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

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.