Delayed Benefit Claims

If the reference required by

35 U.S.C. 120

and

37 CFR

1.78

is not submitted within the required time period, a petition

for an unintentionally delayed claim may be filed. The petition must be accompanied by:

(A) the reference required by

35 U.S.C. 120

and

37 CFR 1.78

to

the prior application (unless previously submitted); (B) a petition fee under

37 CFR

1.17(m)

; and (C) a statement that the entire delay between the

date the benefit claim was due under

37 CFR 1.78

and the date the claim

was filed was unintentional.

While the Director may require additional information

whenever there is a question of whether the delay was unintentional, a person filing a

petition to accept a delayed benefit claim more than two years after the date the

benefit claim was due is required to provide additional explanation of the circumstances

surrounding the delay that establishes that the entire delay was unintentional. This

requirement is in addition to the requirement to provide a statement that the entire

delay was unintentional in

37 CFR 1.78(c)(3)

and

(e)(3)

. See

Clarification of the Practice for Requiring

Additional Information in Petitions Filed in Patent Applications and Patents Based on

Unintentional Delay,

85 FR 12222-24 (March 2, 2020). See also

MPEP §

711.03(c)

for further discussion of the “unintentional” delay

standard.

Effective May 13, 2015,

37 CFR

1.78(d)(3)

was amended to make the procedures under

37 CFR

1.78(e)

to accept an unintentionally delayed benefit claim

applicable to design applications where the benefit claim was not submitted during the

pendency of the design application. Thus, a petition under

37 CFR

1.78(e)

may be filed along with a request for certificate of

correction after patent grant. See

MPEP § 1481.03

.

Likewise, if the reference required by

35 U.S.C. 119(e)

and

37 CFR

1.78

is not submitted within the required time period, a petition

for an unintentionally delayed claim may be filed. The petition must be accompanied by:

(A) the reference required by

35 U.S.C

us, a petition under

37 CFR

1.78(e)

may be filed along with a request for certificate of

correction after patent grant. See

MPEP § 1481.03

.

Likewise, if the reference required by

35 U.S.C. 119(e)

and

37 CFR

1.78

is not submitted within the required time period, a petition

for an unintentionally delayed claim may be filed. The petition must be accompanied by:

(A) the reference required by

35 U.S.C. 119(e)

and

37 CFR

1.78

to the prior provisional application (unless previously

submitted); (B) a petition fee under

37 CFR 1.17(m)

; and (C) a statement

that the entire delay between the date the benefit claim was due under

37 CFR 1.78

and the date the claim was filed was unintentional. The Director may require additional

information where there is a question whether the delay was unintentional. In

particular, when the petition to accept a delayed benefit claim is submitted more than

two years after the date the benefit claim was due, the petition will require additional

explanation of the circumstances surrounding the delay that establishes that the entire

delay was unintentional. See

37 CFR 1.78(c)

.

Effective December 18, 2013,

35 U.S.C.

119(e)(1)

no longer requires that the amendment containing the

specific reference to the earlier filed provisional application be submitted during the

pendency of the application. Therefore, a petition to revive is no longer required to

add or correct a benefit claim under

35 U.S.C. 119(e)

in an abandoned

nonprovisional application filed on or after November 29, 2000. Applicant may simply

file a petition under

37 CFR 1.78

to accept an

unintentionally delayed claim for the benefit of a prior-filed provisional application

in the abandoned nonprovisional application. It may be necessary to correct the benefit

in the abandoned nonprovisional application so that the benefit claims in a later filed

nonprovisional application claiming benefit of the abandoned nonprovisional application

are proper

etition under

37 CFR 1.78

to accept an

unintentionally delayed claim for the benefit of a prior-filed provisional application

in the abandoned nonprovisional application. It may be necessary to correct the benefit

in the abandoned nonprovisional application so that the benefit claims in a later filed

nonprovisional application claiming benefit of the abandoned nonprovisional application

are proper.

Petitions

for an unintentionally delayed benefit claim should be forwarded to the Office of

Petitions. See

MPEP §

1002.02(b)

.

DELAYED SUBMISSION OF BENEFIT CLAIM IN INTERNATIONAL APPLICATION

A petition under

37 CFR 1.78

for accepting an

unintentionally delayed benefit claim and the petition fee under

37 CFR

1.17(m)

are required to add a benefit claim under

35 U.S.C.

120

and

365(c)

in an abandoned international

application designating the United States, even when the international application did

not enter the national stage under

35 U.S.C. 371

. For example, when

filing a “bypass” continuation application under

35 U.S.C.

111(a)

that claims the benefit of an international application

designating the United States that could have but did not claim the benefit of an

earlier U.S. application, and the benefit claim is to be added to the international

application, a petition under

37 CFR 1.78

must be filed in the

international application.

If a petition under

37 CFR 1.78(c)

or

(e)

is required in an international application that was not

filed with the United States Receiving Office and is not a nonprovisional application,

then the petition may be filed in the earliest nonprovisional application that claims

benefit under

35

U.S.C. 120

,

121

,

365(c)

, or

386(c)

to the international application and will be treated as

having been filed in the international application. See

37 CFR

1.78(i)

.