Deciding Office: Office of Petitions
The criteria for a petition related to unintentionally delayed domestic benefit claims are set forth in 37 CFR 1.78 and MPEP 211.
In general, these are the steps for filing:
- A petition to accept a delayed claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application:
A petition to accept an unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application must be accompanied by:
1) The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 (a)(3) to the prior-filed provisional application, unless previously submitted;
(2) The petition fee as set forth in § 1.17(m); and
(3) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 (a)(4) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
- A petition to accept a delayed claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, an international application designating the United States, or an international design application designating the United States:
A petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed application must be accompanied by:
(1) The reference required by 35 U.S.C. 120 and 37 CFR 1.78 (d)(2) to the prior-filed application, unless previously submitted;
(2) The petition fee as set forth in § 1.17(m); and
(3) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 (d)(3) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
Additional information:
The United States Patent and Trademark Office (USPTO) requires additional information concerning whether a delay in seeking acceptance of a delayed benefit claim was unintentional where the petition to accept such benefit claim was filed more than two years after the date the benefit claim was due. See Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and Patents Based on Unintentional Delay, 85 FR 12222 (March 2, 2020).
MPEP § 711.03(c)(II)(C)-(F) contains additional guidance on the information required to establish that the entire delay was unintentional.
Fees:
- For the proper petition fee required for Petitions related to Unintentionally Delayed Domestic Benefit Claims, please consult the current USPTO Fee Schedule for code 1454/2454/3454 (Large Entity/Small Entity/Micro Entity) under the Patent Petition Fees.
How to file:
- This petition may be filed using any of these delivery methods.
For the relevant patent laws and rules applicable to Petitions related to Unintentionally Delayed Domestic Benefit Claims, please see:
- 37 CFR 1.17, Patent application and reexamination processing fees;
- 37 CFR 1.78, Claiming benefit of earlier filing date and cross-references to other applications;
- MPEP § 211, Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e)
Forms:
Use form PTO/SB/445 for a petition to accept a delayed claim under 35 U.S.C. 119(e) for the benefit of a prior-filed application.
For further assistance, please contact the Petitions Help Desk between 8:30 a.m. - 5 p.m. ET.
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The Federal Register is the authoritative source and should be consulted if a need arises to verify the authenticity of the language for any CFR citation. Because fee schedule changes may not be reflected in the most recent version of the MPEP, please consult the USPTO Fee Schedule to determine current fee amounts.