What happens if a benefit claim is not properly made within the required time period?

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.

If a benefit claim is not properly made within the required time period, it is considered untimely and will not be entered. The MPEP states:

“The benefit claim filed on [1] was not entered because the required reference was not timely filed within the time period set forth in 37 CFR 1.78.”

Consequences of an untimely benefit claim include:

• Loss of the earlier priority date, which could affect the patentability of the application if intervening prior art exists.
• Inability to rely on the earlier filing date to overcome prior art references.
• Potential issues with statutory bars under 35 U.S.C. 102.

However, all is not lost if the benefit claim is untimely. The applicant may file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) or 37 CFR 1.78(e), depending on the type of benefit claim. This petition must include:

1. The required reference to the prior application
2. A petition fee
3. A statement that the entire delay was unintentional

The USPTO may require additional information to determine if the delay was truly unintentional.

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

For more information on unintentional delay, visit: unintentional delay.