Can I add a benefit claim to a foreign priority application after filing?
Can I add a benefit claim to a foreign priority application after filing?
Yes, you can add a benefit claim to a foreign priority application after filing, but specific procedures must be followed. According to MPEP 211.02(a):
“In the case of a design application, an original claim under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) to a prior U.S. application or PCT international application designating the United States may be made by the filing of an amendment to the specification within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.”
For utility applications, similar time frames apply. However, if you miss these deadlines, you must file a petition under 37 CFR 1.78 along with the petition fee to add the benefit claim. The petition must include:
- The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed application
- A statement that the entire delay was unintentional
- The petition fee set forth in 37 CFR 1.17(m)
It’s important to act promptly when adding or correcting benefit claims to avoid potential issues with patentability or patent term.
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