What happens if a benefit claim is included in the wrong part of the application?

If an applicant includes a benefit claim in the wrong part of the application but within the required time period, the USPTO’s response depends on whether the claim is recognized:

1. If the benefit claim is recognized by the Office (shown by its inclusion on the first filing receipt), no petition or petition fee is required to correct the benefit claim. The MPEP states: If an applicant includes a claim to the benefit of a prior application elsewhere in the application but not in the manner specified in 37 CFR 1.78 (e.g., if the benefit claim is not present in the proper place but is included in an oath or declaration, or the application transmittal letter, or in the first sentence(s) of the specification for an application filed on or after September 16, 2012) within the time period set forth in 37 CFR 1.78, the Office will not require a petition and the petition fee under 37 CFR 1.17(m) to correct the benefit claim if the information concerning the benefit claim contained elsewhere in the application was recognized by the Office as shown by its inclusion on the first filing receipt.
2. If the benefit claim is not recognized by the Office (shown by its absence on the first filing receipt), a petition and petition fee under 37 CFR 1.17(m) will be required to correct the benefit claim if the correction is sought after the time period set in 37 CFR 1.78.

In both cases, the applicant must still submit the benefit claim in the proper format (i.e., in an ADS or by amendment to the specification, depending on the application’s filing date) to have a proper claim under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on filing receipt, visit: filing receipt.