Can I add a benefit claim after filing my patent application?

Yes, you can add a benefit claim after filing your patent application, but there are specific requirements and potential consequences:

1. If added within the time period set by 37 CFR 1.78, you can submit a corrected Application Data Sheet (ADS) for applications filed on or after September 16, 2012, or an amendment to the specification or supplemental ADS for applications filed before that date.
2. If added after the time period set by 37 CFR 1.78, you must file a petition under 37 CFR 1.78 and pay the petition fee. The petition must include:
• The reference to the prior application
• The petition fee
• A statement that the entire delay was unintentional
3. Depending on the application status, you may also need to file:
• A Request for Continued Examination (RCE) if the application is under final rejection or allowed
• A reissue application or request for a certificate of correction if the patent has already issued

As stated in MPEP 211.02(a): “When a benefit claim is submitted after the filing of an application, the reference to the prior application cannot include an incorporation by reference statement specifying of the prior application unless an incorporation by reference statement specifying of the prior application was presented upon filing of the application.”

It’s important to note that adding a benefit claim may affect the patent term and could introduce new prior art, so consider these factors carefully before proceeding.

To learn more:

• benefit claim
• priority claim
• patent application
• late benefit claim
• petition