What are the key differences in filing benefit claims for applications before and after September 16, 2012?

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.

The process for filing benefit claims differs for applications filed before and after September 16, 2012. Key differences include:

• For applications filed on or after September 16, 2012:
  • File a corrected application data sheet (ADS) under 37 CFR 1.76
  • The ADS must contain a specific reference to a prior application
  • Must satisfy enablement and written description requirements of 35 U.S.C. 112(a)
• For applications filed before September 16, 2012:
  • Amend the specification to include a specific reference to a prior application, OR
  • File a corrected ADS under 37 CFR 1.76 with a specific reference to a prior application
  • Must satisfy enablement and written description requirements of 35 U.S.C. 112, first paragraph

As stated in MPEP 2133.02(a): “(a) for applications filed on or after September 16, 2012, by filing a corrected application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78, or (b) for applications filed prior to September 16, 2012, by amending the specification of the application to contain a specific reference to a prior application or by filing a corrected application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78.”