Can I delete a benefit claim, and what are the implications?
This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.
Yes, you can delete a benefit claim, but it’s important to understand the process and potential implications:
- For applications filed on or after September 16, 2012, you can delete a benefit claim by filing a corrected Application Data Sheet (ADS) that removes the reference to the prior-filed application.
- For applications filed before September 16, 2012, you can delete a benefit claim by amending the specification (if the claim is in the specification) or by submitting a supplemental ADS to delete references to prior applications.
According to MPEP 211.02(a): The examiner should consider whether any new prior art may now be available if a benefit claim is deleted.
Important considerations:
- Deleting a benefit claim may expose your application to additional prior art, potentially affecting its patentability.
- If you delete a benefit claim after final rejection or allowance, the amendment will be treated under special rules (37 CFR 1.116 or 1.312, respectively).
- Deleting a benefit claim may be seen as intentionally waiving the benefit claim. If you later try to reinstate it, the USPTO may not accept it as unintentionally delayed.
- In a Continued Prosecution Application (CPA), you cannot delete the reference to the prior application with the same application number.
Always carefully consider the implications before deleting a benefit claim, and consult with a patent attorney if you’re unsure about the consequences.
For more information on ADS, visit: ADS.
For more information on CPA, visit: CPA.
For more information on prior art, visit: prior art.