentional delay’, it generally means that the failure to meet the 12-month deadline was not deliberate. The USPTO may require additional information to determine if the delay was truly unintentional:

“The Director may require additional information where there is a question whether the delay was unintentional.”

It’s important to be prepared to explain the circumstances that led to the delay if requested.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

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

Filing a delayed benefit claim for a provisional application requires specific components. MPEP 211.04 outlines the requirements:

The petition must be accompanied by: (A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior provisional application (unless previously submitted); (B) a petition fee under 37 CFR 1.17(m); and (C) 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.

For petitions filed more than two years after the due date, additional explanation of the delay circumstances is required to establish that the entire delay was unintentional.

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

For more information on provisional application, visit: provisional application.

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

For delayed priority claims filed more than two years after the due date, additional explanation is required. The MPEP states:

“A person filing a petition to accept a delayed priority claim more than two years after the date the foreign priority claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. This requirement is in addition to the requirement to provide a statement that the entire delay was unintentional in 37 CFR 1.55(e).”

This additional explanation helps the USPTO determine if the delay was truly unintentional, as required for acceptance of the delayed claim. Applicants should be prepared to provide a detailed account of the circumstances leading to the delay.

To learn more:

• delayed priority claim
• two-year delay
• unintentional delay
• patent procedure

The USPTO evaluates whether a delay in claiming priority was unintentional based on the totality of the circumstances. According to MPEP 214.02:

The Director may require additional information where there is a question whether the delay was unintentional.

This means that the USPTO may request additional information from the applicant to determine if the delay was truly unintentional. The evaluation process typically involves:

• Reviewing the explanation provided in the petition
• Considering the length of the delay
• Assessing any changes in ownership or responsibility for the application
• Examining the circumstances surrounding the discovery of the need for a delayed priority claim

The USPTO applies a good faith standard, looking for evidence that the delay was not deliberate and that reasonable steps were taken to correct the issue once it was discovered. It’s important to provide a detailed and honest account of the circumstances leading to the delay when filing the petition.

To learn more:

• unintentional delay
• priority claim
• USPTO evaluation
• good faith standard

How does the USPTO define ‘unintentional delay’ for priority claims?

The USPTO does not provide a specific definition of ‘unintentional delay’ in the context of priority claims. However, the interpretation is generally consistent with other areas of patent law where unintentional delay is considered.

According to MPEP 214.02: ‘The Director may require additional information where there is a question whether the delay was unintentional.’

This means that:

• The delay must not have been deliberate or intentional.
• The applicant must have taken reasonable care to meet the deadline but failed due to unforeseen circumstances.
• Once the applicant became aware of the missed deadline, they must have acted promptly to file the petition.

It’s important to note that the USPTO may request additional information if there’s any doubt about the unintentional nature of the delay. Applicants should be prepared to provide a detailed explanation of the circumstances that led to the delay if requested.

To learn more:

• unintentional delay
• priority claims
• USPTO
• patent application

The ‘unintentional’ delay standard is crucial in evaluating petitions for delayed benefit claims. According to MPEP 211.04:

While the Director may require additional information whenever there is a question of whether the delay was unintentional, a person filing a petition to accept a delayed benefit claim more than two years after the date the benefit claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional.

This requirement is in addition to the standard statement of unintentional delay. For further discussion on the ‘unintentional’ delay standard, refer to MPEP § 711.03(c).

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

If an applicant misses the 12-month deadline for claiming the benefit of a provisional application, they may be able to restore the benefit under certain conditions:

1. The nonprovisional application must be filed within 14 months of the provisional application’s filing date
2. A petition under 37 CFR 1.78(b) must be filed in the nonprovisional application
3. The delay in filing must be unintentional

The MPEP states: “If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

The petition must include:

• The reference to the provisional application
• The petition fee
• A statement that the delay was unintentional

Filing a delayed benefit claim for a provisional application follows a similar process to other delayed benefit claims. According to MPEP 211.04:

“If the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 is not submitted within the required time period, a petition for an unintentionally delayed claim may be filed.”

The petition must include:

• The reference to the prior provisional application
• A petition fee
• A statement that the entire delay was unintentional

It’s important to note that as of December 18, 2013, the amendment containing the specific reference to the earlier filed provisional application no longer needs to be submitted during the pendency of the application.

To learn more:

• provisional application
• delayed benefit claim
• petition
• unintentional delay

An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.

According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”

The petition to restore the right of priority must include:

• The priority claim identifying the prior foreign application
• The petition fee
• A statement that the delay in filing was unintentional

The USPTO may require additional information to establish that the delay was unintentional.

For more information on foreign priority, visit: foreign priority.

For more information on priority restoration, visit: priority restoration.

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

If a claim for foreign priority is not presented within the required time period under 37 CFR 1.55, it is considered waived. However, the claim may be accepted if the priority claim was unintentionally delayed.

To file a petition for an unintentionally delayed priority claim, the applicant must submit:

1. 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, identifying the foreign application to which priority is claimed;
2. A certified copy of the foreign application, unless previously submitted or an exception applies;
3. The petition fee set in 37 CFR 1.17(m); and
4. A statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The Director may require additional information if there is a question whether the delay was unintentional. See 37 CFR 1.55(e).

The handling of delayed priority claims in design applications has evolved. The MPEP provides the following information:

“Before May 13, 2015, no procedures were established for accepting an unintentionally delayed priority claim in a design application. Effective May 13, 2015, 37 CFR 1.55(e) provides for the filing of a petition for acceptance of an unintentionally delayed priority claim in a design application where the foreign priority claim was not submitted during the pendency of the design application.”

This change allows design patent applicants and holders to rectify unintentionally delayed priority claims, aligning the process more closely with that of utility patents. As with utility patents, a petition under 37 CFR 1.55(e) may be filed along with a request for a certificate of correction after the design patent has been granted.

To learn more:

• design patent
• delayed priority claim
• unintentional delay
• patent procedure

Yes, the USPTO may request additional information when considering a petition to restore the right of priority. The MPEP states:

The Director may require additional information where there is a question whether the delay was unintentional.

This means that if the USPTO has doubts about whether the delay in filing was truly unintentional, they may ask for more details or evidence to support your claim. It’s important to be prepared to provide such information if requested to ensure your petition is properly considered.

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

Yes, the right of priority can be restored if the U.S. application is filed after the 12-month priority period (or 6-month period for design applications), but within 2 months of the expiration of the priority period, if the delay was unintentional.

37 CFR 1.55(c) states: “If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional.”

To restore the right of priority, the applicant must file a petition including:
1. The priority claim
2. The petition fee
3. A statement that the delay was unintentional

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

Yes, the right of priority can be restored if the filing deadline is missed, but certain conditions must be met:

• The subsequent application must be filed within two months of the expiration of the priority period.
• A petition under 37 CFR 1.55(c) must be filed.
• The delay in filing must be unintentional.

The MPEP states: As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional. (MPEP 213.03)

To learn more:

• Priority restoration
• Missed deadline
• Petition
• Unintentional delay

Yes, it is possible to restore the right of priority if you miss the 12-month filing deadline (6 months for design applications). As provided in 37 CFR 1.55(c), if the subsequent application is filed within two months from the expiration of the priority period, the right of priority may be restored upon petition. The petition must include:

• The priority claim (unless previously submitted)
• The petition fee
• A statement that the delay in filing was unintentional

The Director may require additional information where there is a question whether the delay was unintentional. Note that while this allows for a valid priority claim, it does not overcome potential prior art issues under pre-AIA 35 U.S.C. 102(b) or (d) in applications subject to pre-AIA law.

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.

The Patent Law Treaties Implementation Act (PLTIA) introduced the concept of restoration of the right of priority. This provision allows applicants to file a subsequent application and still claim priority or benefit even if they missed the standard 12-month deadline (6-month for design applications).

As stated in the MPEP: Notable changes to the law and rules included the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application. (MPEP 210)

Key points about restoration of the right of priority:

• It applies to both foreign priority claims and domestic benefit claims to provisional applications.
• The subsequent application must be filed within 14 months from the filing date of the prior foreign application or provisional application (8 months for design applications).
• The delay in filing the subsequent application must be unintentional.
• A petition for restoration of the right of priority must be filed.

The specific requirements and procedures for restoration of the right of priority are outlined in 37 CFR 1.55(c) for foreign priority claims and 37 CFR 1.78(b) for domestic benefit claims.

For more information on PLTIA, visit: PLTIA.

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

If a benefit claim is not filed within the required time period, it may still be accepted through a petition process. According to MPEP ¶ 2.15:

A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

The petition must include:

1. The reference to the prior application (unless previously submitted)
2. The petition fee under 37 CFR 1.17(m)
3. A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

The Director may request additional information if there’s a question about whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

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

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

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.

To learn more:

• benefit claim
• delayed claim
• petition
• unintentional delay

The distinction between unintentional and intentional delay is crucial when filing a delayed benefit claim. The MPEP 211.04 addresses this:

‘A petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed application must be accompanied by: … (3) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional.’

An unintentional delay may be caused by oversight, administrative error, or other circumstances not intended to delay the filing. Intentional delay, on the other hand, implies a deliberate choice not to file the benefit claim on time. Only unintentional delays can be remedied through a petition. Intentional delays are not excusable and will result in the denial of the delayed benefit claim.

To learn more:

• unintentional delay
• intentional delay
• delayed benefit claim
• petition requirements

A petition to restore the benefit of a provisional application under 37 CFR 1.78(b) must include several elements. According to MPEP 211.01(a):

‘A petition under 37 CFR 1.78(b) requires: (A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application, which must be included in application data sheet (unless previously submitted in an application data sheet); (B) the petition fee as set forth in 37 CFR 1.17(m); and (C) a statement that the delay in filing the nonprovisional application or international application designating the United States within the twelve-month period set forth in 37 CFR 1.78(a)(1)(i) was unintentional.’

The petition must be filed in the subsequent application (nonprovisional or international application designating the US) within 14 months of the provisional application’s filing date. The USPTO may require additional information to verify that the delay was unintentional.

For more information on benefit restoration, visit: benefit restoration.

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

For more information on provisional application, visit: provisional application.

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

An unintentionally delayed priority claim occurs when a claim for foreign priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) is not presented within the time period provided by 37 CFR 1.55(d). In such cases, the claim is considered to have been waived but may be accepted if the delay was unintentional.

As stated in the MPEP: “If a claim for priority is considered to have been waived under this section, the claim may be accepted if the priority claim was unintentionally delayed.”

To learn more:

• foreign priority
• delayed priority claim
• unintentional delay
• patent application

A delayed benefit claim in patent applications refers to a situation where an applicant fails to submit the required reference to a prior application within the specified time period. In such cases, the applicant may file a petition for an unintentionally delayed claim.

According to MPEP 211.04, the petition must include:

• The reference to the prior application
• A petition fee
• A statement that the entire delay was unintentional

The MPEP states: “If the reference required by 35 U.S.C. 120 and 37 CFR 1.78 is not submitted within the required time period, a petition for an unintentionally delayed claim may be filed.”

To learn more:

• delayed benefit claim
• patent application
• unintentional delay
• petition

If the specific reference to a prior-filed application is not submitted within the required time period, it is considered a waiver of any benefit claim to that prior application. The MPEP states:

This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c).

However, there is a possibility to accept a late benefit claim. The MPEP provides that: A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

Such a petition must include:

1. The reference to the prior application
2. The petition fee
3. A statement that the delay was unintentional

The Director may require additional information to verify that the delay was indeed unintentional.

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

For more information on waiver, visit: waiver.

If you miss the deadline for submitting a benefit claim, you may still be able to claim the benefit by filing a petition. According to MPEP 211.02:

A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

The petition must include:

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

The Director may require additional information if there’s a question about whether the delay was unintentional. It’s important to note that accepting a late benefit claim is at the discretion of the USPTO and is not guaranteed.

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

For more information on USPTO, visit: USPTO.

If you miss the deadline for filing a foreign priority claim, you may still have options:

• Unintentional delay: You can file a petition to accept an unintentionally delayed priority claim under 37 CFR 1.55(e). This petition must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.
• Design applications: For design applications, you can file this petition up to the date of payment of the issue fee.

The MPEP states: The Director may accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), or 365(a) or (b) in an application for patent filed on or after November 29, 2000, upon petition pursuant to 37 CFR 1.55(e).

It’s important to note that the petition must include a statement that the entire delay was unintentional, and you may need to provide additional evidence to support this claim.

If you file a nonprovisional application after the 12-month priority period from the filing date of a foreign application, you may still be able to claim priority under certain circumstances:

• Two-month grace period: The USPTO provides a two-month grace period after the 12-month priority period. During this time, you can file the nonprovisional application with a petition to restore the right of priority.
• Unintentional delay: The delay in filing must have been unintentional. You’ll need to submit a petition explaining the circumstances.
• Additional fee: A petition fee is required.

As stated in MPEP 213.03: “A nonprovisional application filed after the 12-month priority period, but within 2 months from the expiration of the 12-month priority period, may be filed with a petition to restore the right of priority.”

It’s important to note that this provision applies to both Paris Convention applications and PCT applications entering the national stage in the United States.

To learn more:

• priority claim
• grace period
• unintentional delay
• petition to restore

If you fail to make a timely priority claim or submit a certified copy of the foreign application within the required time period, the following may occur:

• The right of priority may be considered waived
• The effective filing date of your application may be the actual U.S. filing date, not the foreign filing date
• Intervening prior art may be applicable against your application

However, 37 CFR 1.55(e) provides for acceptance of a delayed priority claim if:

• The claim is filed within the pendency of the application
• A petition is filed with the delayed claim
• The delay was unintentional
• The required petition fee is paid

Similarly, 37 CFR 1.55(f) allows for late submission of a certified copy with a petition showing good and sufficient cause for the delay and payment of a fee. It’s always best to make priority claims and submit certified copies timely to avoid potential issues.

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 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.

‘Unintentional delay’ is a crucial concept when seeking to restore the benefit of a provisional application. The MPEP requires:

“A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional.”

While the MPEP doesn’t provide a specific definition of ‘unintentional delay’, it generally means that the failure to meet the 12-month deadline was not deliberate. The USPTO may require additional information to determine if the delay was truly unintentional:

“The Director may require additional information where there is a question whether the delay was unintentional.”

It’s important to be prepared to explain the circumstances that led to the delay if requested.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

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

Filing a delayed benefit claim for a provisional application requires specific components. MPEP 211.04 outlines the requirements:

The petition must be accompanied by: (A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior provisional application (unless previously submitted); (B) a petition fee under 37 CFR 1.17(m); and (C) 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.

For petitions filed more than two years after the due date, additional explanation of the delay circumstances is required to establish that the entire delay was unintentional.

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

For more information on provisional application, visit: provisional application.

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

For delayed priority claims filed more than two years after the due date, additional explanation is required. The MPEP states:

“A person filing a petition to accept a delayed priority claim more than two years after the date the foreign priority claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. This requirement is in addition to the requirement to provide a statement that the entire delay was unintentional in 37 CFR 1.55(e).”

This additional explanation helps the USPTO determine if the delay was truly unintentional, as required for acceptance of the delayed claim. Applicants should be prepared to provide a detailed account of the circumstances leading to the delay.

To learn more:

• delayed priority claim
• two-year delay
• unintentional delay
• patent procedure

The USPTO evaluates whether a delay in claiming priority was unintentional based on the totality of the circumstances. According to MPEP 214.02:

The Director may require additional information where there is a question whether the delay was unintentional.

This means that the USPTO may request additional information from the applicant to determine if the delay was truly unintentional. The evaluation process typically involves:

• Reviewing the explanation provided in the petition
• Considering the length of the delay
• Assessing any changes in ownership or responsibility for the application
• Examining the circumstances surrounding the discovery of the need for a delayed priority claim

The USPTO applies a good faith standard, looking for evidence that the delay was not deliberate and that reasonable steps were taken to correct the issue once it was discovered. It’s important to provide a detailed and honest account of the circumstances leading to the delay when filing the petition.

To learn more:

• unintentional delay
• priority claim
• USPTO evaluation
• good faith standard

How does the USPTO define ‘unintentional delay’ for priority claims?

The USPTO does not provide a specific definition of ‘unintentional delay’ in the context of priority claims. However, the interpretation is generally consistent with other areas of patent law where unintentional delay is considered.

According to MPEP 214.02: ‘The Director may require additional information where there is a question whether the delay was unintentional.’

This means that:

• The delay must not have been deliberate or intentional.
• The applicant must have taken reasonable care to meet the deadline but failed due to unforeseen circumstances.
• Once the applicant became aware of the missed deadline, they must have acted promptly to file the petition.

It’s important to note that the USPTO may request additional information if there’s any doubt about the unintentional nature of the delay. Applicants should be prepared to provide a detailed explanation of the circumstances that led to the delay if requested.

To learn more:

• unintentional delay
• priority claims
• USPTO
• patent application

The ‘unintentional’ delay standard is crucial in evaluating petitions for delayed benefit claims. According to MPEP 211.04:

While the Director may require additional information whenever there is a question of whether the delay was unintentional, a person filing a petition to accept a delayed benefit claim more than two years after the date the benefit claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional.

This requirement is in addition to the standard statement of unintentional delay. For further discussion on the ‘unintentional’ delay standard, refer to MPEP § 711.03(c).

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

If an applicant misses the 12-month deadline for claiming the benefit of a provisional application, they may be able to restore the benefit under certain conditions:

1. The nonprovisional application must be filed within 14 months of the provisional application’s filing date
2. A petition under 37 CFR 1.78(b) must be filed in the nonprovisional application
3. The delay in filing must be unintentional

The MPEP states: “If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

The petition must include:

• The reference to the provisional application
• The petition fee
• A statement that the delay was unintentional

Filing a delayed benefit claim for a provisional application follows a similar process to other delayed benefit claims. According to MPEP 211.04:

“If the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 is not submitted within the required time period, a petition for an unintentionally delayed claim may be filed.”

The petition must include:

• The reference to the prior provisional application
• A petition fee
• A statement that the entire delay was unintentional

It’s important to note that as of December 18, 2013, the amendment containing the specific reference to the earlier filed provisional application no longer needs to be submitted during the pendency of the application.

To learn more:

• provisional application
• delayed benefit claim
• petition
• unintentional delay

An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.

According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”

The petition to restore the right of priority must include:

• The priority claim identifying the prior foreign application
• The petition fee
• A statement that the delay in filing was unintentional

The USPTO may require additional information to establish that the delay was unintentional.

For more information on foreign priority, visit: foreign priority.

For more information on priority restoration, visit: priority restoration.

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

If a claim for foreign priority is not presented within the required time period under 37 CFR 1.55, it is considered waived. However, the claim may be accepted if the priority claim was unintentionally delayed.

To file a petition for an unintentionally delayed priority claim, the applicant must submit:

1. 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, identifying the foreign application to which priority is claimed;
2. A certified copy of the foreign application, unless previously submitted or an exception applies;
3. The petition fee set in 37 CFR 1.17(m); and
4. A statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The Director may require additional information if there is a question whether the delay was unintentional. See 37 CFR 1.55(e).

The handling of delayed priority claims in design applications has evolved. The MPEP provides the following information:

“Before May 13, 2015, no procedures were established for accepting an unintentionally delayed priority claim in a design application. Effective May 13, 2015, 37 CFR 1.55(e) provides for the filing of a petition for acceptance of an unintentionally delayed priority claim in a design application where the foreign priority claim was not submitted during the pendency of the design application.”

This change allows design patent applicants and holders to rectify unintentionally delayed priority claims, aligning the process more closely with that of utility patents. As with utility patents, a petition under 37 CFR 1.55(e) may be filed along with a request for a certificate of correction after the design patent has been granted.

To learn more:

• design patent
• delayed priority claim
• unintentional delay
• patent procedure

Yes, the USPTO may request additional information when considering a petition to restore the right of priority. The MPEP states:

The Director may require additional information where there is a question whether the delay was unintentional.

This means that if the USPTO has doubts about whether the delay in filing was truly unintentional, they may ask for more details or evidence to support your claim. It’s important to be prepared to provide such information if requested to ensure your petition is properly considered.

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

Yes, the right of priority can be restored if the U.S. application is filed after the 12-month priority period (or 6-month period for design applications), but within 2 months of the expiration of the priority period, if the delay was unintentional.

37 CFR 1.55(c) states: “If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional.”

To restore the right of priority, the applicant must file a petition including:
1. The priority claim
2. The petition fee
3. A statement that the delay was unintentional

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

Yes, the right of priority can be restored if the filing deadline is missed, but certain conditions must be met:

• The subsequent application must be filed within two months of the expiration of the priority period.
• A petition under 37 CFR 1.55(c) must be filed.
• The delay in filing must be unintentional.

The MPEP states: As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional. (MPEP 213.03)

To learn more:

• Priority restoration
• Missed deadline
• Petition
• Unintentional delay

Yes, it is possible to restore the right of priority if you miss the 12-month filing deadline (6 months for design applications). As provided in 37 CFR 1.55(c), if the subsequent application is filed within two months from the expiration of the priority period, the right of priority may be restored upon petition. The petition must include:

• The priority claim (unless previously submitted)
• The petition fee
• A statement that the delay in filing was unintentional

The Director may require additional information where there is a question whether the delay was unintentional. Note that while this allows for a valid priority claim, it does not overcome potential prior art issues under pre-AIA 35 U.S.C. 102(b) or (d) in applications subject to pre-AIA law.