What are the consequences of failing to timely submit a benefit claim under 35 U.S.C. 120 in a design patent application?

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.

Failing to timely submit a benefit claim under 35 U.S.C. 120 in a design patent application can have significant consequences:

• The application may lose the benefit of the earlier filing date.
• It may be considered a waiver of any benefit under 35 U.S.C. 120, 121, 365(c), or 386(c).
• The loss of the earlier filing date could expose the application to additional prior art.

The MPEP states: “Except as provided for in 37 CFR 1.78(e), the failure to timely submit the reference required under 35 U.S.C. 120 and 37 CFR 1.78 in a design application during its pendency is considered a waiver of any benefit under 35 U.S.C. 120, 121, 365(c) or 386(c). See 37 CFR 1.78(d)(3)(iii).“

However, the USPTO does provide a procedure for accepting unintentionally delayed benefit claims. The Director may establish procedures, including the requirement for payment of a fee, to accept an unintentionally delayed submission of an amendment under this section.