13 - Unintentionally delayed domestic benefit claims

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 related to restoring the right of priority to a prior filed provisional application:

If the subsequent nonprovisional application has a filing date which is after the expiration of the twelve-month period set forth in 37 CFR 1.78 (a)(1)(i) but within two months from the expiration of the period set forth in paragraph 37 CFR 1.78 (a)(1)(i), the benefit of the provisional application may be restored upon petition, if the delay in filing the subsequent nonprovisional application was unintentional.

A petition to restore the benefit of a provisional application under this paragraph filed on or after May 13, 2015, must be filed in the subsequent application, and any petition to restore the benefit of a provisional application under this paragraph must include:

(i) The reference required by 35 U.S.C. 119(e)  to the prior-filed provisional application in an application data sheet (§ 1.76(b)(5)) identifying it by provisional application number (consisting of series code and serial number), unless previously submitted;

(ii) The petition fee as set forth in § 1.17(m); and

(iii) A statement that the delay in filing the subsequent nonprovisional application within the twelve-month period set forth in paragraph 37CFR 1.78 (a)(1)(i) 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. 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.

Fees:

  • For the proper petition fee required for Petitions related to Unintentionally Delayed Domestic Benefit Claims, please consult the Current USPTO Fee Schedule on the Fee Information Page for code 1454/2454/3454 (Large Entity/Small Entity/Micro Entity) under the Patent Petition Fees.

How to file:

For the relevant patent laws and rules applicable to for 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); and
  • MPEP § 214, Formal Requirements of Claim for Foreign Priority

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 provisional application.

No forms available for other types of delayed domestic benefit claims. Submit a signed request that includes information listed in Requirements of a Petition.

For further assistance, please contact the Petitions Help Desk between 8:30 AM - 5 PM (EDT).

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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.