211.02(a) Correcting or Adding a Benefit Claim After Filing [R-07.2022]
If applicant receives a filing receipt with missing or incorrect benefit claim information, applicant may request a corrected filing receipt. The Office will not grant a request for a corrected filing receipt to include a benefit claim unless the proper reference to the prior application is included (i) in an ADS (for applications filed on or after September 16, 2012) or (ii) in the first sentence(s) of the specification or an ADS (for applications filed prior to September 16, 2012) within the time period required by 37 CFR 1.78 with a few exceptions. See MPEP § 211.03. If the proper reference was previously submitted in an application filed on or after September 16, 2012, the request for a corrected filing receipt should indicate that the reference was properly and timely made in the ADS. If the proper reference was previously submitted in an application filed prior to September 16, 2012, the request for a corrected filing receipt should indicate that the reference was properly and timely made and where such reference is located (i.e., the specification, an amendment to the specification, or an ADS). The Office may notify applicants on or with the filing receipt that a benefit claim may not have been recognized because the benefit claim was improper but applicants are advised that only the benefit claims that are listed on the filing receipt have been recognized by the Office. Therefore, applicants should carefully and promptly review their filing receipts in order to avoid the need for a petition (37 CFR 1.78) and the petition fee.
II. ADDING BENEFIT CLAIMS
If a benefit claim is added after the time period required by 37 CFR 1.78, a petition and the petition fee are required. See MPEP § 211.04. Any petition under 37 CFR 1.78 must be accompanied by a corrected ADS in compliance with 37 CFR 1.76(c) (for applications filed on or after September 16, 2012), or by an amendment to the specification or a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) (for applications filed prior to September 16, 2012) unless the proper reference was previously submitted. In addition to the petition under 37 CFR 1.78 and ADS or amendment, to add a benefit claim it may be necessary for applicant to file one of the following, depending on the status of the application:
- (A) a request for continued examination (RCE) under 37 CFR 1.114, if the application is under a final rejection or has been allowed (see MPEP § 706.07(h)). An amendment or ADS filed after final rejection or allowance is not entered as a matter of right and must be filed in compliance with 37 CFR 1.116 or 1.312, respectively; or
- (B) a reissue application or a request for a certificate of correction under 37 CFR 1.323, if appropriate (see MPEP §§ 1402 and 1481), if the application has issued as a patent.
When a benefit claim is submitted after the filing of an application, the reference to the prior application cannot include an incorporation by reference statement specifying of the prior application unless an incorporation by reference statement specifying of the prior application was presented upon filing of the application. See Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980). An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).
III. DELETING BENEFIT CLAIMS
In certain circumstances, applicants may choose to delete a benefit claim. For applications filed on or after September 16, 2012, applicant may do so by filing a corrected application data sheet in compliance with 37 CFR 1.76(c) that deletes the reference to the prior-filed application. For applications filed prior to September 16, 2012, applicant may do so by amending the specification (if the benefit claim is in the specification) or by submitting a supplemental application data sheet in compliance with pre-AIA 37 CFR 1.76(c) to delete any references to prior applications.
The examiner should consider whether any new prior art may now be available if a benefit claim is deleted. If an applicant is submitting an amendment to the specification or an ADS to delete a benefit claim after final rejection or action, the amendment or ADS will be treated under 37 CFR 1.116 (see MPEP § 714.12 and § 714.13). If the amendment or ADS to delete a benefit claim is submitted after the application has been allowed, the amendment or ADS will be treated under 37 CFR 1.312 (see MPEP § 714.16). A deletion of a benefit claim will not delay the publication of the application unless the amendment or ADS is recognized by the Office within nine weeks prior to the projected publication date that was originally calculated based on the benefit claim.
A cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant application. If the applicant later files a petition to accept an unintentionally delayed claim to add the benefit claim to the prior application in the same application from which the benefit claim was canceled, the Office may refuse to accept such benefit claim because the delay was not unintentional. The correction or entry of the data in the Patent Data Portal can be made by technical support staff of the TC. Upon entry of the data, a new bib-data sheet should be placed in the file. See also MPEP § 707.05 and § 1302.09.
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. (Note: In the CPA, the request is 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. Further, in a CPA, 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.)