What are the requirements for adding a benefit claim in a continued prosecution application (CPA)?

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.

In a continued prosecution application (CPA) filed under 37 CFR 1.53(d), there are specific rules regarding benefit claims. The MPEP states:

In a continued prosecution application (CPA) filed under 37 CFR 1.53(d), no amendment may delete the specific reference to a prior application assigned the same application number.

This is because in a CPA:

• The request itself serves as the specific reference required by 35 U.S.C. 120 and 37 CFR 1.78 to every application assigned the same application number identified in the request.
• A specific reference in the first sentence(s) of the specification following the title, or in an application data sheet, to a prior application assigned the same application number is not required and should not be made.

Therefore, when dealing with a CPA, it’s crucial to understand that the benefit claim to the prior application with the same application number is inherent in the CPA request itself and cannot be deleted. Any additional benefit claims would need to follow the standard procedures for adding benefit claims after filing.