Can I delete a benefit claim, and what are the implications?

Yes, you can delete a benefit claim, but it’s important to understand the process and potential implications:

1. 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.
2. 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.