How can I delete a benefit claim from my patent application?

The process for deleting a benefit claim depends on when your application was filed:

• For applications filed on or after September 16, 2012: File a corrected Application Data Sheet (ADS) in compliance with 37 CFR 1.76(c) that deletes the reference to the prior-filed application.
• For applications filed prior to September 16, 2012: Amend the specification (if the benefit claim is in the specification) or submit a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) to delete references to prior applications.

However, be aware of the following considerations:

• The examiner will consider whether any new prior art may become available if a benefit claim is deleted.
• If submitted after final rejection or action, the amendment or ADS will be treated under 37 CFR 1.116.
• If submitted after the application has been allowed, it will be treated under 37 CFR 1.312.
• Deleting a benefit claim may affect the publication date of the application.

The MPEP also notes an important caveat:

A cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant application.

This means that if you later try to reinstate the benefit claim, the USPTO may not accept it as an unintentional delay.

To learn more:

• delete benefit claim
• ADS
• patent application
• amendment
• specification